DOMAIN NAME WATCH

ENDGAME for Cybersquatter in game.eu

Generic domain names can be of great commercial value. Businesses find them useful for attracting visitors interested in their field but not necessarily searching for their brands. Other entrepreneurs use them to provide links to businesses in relevant fields, profiting from visitors who click through to those sites. In principle, generic domain names are open to all—but not all generic domain names are legitimate, as evidenced in a recent ADR.eu case on game.eu.

 

GAME, SET, MATCH

In that case, the respondent took advantage of the .eu sunrise provisions by registering game.eu based on a Benelux trade mark registration obtained just 15 days before the sunrise period began. It subsequently linked the domain name to the website of the English electronic games retailer, The Game Group plc, and derived revenue from Internet users clicking through to the complainant’s site. Later, the respondent caused game.eu to re-direct to a generic web directory.

In an action to recover the domain name, the complainant proved that it owned registered trade mark rights in GAME in the U.K. and E.U. and had a substantial business under the mark there. The respondent advanced no basis for a right or legitimate interest in game.eu, and the complainant submitted that the respondent had none, and had registered and used the domain name in bad faith as part of a pattern of registering generic domain names for apparent re-sale.

The ADR.eu panel agreed. The respondent’s use of the domain name to link to the complainant’s site, thereby deriving revenue from the Complainant’s brand, could not constitute a bona fide commercial use capable of conferring a legitimate right or interest. Such activity supported the case that the domain name had been registered and used in bad faith, with an eye to selling it to the complainant for a price in excess of the registration fee at some later date, when its value had been proved.

The panel ordered the transfer of the domain name to the complainant.

 

COMMENT

It is often difficult to challenge generic domain names. Their generic status means that complainants will not often be able to show that the domain name is identical or similar to an earlier mark in which they have rights.

Generic domain names are frequently registered in vast numbers by businesses specialising in generic web directories with click-through links. Businesses declining a pay-per-click link know that their competitors will probably be approached, but there is normally little that can be done. This decision, however, shows that this will not always be the case.

Had the respondent not blatantly sought to profit from the identity of the domain name and the complainant’s trade mark, the outcome may have been different. It may have been more difficult to prove bad faith and lack of a legitimate interest in respect of a domain name that was, on its face, generic. Nonetheless, mass generic domain name registrants normally register in order to profit, and leaving the domain name unused in this case would have been counterproductive from the respondent’s point of view.

This is an unusual case, but there are more general lessons in it for businesses using weak, although not clearly generic, brands. Some trade mark rights are usually better than none for the purposes of challenging domain names or conflicting use, and if a word mark cannot be protected on its own, a figurative mark incorporating it may be worth obtaining. Armed with such rights, a business that would otherwise not get a domain name complaint off the ground may actually win the case.