Search Trademarks Before Registering a Domain
You notice an appealing-looking domain name in an auction. It contains a few terms from dictionaries. There are no similar trademarks that you are aware of.
What responsibility do you now have to look into trademarks before buying the domain name?
Although the UDRP has some case history, there is no conclusive solution. A recent case adds to this collection of recommendations.
The panel debated this issue in Delta Dental Plans Association v. Kwangpyo Kim, which concerned the domain name DeltaLife.com.
The Respondent purchased this domain at auction in December 2021 for $3,555. Earlier that year, the complainant registered a U.S. trademark for DeltaLife.
Kwangpyo Kim is a domain investor, and UDRP panels typically hold domain investors to a slightly greater standard of care when it comes to performing research before purchasing a domain. The Respondent acknowledged that he did not Google the keyword or look for trademarks before purchasing the domain. He only discovered that numerous other businesses had registered domains with similar names.
But the panel considered what he would have seen if he had checked on Google before registering the name.
“The Panel has reviewed the three pages of the Google search provided by the Respondent for “delta” and “life”. The Respondent says that it yields over 11,000,000 results for “delta life”, but, in fact, a search for the combined term, rather than for the separate words, yields approximately 44,000 results. The search reveals that “Delta Life” is used as a domain name by an insurance company in the United States doing business under the domain name delta-life.com, a life insurance company in Bangladesh using deltalife.org and a fitness franchise using deltalifefitness.com as well as (by way of example) other variants used for a book about life in river delta regions around the world and by a Mississippi delta clothing company.
Neither Party has identified any search result that identifies the Complainant or its use of “Delta Life” as a trade mark in any online search result. Indeed, the Complainant has failed to offer any evidence that its “Delta Life” mark is well-known anywhere.”
In other words, the domain owner would not have discovered anything indicating that the Complainant possessed a trademark for this term even if he had conducted a preliminary search.
Due to his location in Korea, the respondent didn’t necessarily need to look for the trademark in the American patent database (among many other trademarks for Delta Life). The panel might have decided that the Respondent should have looked in the U.S. database or not purchased the domain if all of the Google search results had shown that this is a well-known trademark for a corporation.
There is one more catch to this situation. Ads for insurance, which is what the complainant’s trademark is for, were displayed on the pay-per-click parking page. However, there are other insurance businesses with this name, and an insurance company used to possess DeltaLife.com. Therefore, it’s possible that the links were rational and not intended to harm the complainant. After receiving the complaint, the Respondent updated the links, and I doubt his judgment in this case because they now include travel links. If Delta has a globally recognized trademark, it is for travel.
Despite declining to find reverse domain name hijacking, the three-person World Intellectual Property Organization panel ruled in favor of the domain owner.
Source: Domain Name Wire