UDRP

Common law trademarks

I’ve been dreading writing about this, but I ought to cover it because it’s important and interesting. I recently represented a client as a complainant in a UDRP that was not successful, unfortunately. The reason the UDRP was unsuccessful, according to the Panel, was because we were unable to show rights in a mark at issue, the first prong of the UDRP. The problem was the client did not have a registered mark.

Although it is possible to file a UDRP on the basis of a common law mark, it can be difficult to prove. A business may not even have much in the way of records to support this sort of argument, because this just isn’t the sort of thing they’d be thinking of having to prove at a later date, so they might not even have access to the data. Anyway, here’s the Panel:

Complainant has, as grounds for the complaint, stated that it has used the mark THE GOURMET DEPOT since 1996 in connection with its services. To establish common law rights in a mark requires that Complainant shows that its mark has acquired secondary meaning. In other words, Complainant must, by building a prima facie case, establish that the public associates the asserted mark with its goods or services.

 

Complainant has as evidence of established common law rights submitted invoices for advertising material from 1999, from 2004, from 2007 and from 2010. Evidence of Internet traffic for Complainant’s current website is submitted, showing 51,015 visits between March 5, 2011 and April 4, 2011. Of these, 6 emanated from Luxembourg. Evidence of costs for keyword purchasing for the month of March, 2010 and a sale value report from the same period has been submitted. Moreover, evidence of printed advertising material from the spring 2002 and other advertising material from an unspecified time period has been submitted together with a statement of sales from 2009, showing Internet sales to make up 78.8 percent of the total sales for that year, a copy of the 2009 income tax form for Complainant and an invoice from March 2002, showing reference to Claimant’s previous proprietorship of the disputed domain name.

 

Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001).

The Respondent defended on the basis of it being in Luxembourg and unaware of the Complainant. 

Although the Panel is satisfied that Complainant indeed is using the mark and has been using it for a number of years, the evidence is not of a prima facie character, showing secondary meaning. The evidence relating to advertising material appears to be, as stated by Respondent, representing circa 5 percent of Complainant’s revenues. The evidence relating to purchasing search engine key words does not give any indications on the public’s awareness of the mark as a source indicator. Moreover, the tables showing Internet traffic seem to point towards if anything at all, a mere local significance.

The Panel thus finds that the Complainant has failed to establish common law rights in the THE GOURMET DEPOT mark, as Complainant has not provided sufficient relevant evidence of secondary meaning or use in connection with the provision of goods or services. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).

Some of the language cited by the Panel is ridiculous, to me. Those other cases involved a lack of “any” evidence; whatever their opinion of what my client was able to provide in this case, it certainly wasn’t just a “self-serving assertion.” In any case, the major argument of the complaint was that although a Respondent does not have a duty to investigate the domain names it is registering with respect to all possible trademarks that might be out there in the world, they should have a duty (I argued that they in fact do have such a duty, based on the registration agreement) to look at, for example, the first friggin’ page of Google. The Respondent’s defense — “there was a bunch of businesses using “gourmet” and “depot” in their name, how was I supposed to know?” — rings hollow to me.

C’est la vie.

The Panel then went on to say it didn’t reach the other prongs of the argument, but that it thought it would be impossible to show bad faith registration and use because there was no evidence of targeting. To that I would say, that wasn’t the Complainant’s argument. Rather it was that the Respondent had registered the domain name with a reckless disregard for the rights of others. Too bad they didn’t address that argument.

In any case, this decision is instructive on two very important points.

• Register your trade and service marks. Do it. It’s not expensive. Just do it. Proving up a common law trademark under the UDRP is difficult, and having to prove one in court would be just as difficult. This is a needless risk to take, not to mention a waste of time down the road if you find yourself needing to make these sorts of arguments. If you want help registering, let me know.
• This whole case started because an employee took a domain name when he left the company. Please protect yourself and your business by putting your domain names — your vital Internet real estate — in your business name only. I can’t stress enough how important this is. (I don’t think the Panel even addressed this point, but it’s available in the public WHOIS records for the domain name.)

A tough loss, and of course I’m disappointed; I hate to lose. At least I kept opposing counsel on his toes, and made him work for every penny. I certainly respect him after this battle, and I hope that the feeling is mutual.

Tagged common law trademarks, denied, evidence, NAF, secondary meaning