How strong trademarks such as NIKE and MARLBORO can fail in cybersquatting cases

Jun 14, 2022, 13:57 PM

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This article was first published in the World Trademark Review magazine on 26 May 2022.

Early literature on the UDRP bemoaned a perceived bias towards trademark holders, citing the fact that most panellists are trademark law practitioners, and to this day there are still misconceptions about the UDRP being overly favourable to complainants. However, numerous decisions show how holders of some of the world’s most renowned trademarks can fail to satisfy the UDRP when facts favour the domain name holder.

Registering domain names for their generic value is a legitimate practice, even if they match famous trademarks. Many big names, including Nike, Bosch, Marlboro and Siemens, have lost UDRP cases by underestimating the legitimate interests of domain name registrants.

Domain names used for generic purposes

Arbitrary trademarks (ie, where a term has a generic meaning, but is used for wholly unrelated services) are strong for the purposes of classic trademark enforcement. In domain name disputes, however, owners of arbitrary trademarks must exercise greater caution.

A domain name can be used and registered for generic purposes while a trademark cannot, which is a key difference between trademark law and domain name dispute resolution that can trip up brand owners. Two prominent examples are the Nike (WIPO Case D2020-3067) and Marlboro (WIPO Case D2015-1128) cases.

In Nike, which concerned the domain name ‘nike.dev’, the registrant claimed to have registered the domain name for personal use. Specifically, the registrant used it for a “Wireguard VPN tunnel and other personal projects”. While this use was not related to footwear, the strength of the NIKE mark would usually prevail in a UDRP dispute: use of a domain name for services unrelated to the mark is not inherently fatal for complainants.

What made this case unique was the pattern of registrations displayed by the registrant, which, in registering “easy-to-remember names”, chose Greek gods as a theme. Hence, domain names such as ‘bia.dev’, ‘kratos.dev’ and ‘zelos.dev’ could be found in the registrant’s portfolio. Nike is, of course, the Greek goddess of victory: it is from this source that the world-famous Nike brand takes its name.

Just as a pattern of bad faith registrations can swing a case in favour of the complainant, a pattern of good faith registrations can lend credibility to a registrant. The case was denied, the panellist stating that:

Another important lesson is that a famous trademark, such as MARLBORO or NIKE (or APPLE) which are also dictionary terms, does not necessarily give its owner the right to recover any and all domain names which contain the famous mark and nothing more.

The panellist relied heavily on Marlboro, which concerned the domain name ‘marlboro.party’. In this case, the registrant’s business model was to offer informational services about geographic locations; to this end, they had registered thousands of domain names correlating to place names. The website provided information on various places named Marlboro, but also had pay-per-click advertising and an invitation to buy the domain name.

The panellist found in favour of the registrant, due to a lack of evidence for specific targeting of the complainant’s MARLBORO trademark. Importantly, the presence of the registrant’s other domain names demonstrated good faith. Such evidence has been critical in similar cases, such as Nike and Virgin Living (WIPO Case D2017-1961). In the latter, the owners of the well-known VIRGIN mark lost a UDRP case because the registrant registered generic domain names, many of which contained the dictionary term, virgin.

Nike and Marlboro demonstrate the need for brand owners to conduct thorough investigation into a registrant’s motive before filing a UDRP complaint, even for the world’s strongest marks. Where a registrant legitimately holds a domain name for its generic value, the complainant stands little chance of wresting the domain name from the registrant.

Domain names used as common surnames

Brand owners must also consider whether the domain name correlates to the registrant’s surname or a surname that is generally popular domestically or internationally. Paragraph 4(c)(ii) of the UDRP states that a registrant may have a legitimate interest in a domain name where they are “commonly known” by the domain name.

Discovering the name of the registrant can be difficult due to privacy restrictions, and complainants often find out the identity of the registrant only after a UDRP complaint has been filed.

This was the issue in Siemens (WIPO Case D2018-1538). The registrant, Rod Siemens, ran a consulting company under his surname via the domain name ‘siemensconsulting.com’. Due to the registrant’s use of a privacy service, the registrant’s position was only ascertainable to the complainant after it had filed. This, however, does not make the registrant uncontactable. As with carrying out investigations, brand owners are advised to send enforcement letters to registrants before initiating a UDRP case, as such communications can uncover crucial information before it is too late.

Surnames, like dictionary or geographic terms, can be used generically as domain names. The Bosch case (WIPO Case D2017-2549) represents a particularly egregious attempt to usurp a domain name used for its generic value as a common Dutch surname. Once again, the registrant demonstrated a pattern of good faith registrations. Unlike Siemens, this evidence was discoverable before filing the case. The complainant was found to have engaged in reverse domain name hijacking due to its desperate attempts to misrepresent the registrant’s website.

Comment

UDRP panellists make decisions on the balance of probabilities. Having a strong and well-known trademark helps, but is not conclusive in securing victory. As highlighted by the panel in Nike, having a famous trademark does not give the brand owner exclusive rights to all domain names containing that term; there must be hard evidence of targeting.

Even where the veracity of the registrant’s evidence is questioned by a panellist, they will tend to favour the registrant (as seen in Siemens).

Investigation of, and outreach to, the domain name owner prior to filing a UDRP complaint is crucial. No matter the perceived strength of a trademark, the UDRP has its own unique ruleset which must be satisfied.