UDRP Decision Features Early Warning Re SCOTUS’s Booking.com Ruling

On June 30, 2020, the Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V. that trademarks paring generic terms with top-level domain names (i.e., BOOKING.COM) are not per se generic.  Exactly three months later, at least one UDRP panelist, citing the Supreme Court’s analysis, would have denied a complaint based on complainant’s inability to establish common-law rights in an arguably generic domain name (but the decision ultimately turned on other issues).      

Complainant Sahil Gupta operated a business called Spase, incorporated in February 2019, that converted photographs into 3D models.  Gupta owned no trademark registrations in the SPASE mark, but argued his common-law rights had been established through his media presence, Twitter posts, podcast interviews, customer interactions, reviews, and advertising and promotion on the <spase.io> website and other online locations.  Gupta described his 3D modeling business thus:

Basically it’s in real life, it’s called augmented reality.  But it really is kind of, it’s real life because it’s in your Spase, it’s in your time.  It’s true to color, it’s trues [sic] to shape, and it’s true to size. . . it’s a word that I made for Spase that describes this particular kind of three D model that is meant for augmented reality.

After trying and failing to purchase the <spase.com> domain name from Respondent Michal Lichtman, Gupta filed a UDRP complaint. 

To succeed in a UDRP proceeding, a complainant must establish: (1) the disputed domain is identical or confusingly similar to the complainant’s trademark or service mark; (2) the domain name registrant has no rights or legitimate interests in the domain; and (3) the domain was registered and is being used in bad faith.  Here, as evidence of Lichtman’s bad-faith, Gupta pointed to the facts that Lichtman had made no active use of the domain name for years, and that she had lost prior UDRP proceedings, proving she was a serial cybersquatter.

Lichtman’s business was to sell and lease descriptive or generic domain names.  She claimed to have registered the disputed <spase.com> domain name on February 3, 2005 and used it for parking pages to generate pay-per-click revenue ever since.  She also argued that the domain name was generic.  According to Lichtman, “spase” is a dictionary word meaning “save” in Bosnian, and nineteen U.S. companies were using the word in all or part of their company names.  She also pointed to at least 171 people who used the word in connection with their Facebook handles.

Determining whether a complainant has rights in a trademark or service mark serves as a UDRP standing requirement.  Here, the three-person panel agreed that Gupta had established common-law rights in the SPASE mark, but had little trouble finding that not only was the domain not registered in bad faith, but that Gupta had committed reverse domain name hijacking.  Because Lichtman had registered and used the domain name some fourteen years before Gupta adopted of the SPASE name, she could not have registered it in bad faith.  No exceptional circumstances suggested Respondent registered the domain name to exploit or profit from Gupta’s, or anyone else’s, rights.

But in a footnote, one panelist, though agreeing to determine the case on the more substantive issues involved, found it doubtful that Gupta had even established common-law rights.  Citing the Supreme Court’s Booking.com decision, the panelist noted that the analysis focused on whether consumers would see the proposed mark as an identifier of source.  Here, Gupta himself described “spase” as invoking the generic notion of “space” as part of his marketing.  “Thus,” the panelist concluded, “it is probably generic and the evidence does not show any other way in which consumers might see the word.  Indeed, the evidence adduced by Complainant seems designed to emphasize the generic nature of the word.”  The panelist further observed that “[o]ther evidence, such as surveys of consumer reaction might have produced a different result.” 

Key takeaways:

1. If your trademark rights do not pre-date the disputed domain name’s creation date, you must have compelling evidence that the domain name registrant registered the domain name specifically targeting your brand;
2. If your asserted trademark consists of dictionary words with arguably generic/descriptive meanings, be careful how you describe your business to the public; and
3. This case could be an early warning that Booking.com may have raised the burden of proof for common-law trademark holders looking to establish UDRP standing.

The case is Sahil Gupta v. Michal Lichtman / Domain Admin, Mrs Jello, LLC, Case No. D2020-1786 (WIPO Sept. 15, 2020).