The recent UDRP complaint filed by Abnormal Security Corporation over the domain name abnormal.ai highlights the pitfalls of pursuing weak trademark claims in the domain name space. This case serves as a cautionary tale for companies considering similar actions, especially when dealing with common dictionary words.
Facts in the abnormal.ai complaint
Flawed UDRP Foundation:
Abnormal Security Corporation’s complaint was fundamentally flawed from the outset. The company lacks a registered trademark for the word “Abnormal” alone. Their pending intent-to-use application is for a stylized version, not a standard character mark. Their only registered mark, “ABNORMAL SECURITY,” has only been in use since 2018 – hardly establishing long-standing rights or fame.
Ubiquity of “Abnormal”:
The word “abnormal” is registered in at least 111 different TLDs by various entities. This widespread use clearly demonstrates it’s a common term not exclusively associated with any single company. Furthermore, at least 16 “abnormal” domains are listed in various marketplaces, indicating active trading of this generic word as a valuable asset.
Key Factors In the Abnormal.ai UDRP Decision:
- Generic Nature: “Abnormal” is a dictionary word, making it difficult to claim exclusive rights.
- Lack of Distinctiveness: The complainant failed to show how their use of “abnormal” had acquired secondary meaning strongly associated with their brand.
- Prior Registrations: The complainant doesn’t own abnormal.com, registered since 1995, weakening their claim to rights in the term.
- Legitimate Interests: The respondent’s business of investing in generic domain names is a recognized legitimate interest under UDRP precedent.
- No Bad Faith: There was no evidence the respondent targeted the complainant or knew of their trademark claims when registering the domain.
Complainant’s Contentions in Abnormal.ai:
- Claimed rights in the ABNORMAL trademark
- Argued the domain was identical or confusingly similar to their mark
- Asserted Respondent had no rights or legitimate interests
- Claimed the domain was acquired in bad faith
Respondent’s Contentions:
Argued “abnormal” is a generic dictionary term
Stated they had no prior knowledge of Complainant
Claimed legitimate acquisition at auction
Analysis and Findings by the Panelists regarding the abnormal.ai Complaint
Analysis of the “.ai” TLD:
- The panel noted that while traditionally TLDs are ignored in similarity comparisons, there may be good reasons not to ignore “.ai”
- “.ai” is recognized as both the country code for Anguilla and a generic TLD associated with artificial intelligence
- This interpretation affects how internet users would perceive the domain
Rights and Legitimate Interests in Abnormal.ai:
- The panel found that the Respondent had rights and legitimate interests in the domain name.
- “Abnormal” is a common dictionary word, and the Respondent legitimately acquired it at auction as part of their business of buying and selling generic domain names.
- There was no compelling evidence that the Complainant’s marks were famous or that the Respondent had any bad intentions.
- The panel emphasized that anyone has the right to use ordinary dictionary words in domain names, absent compelling evidence of bad intention
Bad Faith Considerations:
- The panel noted that offering to sell a domain name is not inherently bad faith
- It’s particularly unlikely to be bad faith when the Complainant approaches the Respondent to buy the domain, rather than vice versa
The decision cites several previous UDRP cases and principles to support its reasoning:
- Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017): Investing in generic terms for resale can confer rights and legitimate interests.
- X6D Limited v. Telepathy, Inc., Case No. D2010-1519 (Nov. 16, 2010): Registering and selling descriptive domain names is a legitimate business model.
- Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001): Domain name speculation can constitute a bona fide activity.
- Incorp Services, Inc. v. RareNames, WebReg, 559911 (Forum Nov. 10, 2005): Selling generic domain names is a bona fide offering of goods or services.
- General Machine Products Company, Inc. v. Prime Domains, FA92531 (Forum Mar. 16, 2000): Respondent established legitimate interests in selling generic domain names.
- Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd., FA 1701430 (Forum Jan. 1, 2017): Acquiring valuable non-distinctive domain names at auction is legitimate.
- Gridiron Fiber Corp. and Lumos Telephone LLC v. Yui Quan, FA 1970005 (Forum Dec. 2021): Acquiring domain names at auction for business opportunities is legitimate.
- Technologies Sensopia Inc. v. BLUE NOVA INC., FA 1725217 (Forum June 9, 2017): Reselling descriptive domain names is not bad faith without targeting the mark owner.
- Live-Right, LLC v. Domain Administrator / Vertical Axis Inc., FA 1622960 (Forum July 16, 2015): Registering domain names with common terms is not bad faith.
These cases support the principle that registering and reselling generic or descriptive domain names is a legitimate business practice and does not inherently constitute bad faith, especially when there’s no evidence of targeting a specific trademark owner.
ICANN Policy Cited:
The decision reiterates that all three elements of the ICANN Policy must be established for a complaint to succeed
The Panel Refused to Reverse Domain Name Hijacking:
- While the Complainant’s case was weak, the panel did not find it constituted reverse domain name hijacking
- They believed the Complainant could have reasonably thought they might prevail
Why the Panelists’ should Have Found Reverse Domain Name Hijacking (RDNH) in its Abnormal.ai decision
Abnormal Security Corporation’s complaint appears to be an attempt at reverse domain name hijacking. Companies must carefully evaluate their trademark position and the broader domain landscape before pursuing UDRP actions, especially for common words. This case reinforces the importance of strong, distinctive trademarks and the limitations of using UDRP to claim rights in generic terms.
Why the Abnormal.ai Complaint Was Doomed:
- The domain is identical or confusingly similar to their trademark
- The respondent has no rights or legitimate interests in the domain
- The domain was registered and used in bad faith
This complaint fails on all three counts. The complainant’s trademark rights are weak and not clearly established for “abnormal” alone. The respondent has a legitimate interest in registering generic terms. There’s no evidence of bad faith targeting of the complainant.