The trademark rights required for standing under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy (UDRP) refer to both registered and unregistered rights. Complainants with registered trademarks satisfy the requirement by submitting their certificates of registration. However, and not surprisingly, complainants with unregistered trademarks have to demonstrate that the alleged marks qualify as such, which requires that complainants prove both secondary meaning of the marks and their distinctiveness prior to the registration of the domain name.
Proving distinctiveness is by no means an easy feat! It demands the kind of robust narrative and evidentiary support that complainants frequently have trouble producing even though they are the custodians of their history. Failure to produce what is expected of them naturally supports an inference that they have no past.
What UDRP Panels are looking for (and this is no less true of judges working with claims brought under the Anticybersquatting Consumer Protection Act) are persuasive records that complainants are entitled to relief. What this entails is explained by the Panel in Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd., D2016-0306 (WIPO April 20, 2016). He stated that
Complainant must provide evidence in support of this acquired distinctiveness, which may include the production of sales and advertising expenditure, examples of advertising and business literature, evidence of third-party use of the trade mark, such as correspondences from suppliers or customers, press cuttings, consumer surveys and the like.
This "is particularly important where a trade mark is not inherently distinctive." The Panel rejected Complainant's contention that BANSKO EXPRESS was inherently distinctive, and even though Complainant alleged a market presence predating registration of the domain name, it produced no evidence that Respondent residing in Bulgaria could have had any knowledge of the mark used in the U.K. when it registered <banskoexresstransfer.com>. Complainant appears to have relied solely on a registration of <banskoexpress.com> which it registered when it allegedly began operating its business.
While other panelists have accepted the possibility that an earlier registered domain name could tip the scale in complainant's favor as some evidence of a trademark's earlier use in commerce, it is insufficient by itself if that is all there is. The respective residences of the parties was also a factor in this case, United Kingdom and Bulgaria. All in all Complainant presented an extremely weak narrative!
There are two familiar factual situations for unregistered rights, namely the rights were unregistered when respondents purchased the allegedly infringing domain names and remain unregistered — Matthew James Spratt is in this class, so too is NYBEST Services, LLC v. Jun Zhu, FA160300 1667008 (Forum April 29, 2016) for (trademark: NYBEST); or the rights were unregistered when the respondent purchased the domain name but complainant subsequently registered the mark. The second class includes Degani Designs, LLC v. Chris Morling / Dot Zinc Limited, FA1603001664293 (Forum April 13, 2016) for (trademark CHOOZE).
I have pointed out previously that even if a complainant has standing by virtue of having a registered mark postdating the registration of the domain name it has no actionable claim under either the UDRP or the ACPA as a matter of law, although owners of later acquired trademarks could conceivably have a statutory claim for bad faith use on proof of common law rights predating the domain name registration under the ACPA. In neither regime is it sufficient merely to allege common law rights; if there is no proof there can be no standing to sue.
I'll talk about NYBEST and Degani Design in a moment to illustrate what I mean by weak narratives. Let's first look at complainants with strong narratives. In Quality Nonsense Limited v. Jerry Sandusky, FA1604001668646 (Forum May 5, 2016) (WHO IS HOSTING THIS and <whoishostingthisblog.com> the Panel noted that —
Complainant has provided [it] with evidence of its continuous use of the WHOISHOSTINGTHIS mark since 2008 through its domain name <whoishostingthis.com> and argues that it has built up considerable good will around the mark, thereby establishing secondary meaning in mark. The Panel agrees with Complainant's contentions and finds that continuous use, holding an identical domain name, and media recognition all serve to establish secondary meaning.
The Respondent defaulted and the Panel was persuaded that the Complainant had been using the mark in commerce by the fact that it —
provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards).
Even though default is not probative of bad faith, the natural inference is that the Respondent defaulted because it had no explanation for registering a domain name varying from the trademark only by adding "blog" to what otherwise is not a particularly strong mark.
The unregistered class also includes complainants with long histories evidenced by their performances in the marketplace where they have "developed sufficient goodwill in [their] name[s] to give rise to common law trademark rights." An example is David Michael Bautista, Jr. v. Quantec LLC / Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC., D2016-0397 (WIPO April 30, 2016) (wrestler, entertainer, and movie star). Entertainers, personalities in the arts, writers, performers, and athletes are all granted honorary status as trademark owners, and domain names are invariably forfeited to complainants. It should be noted, however, that this honorary status does not extend to non-marquee business leaders or attorneys (solo or partners in law firms) unless their names function as trademarks.
Another example of strong narrative and the kind of supporting evidence panelists are looking for is Angela D. Justice-Burrage, dba A.D. Justice v. Al Perkins, D2016-0545 (WIPO May 1, 2016). Complainant is "a published author with several novels available for sale under the same name A.D. Justice. She notes in support of her claim to a trade reputation, that currently her Facebook page indicates a following of more than 13,000 fans and she has provided in support details of various websites that feature her novels for sale and help demonstrate her fan following."
Contrast these narratives with those developed (or rather undeveloped!) in NYBEST and Degani Design, both (incidentally) represented by counsel presumably with some knowledge of UDRP precedent but failing to recognize the evidentiary requirement of the UDRP. In NYBEST, Complainant claimed to have common law rights dating back to 1999 (and even appears to have held the disputed domain name <nybest.org> at one time) but it submitted such a thin narrative of its operation and so little evidence that the Panel dismissed the complaint for failure to satisfy the rights element. Respondent, a Chinese registrant, defaulted. If Complainant could develop a stronger narrative it would have a better chance (a second bite!) in district court under the ACPA
In Degani Design, while "Complainant has established its rights in its CHOOZE trademark to the Panel's satisfaction by submission of evidence of registration for the mark with the USPTO" in 2012 it produced no evidence of use in commence at any time predating the disputed domain registered in 2001. Priority is a major factor in determining registration in bad faith. The Panel continued:
In its rather terse Complaint, Complainant furnishes no evidence that it achieved a secondary meaning, or resulting common law rights with respect to its trademark before obtaining registration for that mark. Thus, there is no reason for the Panel to believe that Complainant had acquired any defensible rights in its trademark prior to registration of the disputed domain name.
Failure to produce evidence is lethal for the reasons already noted and which the Panel goes on to explain:
Many UDRP panels have found such circumstances to prohibit any possible finding of bad faith registration of a disputed domain name. The Panel finds itself compelled to adhere to this reasoning, especially since the registration of the disputed domain name in this case precedes the registration of the operative trademark by more than a decade.
Trademark owners unfamiliar with UDRP jurisprudence should learn, and even those who think they have it down should take stock of their evidentiary burden for proving common law rights. After all, complainants only have one shot to prove their claims. Standing has to be earned. The filing of a UDRP complaint is very much like a motion for summary judgment in a court of law. Thin narratives without evidence, lose; robust narratives with evidence are likely to prevail.a
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP