The recent National Arbitration Forum Claim Number: FA2404002092749 decision to transfer the domain name to PNC Financial Services Group has raised eyebrows among domain name legal experts. While the panelist concluded bad faith registration and use by the respondent domain investor, the reasoning behind this finding appears flawed and overreaching in several respects.
The domain name at issue is brilliantlyboring.com, registered with Dynadot Inc., Created: 2023-12-22 19:48:37 UTC. The DNS servers were set to DAN.com, domain name marketplace.
PARTIES
Complainant is The PNC Financial Services Group, Inc. (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master (“Respondent”), Hong Kong.
Panelist: Ho-Hyun Nahm, Esq.
At its core, the case centered on PNC’s intent-to-use trademark application for “BRILLIANTLY BORING” filed on December 22, 2023 – the same date the respondent registered the corresponding domain. The intent-to-use trademark application was filed about 3 hours before the domain name. Despite PNC’s promotional efforts around this slogan, the panel’s determination that PNC had established strong common law trademark rights worthy of robust legal protection is highly questionable. And it’s not clear from the decision whether those promotional activities pre-dated the trademark application.
Potential Reasons It May Have Been Wrongly Decided:
- Questionable finding of common law trademark rights based mainly on an intent-to-use application and some media coverage, which may not meet the higher threshold for distinguishing a mark in the financial services industry.
- Mere registration of a domain identical to a trademark application on the same date, without more evidence of targeting, may be insufficient to prove bad faith under UDRP precedent.
- The Panel appeared to place significant weight on the Respondent’s failure to respond, which alone should not lead to a robust finding of bad faith acquisition.
- Lack of actual use of the domain by Respondent may undercut claims of targeting and bad faith use specifically against the Complainant’s rights.
- Holding a potentially descriptive domain like passively may not automatically constitute bad faith in disputes involving intent-to-use applications with limited prior use.
- Allegations of the Respondent’s past cybersquatting were accepted uncritically without substantive evidence being provided.
Trademark Applications Don’t Provide Common Law Rights
As seasoned practitioners are well aware, the threshold for proving common law rights, especially in a crowded commercial industry like banking/finance, is relatively high. Merely filing an intent-to-use application and garnering some media attention does not automatically vest a party with unassailable rights over a widely used descriptive phrase like “brilliantly boring.”
Furthermore, the “brilliantly boring” term has been employed across various creative works and commentary pieces predating PNC’s trademark activities. This casts significant doubt over whether the average consumer would immediately associate that expression with PNC’s services in particular. Precedent suggests more is needed to prove full-fledged trademark rights over such a prevalent linguistic phrase.
Third Party Use of term “brilliantly boring”
For example, there’s the following web pages that contain the phrase in title:
FYP Podcast 355 | Brilliantly Boring
Understanding The Brilliantly Boring Business Model
M. Shannon Hernandez | Email Marketing Strategist, published on Sep 11, 2022.
Bad News, Scooby Fans: The New WRX Is Slow And Brilliantly Boring, published on May 18, 2015
https://melophea.blogspot.com/2013/01/brilliantly-boring.html
Even assuming PNC had established some minimal level of relevant trademark rights, the panel’s finding of bad faith registration and use by the respondent based on the limited record evidence constitutes a concerning overextension of the UDRP’s bounds.
Specifically, the panel appeared to place inordinate weight on the identical dateing of the domain registration and PNC’s intent-to-use application filing as virtually conclusive evidence of bad faith targeting. However, UDRP jurisprudence has cautioned against such overly formalistic analyses, requiring a deeper examination of the parties’ specific conduct and circumstances.
Moreover, the respondent’s default and lack of a substantive response, while unfortunate, cannot serve as an independent basis for entering such a robust finding of infringing bad faith under the UDRP’s stringent requirements. Mere accusations of a respondent’s broader history of cybersquatting activities should not be blindly accepted without a complainant meeting its fundamental burdens of proof.
Perhaps most critically, at the time of the UDRP filing, the domain simply resolved to an inactive parking page with no substantive operation that could constitute infringement or disruption of PNC’s rights, whatever their scope. It is well-established under UDRP precedent that passive holding of a domain name alone, especially one consisting of common dictionary terms, does not necessarily constitute bad faith in and of itself.
By overlooking these crucial considerations, the panel ultimately rendered an unsound decision that appears to extend the UDRP’s application far beyond its intended scope as a narrow cybersquatting remedy. If allowed to stand, this worrying precedent threatens to significantly chill the legitimate registration and use of descriptive domains corresponding to broadly descriptive or common phrases.
Other UDRP panels would be wise to scrutinize the questionable reasoning in this outlier decision and realign with the policy’s original spirit and purpose. While each case must be judged on its specific facts, UDRP jurisprudence is best served by adhering to an appropriately high standard for proving bad faith targeting and registration before divesting a domain from its rightful registrant.