A well-known trademark does not defeat the use of a term in a descriptive manner

Redundancy concept. Know your rights sign.A well-known trademark does not defeat the use of a term in a descriptive manner


According to a decision rendered on December 8, 2022, a WIPO expert ruled on a RIPO complaint filed by B.S.A., a subsidiary of Lactalis Group. The complaint was regarding the famous “PRESIDENT” Camembert, which marketed several cheese types under this trademark. The trademark “PRESIDENT” has been registered in Australia since 1978 by B.SA., in class 29. 

The Disputed Domain Name, <president.com.au>, was registered on June 22, 2006, by Internet Products Sales & Services Pty Ltd. This is a company specializing in domain registration and resale. By registering such a domain name, the company is taking advantage of the likelihood that people may use the domain name to search for information related to “President”. This gives the company the opportunity to generate revenue from pay-per-click links. The disputed name links to a page with pay-per-click links such as “Presidents of the Senate”, “Presidents of America” and “Presidents of a Company”. As a reminder, pay-per-click is a business model where the advertiser compensates the host of an ad based on the number of interactions it has generated. The page also indicates that the domain name “could be for sale”, proposing a form to submit an offer, without indicating a price. In support of its complaint, the Complainant invokes the reputation of its trademark “PRESIDENT” and argues that the Disputed Domain Name was registered with the sole purpose of being resold to it at a high price. 

In the Complainant’s view, the domain name was registered to sell it to the Complainant. The commercial link page prejudices the Complainant. However, there is no evidence that the Respondent targeted the Complainant’s trademark. The fact that it offered a form to redeem the domain name is not sufficient to prove bad faith. The Complainant further argues that the Respondent, which holds a large portfolio of domain names (more than 7,000), had a duty to check registrations for infringement of third-party trademarks. The Panel notes that in the case of domain names consisting of generic terms and used for that purpose, it is difficult to blame the Respondent for not conducting a trademark search. In addition, there is no evidence in the record that the Respondent used the name in connection with the Complainant’s business. The Panelist notes that, despite a substantial domain name portfolio, the Respondent appears to have only registered names composed of dictionary terms between 2006 and 2022. The Respondent was the target of only one successful UDRP complaint. In this case, the Complainant must present even stronger arguments: “Generally speaking, the less unique the complainant’s trademark or name, the more likely it is that the respondent will have rights or a legitimate interest in a corresponding domain name“. It is, however, not enough to establish a respondent’s absence of legitimate interests, rights, or bad faith for a domain name that contains a dictionary word or expression. Thus, the expert considered that although the use of a domain name for a pay-per-click link page is generally not considered to generate rights or legitimate interests, this may be the case when the domain name consists of a dictionary word and is associated in connection with that word. This is because dictionary words often have multiple meanings and can be used to describe a variety of products or services. Thus, the use of a domain name that contains a dictionary word or expression can be legitimate if it is used in connection with the word and is not used solely for the purpose of driving traffic to a pay-per-click link page.

Nevertheless, the Panel decided not to rule on the issue of rights and legitimate interests in light of its observations of bad faith. The Panel notes that the Complainant has not provided any evidence of its reputation or activity in Australia when registering the domain name in 2006. As a result of this decision, it is worth recalling that the UDRP procedure provides that these criteria are cumulative, whereas the UDRP procedure stipulates that registration or use in bad faith is sufficient. The expert’s decision is logical: trademarks should not prevent the use of a term in its descriptive sense. The expert’s solution is thought-provoking and logic leads one to wonder whether his position might have been different if one of the pay-per-click tabs displayed links related to dairy products. Finally, in view of the elements of the file, B.S.A. should have known that its complaint had almost no chance of succeeding. This is especially since the name is old and there is no evidence that B.S.A received a sales proposal from the defendant.