How strong brands such as NIKE and MARLBORO can fail in cybersquatting cases
Early publications on the UDRP lamented a perceived bias towards trademark owners, citing the fact that most panelists are trademark law practitioners, and to this day there are still misconceptions that the UDRP is too plaintiff-friendly. However, numerous cases show how registrants of some of the world’s most renowned trademarks can fail to satisfy the UDRP when the facts favor the domain name registrant.
Registering domain names for their generic value is a legitimate practice, even if they correspond to famous brands. Many big names, including Nike, Bosch, Marlboro, and Siemens, have lost UDRP lawsuits by underestimating the legitimate interests of registrants.
Domain names used for generic purposes
Arbitrary trademarks (i.e. when a term has a generic meaning, but is used for completely unrelated services) are strong for the purposes of traditional trademark enforcement. In domain name disputes, however, arbitrary trademark owners should 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 owners. brands. Two prominent examples are the Nike (WIPO case D2020-3067) and Marlboro (WIPO case D2015-1128).
In Nike, which concerned the domain name “nike.dev”, the holder claimed to have registered the domain name for personal use. Specifically, the holder used it for a “Wireguard VPN tunnel and other personal projects”. Although this use is unrelated to footwear, the strength of the NIKE trademark would generally prevail in a UDRP dispute: use of a domain name for non-trademark related services is not in itself fatal to complainants.
What made this case unique was the pattern of records displayed by the declarer, who, in recording “easy-to-remember names”, chose the Greek gods as his theme. Thus, domain names such as “bia.dev”, “kratos.dev” and “zelos.dev” could be in the holder’s portfolio. Nike is, of course, the Greek goddess of victory: it is from this source that the famous Nike brand takes its name.
Just as a pattern of bad faith records can tip the scales in favor of the plaintiff, a pattern of good faith records can lend credibility to a filer. The case was dismissed, with the panelist stating that:
Another important lesson is that a famous mark, such as MARLBORO or NIKE (or APPLE) which are also dictionary terms, does not necessarily give its owner the right to recover all domain names that contain the famous mark and nothing what’s more.
The panelist relied heavily on Marlboro, which concerned the domain name “marlboro.party”. In this case, the registrant’s business model was to offer geographic location information services; to this end, they had registered thousands of domain names corresponding to place names. The website provided information about various places named Marlboro, but also featured pay-per-click advertisements and an invitation to purchase the domain name.
The expert ruled in favor of the licensee, due to a lack of evidence of specific targeting of the plaintiff’s MARLBORO trademark. It is important to note that the presence of the holder’s other domain names has demonstrated its good faith. Such evidence has been essential in similar cases, such as Nike and living virgin (WIPO case D2017-1961). In the latter case, the owners of the well-known brand VIRGIN 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 trademark owners to thoroughly investigate a registrant’s motive before filing a UDRP complaint, even for the strongest trademarks in the world. When a registrant legitimately owns a domain name for its generic value, the complainant has little chance of wresting the domain name from the registrant.
Domain names used as common surnames
Trademark owners should also determine whether the domain name matches the registrant’s surname or a generally popular national or international surname. Section 4(c)(ii) of the UDRP states that a registrant may have a legitimate interest in a domain name when “commonly known” by the domain name.
Discovering the holder’s name can be difficult due to privacy restrictions, and complainants often only find out the holder’s identity after a UDRP complaint is filed.
That was the problem in Siemens (WIPO case D2018-1538). The holder, Rod Siemens, ran a consulting company under his last name via the domain name “siemensconsulting.com”. Due to the licensee’s use of a confidentiality service, the licensee’s position could not be verified by the complainant until after he filed his case. However, this does not make the declarant unreachable. As with conducting investigations, trademark owners are advised to send enforcement letters to registrants before initiating UDRP proceedings, as such communications may reveal crucial information before it is don’t be too late.
Family names, like dictionary or geographic terms, can be used generically as domain names. The Bosch (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 licensee has demonstrated a bona fide registration pattern. Contrary to Siemens, this evidence was discoverable before the filing of the case. The complainant was found to have engaged in reverse domain name hijacking due to his desperate attempts to misrepresent the Registrant’s website.
UDRP panel members make decisions on a balance of probabilities. Having a strong, well-known brand helps, but is not conclusive in securing victory. As the panel points out Nike, having a famous trademark does not give the trademark owner exclusive rights to all domain names containing that term; there must be hard evidence of targeting.
Even when the veracity of the declarant’s evidence is questioned by a panel member, the panelist will tend to favor the declarant (as seen in Siemens).
Investigating and educating the domain name owner before filing a UDRP complaint is crucial. Regardless of the perceived strength of a mark, the UDRP has its own unique set of rules that must be satisfied.