auDRP Panel Slaps Down Generic Term Claim

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A three member WIPO panel has found in favour of the Respondent who registered the generic word makegood.com.au, and found that the Complainant had engaged in Reverse Domain Name Hijacking.

The Background

The dispute revolved around the domain makegood.com.au which is a commonly used and descriptive term, which indicates the process of reinstating a premises typically at the end of a lease. Makegood services are offered by most commercial builders often in association with their commercial fit out services.

In this case the Complainant brought an auDRP complaint after the Respondent a long established commercial building company referred to sell the domain name to the Complainant. The Respondent had been offering make good services for the large clients including the Big 4 banks since 1990 long before the Complainant ever existed.

Observations of the Panel

The Panel made some observations:

The Panel considers that the starting point is the fact that the disputed domain name consists of an ordinary English expression. As the Complainants contend, that does not automatically confer an entitlement to the disputed domain name. In the present case, however, the term “make good” is directly descriptive of services which the Respondent provides and, so far as the record in this proceeding shows, has been providing for a long time before this dispute arose.

Thirdly, it is important to note the nature of the Second Complainant’s registered trade marks. As already noted, they consist of a graphic device and a textual expression which is very close to an ordinary English expression which, as the Panel have already noted, is being used by the Respondent in connection with services which that expression aptly describes. In these circumstances, the warning given by Stephen J in Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 is apposite:

“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”

And finally in the context of the Reverse Domain Name Hijacking finding by Neil Brown QC:

I would make a finding of RDNH in the present case for two reasons. First, the case comes within that category of cases where the complainant must have known that it could not prove the essential elements of the claim, but nevertheless went on to file the complaint. Not only did the Complainants do this, but they extrapolated a case from the bare minimum that the Respondent was astute enough to buy a domain name that the Complainants want and to build on that bare fact a series of unsupported allegations.

Take away

This case once again highlights that fact that the auDRP is not a plan B to try take a domain name where the Respondent refuses to sell it, particularly in circumstances where the Respondent is using a generic word that describes a services that it offers.

This case has been added to our Hall of Shame.

DNJ

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