The Uniform Domain Name Dispute Resolution Policy is a non-exclusive arbitral proceeding (alternative to a statutory action under the Anticybersquatting Consumer Protection Act) implemented for trademark rights' owners to challenge domain names allegedly registered for unlawful purposes. Policy, paragraph 4(a) states that a registrant is "required to submit to a mandatory administrative proceeding in the event that a third-party ... asserts to the applicable Provider that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights." Proof for registered trademarks is easy since the certificate of registration attached to the complaint establishes the right.
However, for unregistered trademarks (common law, 1b applications in the U.S, supplemental register in the U.S., and state or regional as opposed to registrations in national registries) complainants must prove their rights by establishing secondary meaning of their marks, which means demonstrating presence in the marketplace predating registrations of the subject domain names. The ACPA language is more explicit and clearer than the UDRP; it requires the mark to be "distinctive at the time of the registration of the domain name."
Both ICANN Panels and U.S. courts demand proof of secondary meaning, which is demonstrable by offering evidence of (1) the length and continuity of a mark's use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. Since these are facts within a complainant's knowledge and control, to withhold proof (to be silent or evasive) supports an adverse inference.
Complainants of less well-known alleged common law marks have heavier burdens. WORLD CLAIM, LAWYERS SERVICE, and SYMBOL OF LOVE (recent examples of alleged marks on the lower end of the scale discussed further below) fail on the standing issue. In contrast, DUKE (a trademark for Duke University) has a high past and present reputation so that Duke's burden for common law rights to a domain name incorporating the mark with a generic term is relatively light.
Even if lesser known marks qualify for standing complainants may be stymied for insufficiency of reputation proof. An example is Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA1609001693876 (Forum November 3, 2016). The determination depends on the weakness of complainant's prima facie case and the merit of respondent's rebuttal. The reason proof may be sufficient for standing but not for bad faith (in Record Connect Respondent didn't even contest the right) is explained by a mark's lack of reputation at the time the domain name was registered. The less reputation a complainant had in the past (even though its reputation may have improved and be significant in the present) the greater the likelihood respondent's plausible denial of knowledge will prevail on the merits.
In Record Connect the Complainant claims to have common law rights in the RECORD CONNECT mark dating back to its first use in commerce in 2012 but,
[t]o have common law rights, a complainant must demonstrate that a mark has acquired secondary meaning. Relevant evidence of secondary meaning can include sales figures, length of use of a mark, and expenditures in maintaining the mark. [Citing earlier authority] … Complainant provided the following evidence to demonstrate common law rights in the mark: A sworn affidavit indicating use of the RECORD CONNECT mark since 2012, with annual sales under the mark of approximately $2,440,000.00 and annual marketing expenses of about $36,000.00….
Although Complainant qualified the Panel found that it was "unclear how far those rights date back." The evidentiary problem is that "Complainant simply states that consumers have come to know of Complainant by the mark." But, Complainant offered no surveys or other proof of primary association by the public."And concluded that "[m]ere self-serving testimony [even though alleged in the declaration] without proof of secondary meaning is inadequate to support a finding of common law rights in a mark." In any event, having conducted this exercise "the Panel finds that it unnecessary to determine when Complainant's exact rights arise in this matter as it finds that Respondent has rights and legitimate interest in the domain name."
It is a rule that declarations of common law rights fail when unaccompanied by supporting evidence. However, a complainant's position can be bolstered by the full record that includes the contents of the resolving website. In Mr. Olufela Olufemi Anikulapo Kuti v. Domain Administrator, NameFind LLC, D2016-0575 (WIPO April 28, 2016) (<femikuti.com>, Complainant's stage name) what the Complainant couldn't do for himself the Respondent (unknowingly) did for him:
Very fortunately for the Complainant, the advertising links on the Respondent's own website demonstrate that the Complainant has been performing and making records under his stage name since at least 1999 and that he has achieved a sufficient standard of fame for there to be a 'Femi Kuti Concert' at the Royal Albert Hall in London in about two months time from the date of this decision. One of the Respondent's advertising links is offering tickets for the event.
Several other Complainants in November decisions also fell short, either for lack of reputation or inconsistencies in their evidence of market presence. Complainant in John Klanian, President Symbol of Love, LLC v. Null Null / this Domain Is for Sale, FA160900 1694475 (Forum November 1, 2016) (<symboloflove.com>) "inadvertently allowed [its trademark] to lapse" and when it registered the mark a second time it represented first use in commerce as a date later than in the original application. The inconsistency resulted in the Panel noting there isn't even "evidence of ongoing continuous use of the trademark. The dates of first use in commerce claimed by the 1997 Registration and the 2008 Registration are inconsistent and in the latter case postdate the registration date of the domain name." Inconsistencies of this kind undercut credibility.
Two cases stand out for proving common law rights and prevailing on the issue of bad faith. Liquid Enterprises B.V. v. Team Liquid CA, CAC 101303 (ADR.eu November 8, 2016) (<team liquid.com>) and Duke University v. David Hanley, FA1609001692961 (Forum November 9, 2016) (<dukecareers.com>).
Liquid Enterprises illustrates a category of disputes in which the mark "had become a distinctive identifier association with the Complainant and its services and goods, i.e. after the Complainant gained common law rights in TEAD LIQUID and after the [term] 'TEAD LIQUID' had grown into a well known professional eSports team." In other words, Complainant's mark had a solid reputation when Respondent purchased the domain name even though the mark was not then registered.
Duke University illustrates a variant of Liquid Enterprises. Complaint does not claim it owns a USPTO registration for DUKE CAREERS but it holds hold common law rights in the mark for its use along with various employment-related services dating back to at least as early as July 10, 2010, which predates the registration of the domain name (2013). The Panel agreed. It held that the suffix "careers" is generic, "so its addition to the DUKE trademark does not differentiate the domain name and trademark." The Panel held further that while it could,
accept that there may well be some logistics [probably means 'logic'] in the Respondent's argumentation here, the way Respondent has used the disputed domain name still clearly indicates that Respondent registered and used <dukecareers.com> with knowledge of Complainant's prior rights to the DUKE trademarks.
Liquid Enterprises and Duke University are on one end of the spectrum; New Jersey Lawyers Service, LLC v. Guaranteed Subpoena Service, Inc., FA1609001695657 (Forum November 10, 2016) (<lawyersservice.com>) and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), D2016-1811 (WIPO November 7, 2016) (<bernette.com>) and WorldClaim Global Claims Management v. Bishop, Atticus / Bishop, FA1609001694577 (Forum November 7, 2016) (<worldclaim.com>) are on the other.
In Bernina Complainant "produced some Google Switzerland searches in which [it] features prominently as well as some brochures — but there is nothing demonstrating the scale of its activities or the extent of its alleged worldwide reputation." More importantly, Complainant "declined to produce evidence of its sales figures, saying that they were confidential, but it indicated that it would nonetheless submit them if considered essential by the Panel." Withholding evidence is no different from there being no evidence: "if the Complainant wanted the Panel to consider certain evidence, then it should have produced it in conjunction with its pleading. It should not rely on the possibility that the Panel might decide to request further evidence (which it declines to do). In any case, the Complainant could surely have produced other non-confidential evidence of scale or reputation had it wished to so."
New Jersey Lawyers Service is a variant of Bernina. It also draws attention to a critical difference between a trade name and a trademark. Complainant failed to provide evidence of any common law rights other than some advertising that indicates the term was used as a trade name rather than a trademark. Trade names are not protectable: "evidence of use of a trade name is insufficient to prove that Complainant has Common Law rights on a trademark and that such trademark has acquired secondary meaning through the use of a trade name. Previous panels have held that usage as a trade name does not serve to establish common law rights in a mark."
The final example is WorldClaim Global Claims Management v. Bishop, Atticus / Bishop, FA1609001694577 (Forum November 7, 2016) (<worldclaim.com>). It illustrates the heightened burden for a combination of dictionary words that is not particularly distinctive:
The Panel is aware that in these proceedings a complainant may prove rights in an unregistered, common law mark, but one would need very compelling evidence to show that the combination of two descriptive words such as "world" and "claim" had become a common law mark by November 5, 1999. However, Complainant has not made any contention or provided any evidence that any WORLDCLAIM common law mark existed at the time of the registration of the disputed domain name.
In each of these cases, whether prevailing or failing to qualify Panels to focus their attention on complainant's evidence (or lack thereof) of use in commerce when the domain name was registered. Only if there's some evidence of use does the alleged mark qualify for maintaining the proceeding, otherwise the complaint is properly dismissed.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP