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So, You Claim to Have an Unregistered Mark! Is there Cybersquatting?

Gerald M. Levine

Complainants have standing to proceed with a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the accused "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (4(a)(i) of the Policy). Quickly within the first full year of the Policy's implementation (2000) Panels construed "rights" to include unregistered as well as registered marks, a construction swiftly adopted by consensus. Only if a complainant has rights may it proceed to the second and third requirements. Excluded from the term "rights" are "intent to use" marks (because their market presence looks to the future) and marks on the supplemental register (for lacking any secondary meaning).

This consensus came with a proviso, however, namely that complainant must prove its unregistered mark predated the registration of the accused domain name. (Predating is not required for registered marks; complainant has standing as long as its registered mark predates the filing of the complaint, but if it does not predate the registration of the domain name, it will have standing but no actionable claim). The current version of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Jurisprudential Overview 3.0 states that

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.

There have been, and continue to be, cases in which complainants show they have registered marks postdating domain name registration but alleging unregistered priority. As the Overview states, marks "comprised solely of descriptive terms ... [have] a greater onus ... to present evidence of acquired distinctiveness/secondary meaning." As a practical matter, what satisfies the requirement?

There are four possible factual patterns: 1) complainant makes a naked claim but lacks sufficient proof to establish an unregistered right [Barnes Crossing Auto LLC v. Jonathon Hewitt, SEO Sport, LLC., D2017-1782 (WIPO December 5, 2017) (<bcauto.com>, <bcchevrolet.com>, <bchyundai.com>, and three more)]; 2) complainant establishes that it does have an unregistered right [Marquette Golf Club v. Al Perkins, FA1706001738263 (Forum July 27, 2017) (<marquettegolfclub.com>)], 3) complainant alleges its mark predates the domain name but satisfies its standing requirement by having a registered mark, however lacks proof to support the the second and third requirements [Weeds, Inc. v. Registration Private, Domains By Proxy, LLC / Innovation HQ, Inc, D2017-1517 (WIPO November 23, 2017) (<weeds.com>)]; 4) complainant has both a registered right postdating registration of the domain name and proof of unregistered right predating the domain name [Biofert Manufacturing Inc. v. Muhammad Adnan / Biofert manufacturing, FA171000 1753132 (Forum November 27, 2017) (<biofert.com>)]. If complainant cannot satisfy the first limb of the Policy the complaint must be dismissed for lack of standing.

Unless complainants can prove their allegations of market presence predating registration of the domain name they will invariably fall short of satisfying their burden of proof. They may also fall short by waking up many years later to allege cybersquatting because the passage of time supports an inference the claim is manufactured for the occasion. Even though Panels generally reject laches as a defense, waiting likely supports respondent under 4(c)(i) of the Policy, particularly if it is conducting a bona fide business which can include investors in the business of buying and selling domain names.

Complainant in Weeds had standing based on its registered mark but it waited too long. Barnes Crossing Auto is not a waiting case. It had a two-fold burden for standing, to prove a common law right to "BC" either separate from or joined with well-known "Manufacturer Marks." The three-member Panel provided no formal answers but it offered some thoughtful guidance on what was missing and would have been required. First, there was no evidence that "bc" alone had (or could have) earned secondary meaning, and (second) there was no evidence Complainant had permission to claim infringement of Manufacturer Marks: "[t]he only thing that is certain from the record is that Complainant is not the owner of the Manufacturer Marks." Neither is there proof it had "'direct authorization' from Chevrolet to file its Complaint, yet the supporting evidence is merely an email (not a declaration) from a Chevrolet 'zone manager' (whose authority with respect to any trademarks is unknown) that 'Chevrolet has no objections to Barnes Crossing Chevrolet' (not the Complainant) 'filing the complaint as you outlined below.'"

Instead of ruling on the standing requirement, the Panel in Barnes Crossing Auto found the claim outside the scope of the Policy and dismissed the complaint. It explained that

Given the number of unresolved factual questions, especially the nature of the relationship between the parties and their intentions concerning the Disputed Domain Names, the Panel finds that this is primarily a contractual dispute between the parties that is not appropriate for resolution in this proceeding.

If one were to look for a mark composed of a "solely ... descriptive term[ ]" none would so fit the portrayal so well as "weeds." In Weeds, Inc. the three-member Panel dismissed the complaint for failure to prove a prima facie case that Respondent (domain investor) lacked rights or legitimate interests in the domain name. The facts are both interesting and confusing: Complainant alleges that its unregistered mark dates from 1966 (although this is undercut by its application that first use in commerce on the trademark application was 2000). (Note: even before the Panel filed its award, complainant commenced an action under the Anticybersquatting Consumer Protection Act (ACPA) so the denouement is yet to come).

The Panel noted that in its registration Complainant disclaimed "weeds" from its earlier (W. WEEDS INC., "No claim is made to the exclusive right to use 'weeds' and 'Inc.' apart from the mark as shown.") but its later application for WEEDS was filed as a 1b and not registered until 2007 (Respondent registered the domain name either in 2001 or 2004). As the Panel noted, disclaimers have consequences:

Complainant contends that it has been using the mark WEEDS at common law since September 28, 1966, the date of incorporation of Complainant Weeds, Inc. However, Complainant fails to submit persuasive evidence that the term "weeds" had acquired secondary meaning at the time of the registration of the disputed domain name. Having in mind that "weed" is a descriptive, dictionary word, such specific evidence is essential for a complainant invoking a common law mark.

That conclusion pretty much explains the Panel's decision. Absent sufficient evidence of secondary meaning the decision essentially echoes the Jurisprudential Overview:

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

While Panels have not been consistent in checking off each of these factors, they are consistent in insisting that complainant's burden is higher as the mark descends to the generic end of the classification scale. Weeds and BC are probably as far down as it is possible to go. Dictionary words, even when they have acquired secondary meaning, do not shed their primary meaning. Complainant in Fitness People B.V. v. Jes Hvid Mikkelsen, CAC 101587 (ADR.eu July 18, 2017) alleged that <fitnesspeople.com> infringed its common law right to that combination. The Panel disagreed:

[Where the alleged mark] consists of two generic words that could be seen by the public to have very wide meanings ... [the] onus on the Complainant to show a clear secondary meaning of the words, i.e., another meaning in addition to the primary meaning of the words which links them to the complainant and its goods and services [is higher]."

The Panel concluded that "there is no evidence to establish that important element." Rather, the "Complainant in the present case has not proved or even attempted to prove in any understandable or persuasive way that it has such [an unregistered] trademark in FITNESS PEOPLE."

The skill in creating a proper record (whether complainant or respondent) is in laying out the evidence in a persuasive manner. How this is done is illustrated in Marquette Golf Club and Biofert Manufacturing (Respondents did not appear in either case). Complainant in Marquette Golf Club made "intense efforts to advertise and promote its golf club." Complainant in Biofert supported its claim for common law rights by submitting evidence of "substantial sales and extensive advertising and promoting [through which it has] become very well-known [ ] as identifying fertilizers and supplements for agricultural use originating from, sponsored by, or associated with Complainant."

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. Visit Page
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