Seemingly generic domain names can often turn into a trademark nightmare when used in combination with pay per click parking pages. A recent proceeding in front of the World Intellectual Property Organization demonstrates that a registrant’s inability to control these pay per click parking ads can result in the loss of a domain name. It is important to realize that these parking pages can be used against you as evidence of your bad faith intent to profit from the trademark of another.
In The Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com / Brian Wick (Case No. D2008-0021), Saul Zaentz went after CheapYellowPages for its use of a pay per click parking page on hobbitts.com. Zaentz is the owner of the HOBBIT mark, also known as those vertically-challenged humanoids seen prancing across the mountains of Mordor to Mt. Doom. CheapYellowPages registered its precious, hobitts.com, and threw up the standard pay per click parking page. Saul Zaenta brought suit, and CheapYellowPages argued that hobbit was a generic term used for small persons or things or, alternatively, high order bits in software programming. The panel didn’t buy the arguments, and instead found that CheapYellowPages chose the domain name to capitalize off of the famous HOBBIT mark.
The interesting component of this case arises out of an issue that we see often. In deciding whether the Respondent registered in bad faith, the court looked to the use of a pay per click parking page. CheapYellowPages’ pay per click parking page offered visitors “a wide variety of commercial products and services offered by third-party advertisers.” The panel specifically noted that, even if they were to accept Respondent’s argument that hobbitts is generic, these ads “do not concern mythological creatures, small people, or high-order bits in software code.” Thus, even though the ads were not directly trading off of the HOBBIT mark by generating links to third parties selling products in competition with Saul Zaentz, the panel still found bad faith registration.
Those utilizing parking pages should understand that the contextual ads generated by parking pages can and will be used against you in an arbitration proceeding under the UDRP or in a lawsuit under the Anticybersquatting Consumer Protection Act. As we have said before, these ads often end up as Exhibit 1 in a UDRP proceeding as evidence of a bad faith intent to profit from the use of a registered mark, even if you believe that the mark is generic. If you are faced with a threat of infringement under the UDRP or the ACPA, or if you believe that someone is infringing on your valuable mark through their use of a pay per click parking page, contact an attorney well-versed in this area.