Business Magazine

John Berryhill Posts a Masterclass on LLL Acronyms and the UDRP

Posted on the 17 October 2021 by Worldwide @thedomains
LLL acronyms

A member at Namepros had a question about a recent dilemma they were facing regarding a LLL.co domain name.

I have received an email from my registrar about an LLL.co acronym domain, one big multi billionairy company demanded to give them a domain, that this is their TM, although this is a common acronym.

Members chimed in with their opinions and then elmoney included the letter from the organization that sent the email. (You can read it here).

Some were telling him that he probably would lose based off of their experience and previous cases they read.

Of course no one was a lawyer.

Thankfully for the OP, John Berryhill entered the thread.

Here is the full post John was kind enough to lay out on Namepros:

Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI)
DKY.com
Case No. D2015-1757
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1757
The Respondent is in the business of monetizing “generic” and three-letter domain names. As submitted by the Respondent, a number of previous panels have found that as long as this business is not infringing on a complainant’s rights in a mark, the Policy allows registration and use of domain names for this purpose.
Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc.
INW.com
WIPO Case No. D2012-0454
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-0454
The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.
R.V. Kuhns & Associates, Inc. v. Gregory Ricks
RVK.com
WIPO Case No. D2014-2041
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-2041
Three-letter domain names are well known to have particular value. They have often been the subject of domain name sales at substantial prices (a fact for which Respondent provided evidence in the Annexes to his Response). As long as Respondent did not register the disputed domain name in bad faith or in an attempt to trade on the goodwill associated with Complainant’s mark (as discussed below), his contention is plausible that he has frequently engaged in the purchase and/or sale of three-letter domain names as part of his business and considers the acquisition of such domain names to be a legitimate enterprise.
PwC Business Trust v. Ultimate Search
PWC.com
WIPO Case No: D2002-0087
http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0087.html
The letters PWC, as the evidence shows clearly, could be attributable to the Public Work Center, Personal Water Craft, Pratt & Whitney Canada, and no doubt to many other identifiable people or matters. This inherent lack of distinctiveness is what undermines the Complainant’s attempts to have the Panel regard mere registration of PWC.com by the Respondent as self evident bad faith.
Braunschweiger Maschinenanstalt AG v. SearchMachine
BMA.com
WIPO Case No. D2011-1794
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1794
In John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 (the domain name <financialreview.com>), the majority of the panel held that there was no evidence that the first respondent who was a dealer in generic names in the United States, knew or ought to have known about a financial newspaper in Australia operating under the relatively descriptive name “Financial Review”. See also Richard L. Kane v. Nick Devine, WIPO Case No. D2001-1028.
——
What gets missed in these discussions, despite years now of pointing this out, is that as noted by another poster upthread, there are a lot of facts that go into these things to decide the outcome, and it is not simply a matter of “three letter trademark vs. three letter domain”.
Some trademarks are more well-known than others. If we are talking about things like IBM, BBC, VW, HSBC or other instantly-recognizable, famous and well-known marks, then the domain registrant is probably not going to do so well.
Another consideration is how well known the three letter combination might be, relative to the trademark.
In the recent case of GNP.com, the question boils down to asking whether the letters “GNP” make you think of:
(a) a Mexican insurance company, or
(b) Gross National Product.
Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton
GNP.com
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1136
The Panel considers a domain name comprising a three-letter combination could readily be purchased for its inherent value as a general acronym and sees no clear evidence on the record in this case to suggest that was not the case. As a general rule it is likely that in such cases the registration will be for bona fide purposes. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.
Thus for example in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (<kis.com>) the legitimate interest in short letter domain names was confirmed by that panel’s statement that:
“The Domain Name at issue here is a three-letter second-level domain within the popular ‘.com’ top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions’ Whois database), including ‘an.com’, ‘hw.com’, ‘vz.com’, ‘xv.com’, ‘yz.com’, ‘zw.com’, ‘aex.com’, ‘fii.com’, ‘ldn.com’, ‘lna.com’, ‘mhi.com’, ‘nnc.com’, ‘otl.com’, ‘tbj.com’, ‘tca.com’, ‘ukt.com’, ‘vaz.com’, ‘vdj.com’, ‘wla.com’, and probably many more. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant’s trademark — indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.”
See also Trans Continental Records, Inc. v. CompanaLLC, WIPO Case No. D2002-0105; Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260; Dumankaya Yapi Malzemeleri v. Name Administration Inc. (BVI), WIPOCase No. D2015-1757; Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc. WIPO Case No. D2012-0454; and R.V. Kuhns & Associates, Inc. v. Gregory RicksWIPO Case No. D2014-2041 all to similar effect.
The Panel accepts (and the Respondent concedes) that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
In this regard the Panel has considered the points made by the Complainant as to its fame and reputation. The evidence establishes the Complainant is a substantial insurance company in Mexico and is likely widely known in that country by the acronym GNP. Conceivably it might be recognised elsewhere by others involved in the insurance business, although the evidence does not clearly establish that is the case. However the evidence does not come anywhere close to establishing that the term GNP was so well-known as to mean a third party based outside Mexico, and operating in a completely different field, either was or should have been aware of the Complainant and its use of the term GNP. In short there is no applicable evidence on the record to suggest that the Respondent had any knowledge of the Respondent when he acquired the Disputed Domain Name.
———–
Do you see how the Panel looks at a broad picture of factual context, and not just “is it a three letter trademark and a three letter domain”?
When someone comes to me with this kind of an issue, it occasionally annoys them when I ask things like, “How many short acronym domains do you have, and what are they?”, “Did you buy it with other domain names and what are they?” and so on.
These things are not decided on some mechanical basis of whether it is a three-letter trademark and a three-letter domain name. How any particular case might come out is a matter of (a) what are all of the relevant facts and (b) having a longstanding familiarity with how these cases are actually decided.
gilescoley said: Have a look at previous cases

Well, instead of telling someone to do that, let’s actually do that.
There have been 482 cases at WIPO in which the sole domain name at issue was three letters long:
https://www.dndisputes.com/search?domain_length=3&number_of_domains=1
If you want to narrow that down to just .com names, there have been 182:
https://www.dndisputes.com/search?domain_extension=com&domain_length=3&number_of_domains=1
The outcomes of those cases break down as folllows:

  • Complaint denied (100)
    • Transfer (45)
    • Terminated (30)
    • Complaint denied with dissenting opinion (3)
    • Case active (2)
    • Transfer with dissenting opinion (1)
    • Terminated by Panel (order published) (1)

Now, it is difficult to tell in “terminated” cases whether there was a payment or simply a surrender by the domain registrant, and maybe someone might look at those 30 cases and see if it was clearly a well-known mark or not.
But if we look at “three letter .com cases which have gone to a decision” then you have 103 complaint denied and 46 transfers.
Overall, three letter .com domain registrants win 69% of the time in WIPO UDRP disputes.
So, if you want to know how your facts sort out, you should click on those links, look at some transfer decisions, look at some complaint denied decisions, and sort out where you think your facts match up best.
There is a species of classic Namepros nonsense that is worth addressing:

jhm said: ↑ If someone owned “KFC dot fitness”, and this is a personal website of a personal trainer called Chris helping people lose weight, and the business stood for “Kill Fat Chris” (funny, but lets go with it as a vague example), I wouldn’t so sure if KFC, the chicken company, have a say in it …considering its an entirely different sector, that isn’t stepping on their business / their interests.

There is a class of UDRP cases in which the domain registrant comes up with some dopey justification which is not believable at all. This type of case, where someone has a globally and instantly recognizable famous mark but claims “Oh, I’m using it for (insert implausible justification here)”.
Those kinds of cases really make me angry because they erode the credibility of domain registrants generally.
So, no, there is no way on this planet that you are going to get away with “IBM.pets” by saying, “Well, you see, I run a business where I sell mice as pets, and I chose the name ‘I breed mice’.”
No. Even if it is true, nobody is going to believe it – and that happens once in a while too. I get bizarre emails from people hunting for justifications for cybersquatting all of the time. Once in a very long while there is someone who picked a really unfortunate name for a marginal but legitimate business, but the fact of the matter is that they are going to lose.
Imagine this scenario. Alan and Bob live in the same apartment building. All of the neighbors see them having a fight in the street. Alan yells “I’m going to kill you!” and Bob runs into the building. As Bob runs into the building, Alan’s girlfriend, who was making dinner, walked out of Alan’s apartment still holding one of Alan’s kitchen knives. She is startled, falls down the stairs, and accidentally plunges the knife into Bob’s chest and kills him. Horrified, she runs out of the back of the building and no one sees her.
Alan comes running into the building immediately afterward. He sees Bob lying there dead with one of Alan’s knives in his chest. He pulls the knife out of Bob and is deciding what to do when the police come rushing in. And there is Alan standing over Bob’s dead body with one of his own knives in his hand.
I don’t care what Alan has to say. He’s going to be arrested. He’s probably going end up being convicted for murdering Bob, because Alan has no idea how one of his knives ended up killing Bob but, there he was, with the knife in his hand and Bob dead on the floor.
Whatever you do, don’t come up with lame-ass stories about how you managed to register a famous trademark through some remarkable coincidence unless you can back it up with remarkable – and credible – evidence. My experience with people who make up these sorts of things is that they have limited critical thinking skills and are unable to assess what is believable and what is not, and that they seem to want to ride two horses at one time – coming up with mutually contradictory justifications in the hope that someone might believe one of them.
In any event, when someone wants to talk about doom & gloom about how the UDRP is unfair, etc., bear in mind that domain registrants win the overwhelming majority of decided three-letter .com single domain name UDRP disputes.

There is another long post by John after some replied, it’s worth reading. You can do that here.

It’s always nice when someone with real experience and expertise weighs in on the important topics.


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