2.7 Investing in ‘Brandable’ Domain Names
Registering domain names because of their potential value as a brandable domain name is supported by the Policy. The well-established legitimate interest in aggregating and holding domain names for resale consisting of acronyms, dictionary words, or common phrases can be bona fide and also extends to made-up terms which have no dictionary meaning. Registering a made-up domain name because it may in the future be of interest to someone who wants to adopt a new unique brand, can constitute a right and legitimate interest under the Policy.
The business of creating and supplying names for new entities is a legitimate business activity where there are numerous suppliers. Where a domain name investor or branding agency registers a made-up term because of its attractiveness and without knowledge of or intention to target a particular trademark owner, a Complainant will have failed to establish the second element of Paragraph 4(a) of the Policy.
Registering domain names because of their potential value as brandable domain name for a new entrant to the market is supported by the Policy. Even if a term does not appear to be a common dictionary term, if a Respondent’s reason for registration a disputed domain name is its potential value as a brandable domain name, a right and legitimate interest may be found and constitutes a legitimate business model.
Where a Respondent can show that it is in the business of offering brandable domain names for sale and in particular where the Respondent demonstrates a pattern of registering comparable brandable domain names in good faith, a Respondent will have established its rights and legitimate interest under the Policy because the domain name was not registered to profit from or exploit a Complainant’s trademark.
Additional Information
Relevant Decisions
Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd, WIPO D2024-1287, <babista.com>, 3-member, Denied
Turning to the Respondent, it asserts that the disputed domain name was selected because “babista” has valuable qualities, i.e., it is short in length, pronounceable in English and other languages, easy to spell, and brandable for any number of potential uses. The Respondent asserts that the disputed domain name is also evocative of the word “barista” and has a potential connotation of an expert or specialist in babies or babes…In the Panel’s view, in the circumstances of this case, the more plausible available explanation for the registration of the domain name is that it was part of a naming pattern within the Respondent’s portfolio.
AKAPOL S.A. v. Ehren Schaiberger, WIPO D2023-2284 <plasticol.com>, 3-member Panel, Denied
the same principles apply where a domain name reseller registers a “portmanteau” word simply because it considers that word is attractive and likely to be of value. Again this must be done without intent to target a specific trademark holder. For reasons discussed below the Panel considers that the Respondent has simply registered a “portmanteau” word he considered attractive and likely to be of value, and did so without knowledge of the Complainant or the PLASTICOLA trademark.… The range of other domain names the Respondent has registered involving the word “plastic” or ending in “ol” corroborates the Respondent’s account of his reasons for registering the Disputed Domain Name.
Nobli Ltd. v. Cykon Technology Limited, WIPO D2022-2970 <nobli.com>, Denied, RDNH
The disputed domain name consists of a term, “nobli”, that has no meaning in English. The Panel accepts the Respondent’s claim that it registered the disputed domain name because it “may in future be of interest to someone who wanted to adopt a new unique brand”. As explained in section 2.1 of WIPO Overview 3.0, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In the Panel’s view, depending on the circumstances, this practice may also extend to made-up phrases.
Limble Solutions, Inc. v. Domain Admin, Alter.com, Inc, WIPO D2022-4900, <limble.com>, 3-member Panel, denied
Respondent’s evidence, including a declaration by its owner signed under oath, shows that it is running a business offering brandable domain names and development services which business model has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant’s trademark.
Zydus Lifesciences Ltd. (formerly known as Cadila Healthcare Ltd.) v. Jewella Privacy LLC / DNS, Domain Privacy LTD, WIPO D2022-0880, <zydus .com>, 3-member, Denied, RDNH
The term “zydus” is a coined word with no meaning in the English language. It is however a five-letter character string which is pronounceable and likely to be of inherent value as a domain name for that reason. The Panel regards with skepticism the Respondent’s claim that it registered the Disputed Domain Name because of its meaning in Lithuanian. It can however accept it registered it because of its inherent value as a five-letter character string.
Veho Oy Ab v. Jewella Privacy Services, LLC / Domain Manager, Orion Global Assets, WIPO Case No. D2021-4272, <veho.com>, 3-member, Denied
In the Panel’s view, the term “veho” does not appear to be a common dictionary term, however, a plausible explanation for the Respondent’s registration of the disputed domain name is its potential value as a brandable four‑letter domain name.
Finwise BV v. Anne-Jan Hempenius, NameAvenue, WIPO D2020-3135, <finwise.com>, 3-member, Transfer
The Complainant has provided evidence showing that the disputed domain name is not the only domain name in the Respondent’s inventory that is identical to a trademark registered in the European Union. The Respondent’s other domain names include <alterra.net>, <caerus.net>, <claritas.net>, <finova.net>, and <mentis.net>, in each of which the operative element is identical to a European Union registered trademark, while at least one, <hylion.com> is identical to the registered trademark “hyliion” but for a typographical error, and others may be similar to registered trademarks. This evidence indicates that the Respondent is, at best, indifferent to the possibility that his chosen domain names – including the disputed domain name – infringe third party trademark rights.
Stonz Wear Inc. v. Domain Admin, Level2 LLC, WIPO D2019-0217, <stonz.com>, 3-member, Transfer with a Dissenting Opinion
Majority View:
The majority fully acknowledges that some consumers may read “stonz” as a homonym of “stones”, and acknowledges the Respondent’s assertion that it registered the disputed domain name because it has a practice of registering domain names that substitute “z” for “s” such as <framez.com>, <rockerz.com>, <roez.com>, <spadez.com> and <cyclez.com> (though even there, Respondent’s argument is a bit inconsistent given that the disputed domain name is <stonz.com>, not <stonez.com>). The majority agrees that a domain name registrant may well have a legitimate interest if it registers a domain name containing a creative spelling of a dictionary word if it then uses the domain name in ways consistent with the dictionary word and does not otherwise infringe, dilute, cybersquat upon, or violate Complainant’s rights. That, though, is not what this Respondent has done. Instead, even before the Respondent acquired the disputed domain name, it targetted the Complainant through its agent with an offer to sell the disputed domain name, not because of its value to the Complainant as a creative spelling of a dictionary word but rather because its value to the Complainant as an exact spelling of its registered trade mark – see section 6D below. That misconduct is the antithesis of a legitimate interest,
Dissenting View:
Moreover, there is something to be said for panelists recognising that people will adopt and indeed make up novel ways of spelling common words, in some cases to avoid confusion, in other cases because the literal word may not be available to them and in other cases for no reason at all. But provided that the actual meaning is clear, there is no reason why for all practical purposes the ordinary and traditional meaning of the word used should not be accepted and used for determining if the registrant has a right or legitimate interest in the domain name.. it gives rise to a right or legitimate interest in the domain name on the part of the Respondent, unless the Respondent registered it because of the Complainant’s STONZ trademark, of which there is no evidence whatsoever and which seems extremely unlikely, given that the Respondent bought the domain name when its previous registration expired.
The right that the Respondent acquired could of course be negated if it then used the domain name to compete with the Complainant, tried to pass itself off as the Complainant, sought to mislead the public or engaged in any other untoward conduct. But not only is there no evidence of any such misbehaviour, the evidence that there is shows the contrary, namely that the Respondent used the domain name to provide legitimate links to items of general interest which is a lawful and regular practice.
Prinker Korea Inc. v. Kwang pyo Kim, ADNDRC KR-1900204 <prinker.com> (2019), 3-member, Denied
Respondent contends that it has rights or legitimate interests in respect of the disputed domain name: i) Respondent acquired and is using the disputed domain name in good faith for his own business purpose. Respondent purchased the disputed domain on February 20, 2018, through namejet.com auction because the disputed domain name is a short, brandable domain name… The Panel finds that Respondent’s response to Complainant’s inquiry to purchase the disputed domain with the offer of US$85,000 itself does not constitute targeting the Complainant’s mark. Respondent put a price on the disputed domain name when Complainant asked him to do so. It is not appropriate for this Panel to say if it was a good, a low or a reasonable price. Respondent did not target Complainant or do anything to do it damage.