A domain name that contains only a common or "dictionary" word (sometimes referred to as a "generic domain name" -- though not to be confused with a generic top-level domain) is often a poor candidate for a UDRP complaint, as decisions repeatedly remind us.
Here are some reasons why UDRP decisions involving a single, common word are won by the registrant. That is, the trademark owner who filed the complaint lost, and the registrant was allowed to retain the domain name.
The Complainant lacks trademark rights.
Example: In Inter123 Corporation v. Lawrence darwish / urbbana, NAF Claim No. 1557370, the Complainant argued that it tried unsuccessfully to purchase the disputed domain name <mobile.co> from the Respondent, and that the Respondent reneged after agreeing to sell it for $59,000. The Respondent said that the dispute was not appropriate for the UDRP and that "pending legal proceedings... involve the same issue."
The UDRP Panel found that the Complainant's trademark applications were only pending; were subject to "resistance" and chosen because they were "entirely apt to describe the character of the [Complainant's] services"; and that the Panel was "not able to conclude that Complainant has common law trademark rights." As a result, the Complainant failed the threshold requirement of every UDRP complaint.
The domain name doesn't target the Complainant.
Example: In Barium AB v. CDN Properties Incorporated, WIPO Case No. D2014-1541, the Complainant was a Swedish company that owned the domain name <barium.se>. The Respondent used the disputed domain name <barium.com> to "host[] advertising links" and in the UDRP proceeding referred to "the generic character of the word 'Barium' being a chemical element of the Mendeleev Periodic Table of Elements No. 56 with the 'Ba' code as well as the Latin name for the southern Italian city Bari."
In its decision, the UDRP panel said that it was "unable to find that the Respondent was aware of the [Complainant's] Trademark and/or the Complainant's business when it registered the disputed domain name" and that it was "also unable to find that the Respondent is trying to take advantage of the Trademark in order to draw traffic to its website, especially considering the fact that the disputed domain name does not appear to have been used to offer goods or services which are similar to or compete with the Complainant's services."
The Respondent's domain name registration predates the Complainant's trademark rights.
Example: In Kite Solutions, Inc. v. Brandon Abbey / Escrow.com, NAF Claim No. 1609855, the Complainant claimed that it owned a federal trademark registration for the word KITE for use in connection with "software as a service platform through which parties can identify opportunities to collaborate, find solutions, and implement advertising and marketing campaigns." The Respondent argued that it had registered the disputed domain name <kite.com> 20 years earlier and had been leasing it to an engineering company.
The UDRP panel found that the Respondent had rights or legitimate interests in the domain because "use of the KITE mark and the original registration of the domain name predate Complainant’s rights in the mark."
The dispute is outside the scope of the UDRP.
Example: In Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. v. Leon Kuperman / LGK Consulting, NAF Claim No. 1580768, the Complainant argued that the disputed domain name <bids.com> was confusingly similar to its "BIDZ.COM mark." The Respondent argued that the "dispute is outside the scope of the UDRP, involving a complex business history."
The UDRP panel, noting that even the Complainant had stated the dispute was with a former employee, said, "many issues have been raised which would require proof more suited to the thorough scrutiny afforded in litigation" and concluded that it was "a business dispute that falls outside the scope of the UDRP," allowing the Respondent to retain the domain name.
As these decisions demonstrate, a Complainant that wants to obtain a domain name containing only a single, common word may face numerous obstacles in a UDRP proceeding. Therefore, a Complainant would be wise to reconsider whether the UDRP process is appropriate for such a dispute.
