Use of domain name in relation to its descriptive nature held to be legitimate

International

The World Intellectual Property Organisation (WIPO) has issued a decision regarding the domain name ‘walkthewalk.com’ under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The complainant, Walk the Walk Worldwide of London, was engaged in fundraising connected with breast cancer. The disputed domain name was registered on October 15 2004 by Name Administration Inc, a corporation registered in the Cayman Islands.

The complainant demanded the transfer of the domain name since it is the owner of trademark registrations in many jurisdictions consisting of, or including, the term ‘walk the walk’. Moreover, the complainant is the owner of registered trademarks for goods and services relating to sport, exercise, fitness and health.

The domain name resolved to a web page which offered the domain name for sale and provided sponsored links to providers of health-related products and services.

On April 22 2013 the complainant filed a UDRP complaint before WIPO. Under the UDRP, a complainant must demonstrate three fundamental elements:

  • The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

As for the first criteria, the complainant stated that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The complainant contended that the domain name was obviously identical to its trademark WALK THE WALK so that this shorter phrase was not generic and clearly associated with the complainant.

The respondent claimed that the three words related to a common expression excluding any exclusivity or distinction of the complainant. Furthermore, it appeared that the respondent registered the disputed domain name a long time before "the bulk" of the complainant's trademark registrations.

The panel noted that the respondent's issue regarding the date of registration of the trademark was not of relevance to the question of whether the domain name was identical or confusingly similar to a trademark or service mark in which the complainant had rights. Consequently, the panel asserted that the complainant was right as there was a confusing similarity with its trademark. Once this condition was satisfied, the panel turned to the question of the respondent’s rights or legitimate interests in the domain name.

The complainant stated that the respondent did not make any legitimate non-commercial or fair use of the domain name, since the domain name pointed to a web page which offered the latter for sale and provided sponsored links to providers of health-related products and services.

According to the complainant, the respondent interfered commercially with the complainant by using the domain name "in respect of activities in which the complainant not only has trademark, but in which it has built significant goodwill".

In its response, the respondent explained that the phrase ‘walk the walk’ is a descriptive term that can be used freely "in connection with links that relate to walking and fitness". Furthermore, the respondent submitted that it had not used the domain name in connection with fundraising or charitable events. In addition, the respondent referred to previous WIPO cases where it was established that the respondent used a domain name comprising descriptive words without any intention to take any advantage of the complainant's trademark (eg, Manga Films SL v Name Administration Inc (WIPO Case No D2005-0730)).

The panel found that the respondent did use the domain name in a legitimate manner in connection with goods and services relating to the generic and descriptive nature of the term ‘walk the walk’. As such, the use of a ‘pay-per-click’ website in connection with such offerings was legitimate. Furthermore, the panel did not find that the respondent had used the domain name in order to take unfair advantage of the goodwill in the complainant's trademarks.

Turning to the third limb of the policy, the complainant submitted that the respondent must have known of the trademark when it registered the domain name in 2004. The complainant also asserted that the respondent's offer to sell the domain name was evidence of bad faith. Finally, the complainant claimed that the respondent was using the domain name to deliberately entice internet users visit its ‘pay-per-click’ website by creating a likelihood of confusion with the complainant's mark and brand.

Turning to the issue of the offer to sell the domain name, the respondent pointed out that the domain name was acquired in 2004 and the offer to sell the domain name was made in 2012. As such, the respondent reasoned that it was not possible to infer that its intent when acquiring the domain name in 2004 was to sell it to the complainant in 2012. Furthermore, the offer to sell was not made directly by the respondent to the complainant, but rather appears to have been made in response to standard enquiry from a third party regarding the potential purchase price of the domain name. With regard to the use of the domain name, the respondent argued that the use of the domain name was in connection with walking and exercise as per its generic and descriptive use, and that there was no exploitation or "trading off the reputation of the complainant".

Taking all of this into consideration, the panel held that the complainant had:

"failed to establish that it has any exclusivity in the term ‘walk the walk’ so far as the goods and services offered by the respondent are concerned, or that the respondent was motivated to register or to use the domain name by a desire to take advantage of the complainant’s goodwill in its trademarks".

Turning to the question of the offer to sell the domain name, the panel found that the complainant did not demonstrate that, when the respondent registered the domain name, it was for the purpose of selling it to the complainant. Finally, addressing the respondent's use of the domain name to create a likelihood of confusion with the complainant's trademarks and brand, the panel found that the respondent’s use of the domain name in relation to its descriptive nature was legitimate.

This decision reveals the difficulties of bringing a successful UDRP complaint on the basis of a trademark that consists of generic terms. As such, potential complainants would be well advised to consider carefully the potential weaknesses of their case when filing a UDRP complaint.

David Taylor, Hogan Lovells LLP, Paris 

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