A recent case at the National Arbitration Forum was won by a parked domain name. In Walkaway Canada Incorporated v. Marchex Sales, Inc / Brendhan Hight, found here:
http://domains.adrforum.com/domains/decisions/1387536.htm, the Complainant registered the WALK AWAY trademark in Canada in 2003. In the United States, the Complainant registered the WALKAWAY trademark in July 2005. Both of those applications claimed first use back to September 2000.
The Respondent registered the contested Domain Name, WALKAWAY.COM, in February 2005. The Respondent is using the contested Domain Name for a landing page website containing PPC links advertising other sites relating to debt relief and debt cancellation. Respondent asserts that the “sponsored links” (e.g., PPC advertising) displayed on the site are derived from the generic meaning of the term “walkaway” when used in connection with the ability to obtain debt relief from home mortgages, rather than from any trademark, source-identifying aspect of that term.
Although other panels have noted the lack of societal benefit offered by PPC landing pages of the type offered by the Respondent, those panels also have recognized that domain names that are descriptive and used for PPC advertising keyed only to the descriptive meaning of the domain name can constitute a legitimate interest for the purposes of the policy.
Now this would have been good enough from the Respondent’s standpoint, but the Panelists, David H. Bernstein, Diane Cabell, Ian Barker, took it one step further. they held that “Even if it is true that the ads in Respondent’s website are related to Complainant’s services, that is a problem of Complainant’s making. Having selected a descriptive term as its mark, Complainant must suffer the consequences, including the fair descriptive use of its mark by other parties.”
WOW!! This is certainly new and refreshing. If a Complainant trademarks a descriptive term, there is a heavier burden to prove in a UDRP ACTION.
Thanks for “listening,
Howard
The Neu Facebook
