Uncertainty in Protecting Two and Three Letter Trademarks

There have been a number of recent cases involving two to five letter domain names accused of violating the Policy. The history is mixed, but there is a lesson for a losing complainant. The winning complainant generally has a famous or well known acronym. Two recent examples are interesting, one for which the complainant was successful, Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008) (<lh.com>, transferred over dissent), and the other not, Museum of Science and Industry v. Sam Wilkinson, FA0806001211341 (Nat. Arb. Forum August 12, 2008) [<msichicago.com>]). The Respondent in Deutsche Lufthansa is presently contesting the transfer order in an ACPA action the District Court for the Southern District of New York (discussed in Plenary Adjudication After An Adverse Decision, June 24, 2008).   The dissent rejected the majority’s finding in a strongly worded opinion that the letters LH were distinctive as a trademark.
Some panelists have suggested that the failure to perform a Google search prior to acquiring the domain name is grounds for finding bad faith. CTV Inc. v. Murat Yikilmaz, FA0804001177671 (Nat. Arb. Forum June 10, 2008) (<ctv.com>, transferred over dissent who stated that registering “a domain name without a prior Google search seems to me to be wilful blindness”).   Automated registration programs used by professional traders to snap up expired domain names are not “ a shield against bad faith” and should not be discounted as a factor. Geopack v. Name Administration Inc. (BVI), D2006-1590 (WIPO March 15, 2007) (not an acronym case).  
In order for a complainant to succeed on an acronym claim where the letters are used by many business, it must offer proof of targeting, ARO v. Philip Price, D2005-0498 (WIPO August 1, 2005) (<aro.com>) (Respondent defaulted):
the Domain Name is a three-letter word which appears as a common abbreviation as confirmed by a quick search on Google search-engine that has shown that “aro” is used by many different users (amongst others: Army Research Office, Association for Research on Otolaryngology) as an abbreviation.”]  
Generally the trademark owner’s right is only enforced with letters that are famous and well known, which the Panel in Deutsche Lufthansa believed to be the case as did the Panel in Hewlett-Packard Company v. Kim Yong Hwan, FA0008000095358 (Nat. Arb. Forum September 7, 2000) (U.S. Complainant; Korean Respondent, <hpweb.com>). In these cases, willful blindness – an unacceptable level of ignorance – of another’s rights is tantamount to knowledge that negates good faith. In Red Nacional De Los Ferrocarriles Espanoles, D2001‑0981 (WIPO November 21, 2001) (a five letter acronym, <renfe.com>), the Respondent, by his own showing a knowledgeable Internet analyst, registered a recently lapsed, commonly searched domain name. The Panel held that
where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.
The complainant’s burden in these cases is to demonstrate, and thereby persuade the Panel, that it is known by the acronym. The Panel in Museum of Science and Industry put the matter bluntly:
Complainant appears to have a well known and respected reputation in the industry for its name “Museum of Science and Industry.” Its advertising and products are also promoted under the name “Museum of Science and Industry.” However, at issue in this proceeding is the acronym MSIChicago. Complainant must meet its burden of proof in showing that it has sufficient common law rights and secondary meaning and meets the UDRP standards for MSIChicago.
The Respondent stated that “he registered the domain name with the intention of creating an informational website entitled “Minority Serving Institutions of Chicago,” which is abbreviated as “MSIChicago.” This seems slim for parties whose home base is Chicago, but the Panel focused on the Complainant’s failure to satisfy its right to the acronym. and discounted “willful blindness.”