2.4 Rights and Legitimate Interest in Descriptive and Generic Terms
Where a domain name is descriptive or generic such as a dictionary word, the first person to register it in good faith is entitled to the domain name and this is considered a “legitimate interest.” The first person to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest. Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests inquiry is more likely to favor the domain name owner, absent evidence of targeting (see also 3.3 below). An established domain name resale enterprise that restricts its portfolio in a good faith effort to avoid misleading the public qualifies as a legitimate interest and a defense under Section 4(c)(i)
The system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration and targeting, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes”
Additional Information
Relevant Decisions
Themis Solutions Inc. v. Narendra Ghimire / Deep Vision Architects, Forum FA2502002139218, <clio. ai>, 3-Member, Denied
It is well established that the listing of generic or descriptive domain names for general sale can be a bona fide offering under Policy ¶ 4(c)(i) where the domain name is not improperly targeted at a complainant.
GOPA Gesellschaft für Organisation, Planung und Ausbildung mbH v. Tony Peppler, StartupCapital.com, WIPO D2024-5008 <gopa. com>, 3-Member, Denied
The disputed domain name reflects an Indian personal name, an acronym signifying many diverse entities, and a trademark that has been registered by third parties in a number of countries. It can therefore be accepted that the disputed domain name may be legitimately used for different purposes unrelated to the Complainant as long as there is no targeting of the same.
Abnormal Security Corporation v. Narendra Ghimire, Forum FA2405002099733, <abnormal.ai>, 3-member, Denied
The word “abnormal” is an ordinary dictionary word in the English language and therefore, in the absence of compelling evidence of bad intention or other reason to doubt the propriety of the Respondent’s conduct, it has the right to use it and hence a legitimate interest in it. Indeed, all things being equal, anyone has such a right to use such an ordinary dictionary word in a domain name. That conclusion may well be very different, of course, if the word in question, despite being a dictionary word, were also a world famous mark (e.g. “Apple”), although even then the context would be determinative and it may be that, even then, the word was being used simply as a dictionary word rather than as invoking the trademark.
In the present case, the Complainant does not show by evidence that either of its marks is famous or prominent, despite their use and recognition. Thus, there is no evidence to rebut the presumption that the Respondent is entitled to use this dictionary and generic word in its domain name.
SMARTCATCH v. Domain, Administrator, NameFind LLC, WIPO D2024-0544 <smartcatch.com>, 3-member, Denied, RDNH
The Panel finds in this case that the mark SMARTCATCH is comprised of two dictionary words, “smart” and “catch”, and that, even in combination, the terms “smartcatch” or “smart catch” have been used in commerce by a variety of different parties – although the Panel is not necessarily in agreement with the Respondent’s contention that the term as a whole is a common English phrase. Aside from the third-party trademark registrations identified by the Respondent, a simple Google search of the term “smartcatch” produces results relating to, for example, fishing technology, food preparation and insect control.
Apnea Sciences Corporation v. Private Domain / Above Privacy, Forum FA2310002065870 <SleepRX.com>, 3-member Panel, Denied, RDNH
Fourthly, although there is some overlap with other grounds showing a right or legitimate interest, UDRP panels have often held that a domain name holder may well have such an interest if the domain name consists of dictionary words and phrases, common expressions, or generic and descriptive terms. Rights will not automatically be found and will often be rejected when the domain name is a commonly used word but is then used to encompass the goods or services of a trademark owner, to target it, or where the domain name is used to promote goods and services that are not covered by the normal meaning of the domain name. But in the present case, the domain name is clearly descriptive of sleep and also the notion of medical prescriptions (rx) for conditions related to sleep, such as sleeplessness and snoring. Thus, the Respondent has a basic right to register and use such a domain name that simply uses the English language in its normal meaning. In that regard, the Respondent has used the domain name to promote what the Complainant refers to as “sleep testing services” which the Panel apprehends to mean tests to assess patients’ sleep patterns which may then lead to prescriptions to alleviate the condition of sleeplessness or snoring…Thus, the Respondent has a right or legitimate interest in the domain name on this ground as well as on the ground that the domain name is being used legitimately. All in all, the evidence shows that the Respondent’s use of the disputed domain name comes within the ambit of the ordinary meaning of the domain name and with no inappropriate uses that might negate that finding.
Oystershell Consumer Health, Inc. v. Titan Networks, CAC-UDRP-103658(2021), <rid.com>, 3-member, Denied with concurring in part and dissenting in part opinion
Acquiring attractive domain names that may by happenstance correspond to current marks and holding them in inventory for future sale on the secondary market has long been held to constitute a right or legitimate interest. And so it is here. Common words are just that and no-one can have a monopoly or any exclusivity in them –as many traders will want to use them for their informational value. Small differences will avoid infringement and confusion must be tolerated by traders who select highly descriptive terms for trademarks.
FPPM INTERNATIONAL / FLORENT POIRIER v. Above Privacy/Mira Holdings, Inc, CAC Case No. 103801 (2021), < PAULMARIUS.COM>, 3-member, Transfer
Ordinarily, generic terms are easy to recognize. Indeed, Respondent draws the Panel’s attention to a number of UDRP decisions involving generic terms consisting of dictionary words, acronyms, and common expressions. These cases are distinguishable from the case here involving <paulmarius.com> in that none of them exhibit the distinctiveness of Complainant’s mark, and as generic terms they might therefore support a right or legitimate interest… Complainant’s ownership of PAUL MARIUS is unquestioned because, if for no other reason, there are no other PAUL MARIUS trademark owners and Respondent has offered no rebuttal to the contrary. The Panel concludes that Complainant is one of a kind.
Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos.com>, 3-member, Denied, RDNH
Respondent has established that the dominant element of the Disputed Domain Name, “lumos,” is generic in the sense of its being commonly used and its meaning easily comprehended. This commonness is established principally by the fact that the term is widely employed as a trademark or service mark by numerous persons offering a variety of goods and services in the US and around the world…
Complainant contends that the term “lumos” is not generic or descriptive. It points out that during “the registration process the USPTO never issued an office action or other refusal to register the Lumos Mark on the ground that ‘Lumos’ was descriptive or generic.” It contends that this silence makes perfect sense given that the term is not found in the dictionary. Further, Complaint’s Mark has become incontestable, and under US trademark law (both parties being US residents) the issue of descriptiveness cannot now be raised.
Neither argument is persuasive. The USPTO application process occurs in a wholly different environment with its own set of rules, requirements, goals, and incentives. Whereas it is impossible to say that events occurring during the prosecution process or determinations therein made could never be relevant, the Panel does not believe the purported silence of the USPTO on this issue is relevant to this case. The same is true about incontestability. The incontestability of any particular mark does not address its distinctiveness or wide-spread use by others in the market. The greater the number of users of a particular sign, the lesser its strength. It is in this environment that a respondent’s acquisition in connection with its domain name business is to be considered.
Hallmark Licensing, LLC and Hallmark Cards, Incorporated v. Privacy Administrator / Anonymize, Inc., Forum FA2104001941032 <mahogany.com>, 3-member, Denied
Consequently, the Panel finds that the Respondent has rights and a legitimate interest in the Domain Name because it corresponds to a well-known descriptive dictionary word. “Mahogany” is a common and well-known dictionary word used by numerous people and companies.
PLAINWELL OVERSEAS CORP. v. NameTrust, LLC, CAC-UDRP-102207 (2018) <options.events>, 3-member, Denied
The notion that the word “options” in plural in and of itself denotes the Complainant simply does not hold water. As such, the evidence on record indicates that it is more likely than not that the domain name was registered in light of its dictionary meaning, for use in connection with the Respondent’s link-shortening services forming part of the Respondent’s domain name portfolio. There is nothing in the record to suggest that the Respondent’s business model is a pretext to mask a pattern of bad-faith domain name registration, nor is there anything to suggest that the Respondent registered the disputed domain name with the Complainant in mind.