WIPO makes notable and controversial decision on acronym domains

Majority of panel rules that CEAT.com ought to be transferred to tire firm.

A three person World Intellectual Property Organization panel has handed down a decision over CEAT.com, and it is sure to be controversial.

The complainant is a tire firm in India, and the respondent was Kevin Ham’s Vertical Axis.

As one of the larger domain portfolio holders, Vertical axis registers many two, three, and four character domain names.

And although a simple search for “CEAT” returns many results for this acronym, a majority of the panel found in favor of the tire firm.

The majority wrote:

The value of the disputed domain name to the Respondent is, therefore, its value as a trademark referring to Complainant and to the a number of other organizations identified by the Respondent who also use the letters “CEAT” as their marks. As Respondent itself points out and as a search of Acronym Finder reveals, all of the top references provided for the acronym “CEAT” refer to a specific trade association or trademark, i.e. the College of Engineering and Technology, the Code Enforcement Association of Texas, and the Center for Excellence for Airport Technology. It is of no consequence that “CEAT” is a short domain name or that the Respondent is in the business of registering short domain names. Simply since an acronym or domain name is short (such as IBM or NFL or GAP or NAF or SONY or AMEX or INTA or WIPO) does not mean that respondents have an automatic right to register such domain names and use them for PPC parking page.

Among the other reasons this rationale is controversial is that it instills a sense of “first to file a complaint” amongst acronym holders. It doesn’t appear that there’s evidence that CEAT.com was registered to target the tire maker’s trademark. Yet since it was the first to file a complaint, it will get the domain whereas other firms that use the acronym lose out.

Panelist Neil A. Brown gave a well reasoned and long dissent.

Brown summarizes the dispute this way:

The difference between the parties is that the Complainant’s position is that it may use the acronym as a trademark, as it has, but that the Respondent may not use the acronym as a domain name and nor, presumably, may anyone else. The Respondent’s position is that the Complainant may use the acronym as a trademark, the Respondent may use it as a domain name and the two can function in harmony so long as it, the Respondent, does not abuse the Complainant’s trademark rights or act in a misleading or deceptive way. In essence, I support the Respondent’s position on that dispute as it is consistent with the Policy and not contrary to any provision of it.

Brown also opines on acronyms as domain names:

An acronym has its own meaning and a unique value since of its short length, unusual combination of letters and sounds and since it can be used for general identification or branding as is universally practised in the commercial world today. It is therefore appropriate that such an acronym ought to give rise to a legitimate interest in a domain name provided there is no evidence or inference or even suspicion of abuse by the registrant of the trademark owner’s rights. To hold that such a valuable word cannot be used as a domain name simply since “the domain name is a trademark and has no descriptive meaning” is not supported by the Policy and is a very severe restriction on the right to register a domain name that is not contemplated by ICANN in its policies or practices.

… and more thoughts on registering short domain names:

Indeed, its is not willful blindness to buy a domain name that is an acronym and a 4-letter word that may be of value to a commercial party other than the Complainant who wants a short easy-to-remember word, a catchy word to describe a fresh firm or product or an organization or business the acronym of which spells out the word “ceat”. No-one who has been through the soul-destroying process of trying to find a short, phonetic domain name with the right letters could possibly disagree with that view.

Brown also touches on the issue of why it took the tire firm over a decade to file the complaint if it thought the alleged bad faith was so bad.

Parking a short domain is always risky. Indeed, had CEAT.com resolved to a page focuses mostly on tires, it would be much easier to find in the tire marker’s favor. But that wasn’t the case here, and Brown got it right.