202109.10

UDRP targeting gnp.com: brief comment on the strategy to adopt in the case of a short acronym brand

Grupo Nacional Provincial is a Mexican insurance company founded in 1907 which owns several Mexican trademarks composed of the acronym “GNP”. GNC wanted to secure the domain name that perfectly matches its brands: gnp.com. There are several legal means of obtaining a domain name: surveillance with automatic registration (if the domain name falls back into the public domain), indirect and confidential negotiation via a trusted third party, direct negotiation, judicial or extrajudicial procedures (including the Uniform Domain Name Dispute Resolution Policy or UDRP). In this case, it is not known whether Grupo Nacional Provincial resorted to one or more of these means before initiating a UDRP procedure (WIPO, D2021-1136, Grupo Nacional Provincial, S.A. v. Privacydotlink Customer 4270030 / Yancy Naughton, August 26, 2021).

Like the vast majority of .COM domain names consisting of four letters or less, gnp.com was created in the early nineties. Without it being necessary to retrace its history, it is legitimate to assume that it has been sold several times, its value constantly increasing at each transaction. In 2021, gnp.com is owned by a natural person who trades in domain names, including those composed of three characters because of their intrinsic value.

UDRP procedures initiated to request the transfer of a short domain name often fail. Indeed, a short name is a rare and coveted name. As a result, except for some well-known brands (such as IBM or KFC), The shorter the domain name, the lower the chances of success. However, the total costs relating to a procedure are undoubtedly lower than the intrinsic value of such a domain name, that is, at the very least, several tens of thousands of dollars, some being estimated at several million. Therefore, some may consider that the benefits of a UDRP procedure outweigh the risks, especially as the sanction for the abuse of procedure (reverse domain name hijacking or RDNH) is symbolic. However, it should be borne in mind that the recognition of a RDNH attempt in the context of a UDRP procedure can serve as a legal basis before the judge.

In this case, the commission, composed of three members, embraced the economic approach by highlighting the intrinsic value of the acronym domain name:

“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”.

The panelists also recalled that freedom of trade applies to the business of selling domain names:

“the Respondent has a legitimate interest in marketing domain names together with custom designed logos when those names have been chosen for their generic nature and do not seek to capitalize on the Complainant’s trademark”.

Finally, the panelists examined the scope of the notoriety of the GNP trademark in order. They concluded that the holder of the domain name, of Czech nationality, might not know the complainant’s trademark. In these circumstances, the panelists wisely recalled that the offer to sell the domain name was a legitimate business activity. As a result, the transfer of the domain name was not ordered.

There remains the negotiation. In the “gnp.com” case, the domain name holder will be in a strong position. Alternative Top-Level domains can also provide a backup route. They are innumerable. Let’s just mention a few: .COMPANY, .GROUP, .INSURANCE, .WORLD. Finally, to no longer have to suffer the inconvenience of the unavailability of short domain names, trademark owners have the option of acquiring their own Top-Level Domain (brandTLD).

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