Establishing a Mark in which the Complainant has Rights

by Ivan Lipshitz, Adv., JMB Davis Ben-David

In my first part article on “The Interface between Trademarks and Domain Names: The Value of Your Domain Name and How to Protect it from Abuse” which you can read here, I explained that to succeed in a complaint under the UDRP, the complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The first element of the Policy requires the complainant to show “Identical or Confusing Similarity” of the disputed domain name with its trademark rights. There are two parts to this inquiry: (i) the complainant must demonstrate that it has rights in a trademark at the date the complaint was filed, and (ii) the disputed domain name must be shown to be identical or confusingly similar to the trademark concerned.

Establishing a Trademark or Service Mark in which the Complainant has Rights

In proving the first part of the first element above, the complainant must establish that there is a trademark or service mark in which it has rights. Prior panel decisions have accepted that where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of complainant having valid and prior trademark rights for purposes of standing to file a UDRP case (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.2.1). This is because a registered trademark certificate provides a clear indication and conclusive proof that the rights in the mark shown on the trademark certificate belong to its respective owner (Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657 ).

Not Necessarily a Registered Mark

However, the wording of the Policy merely refers to a “trademark or service mark” in which the complainant has rights. It does not expressly limit the application of the Policy to a registered trademark or service mark. Unregistered trademark rights or common law trademark rights would therefore suffice to satisfy this requirement. Prior Panels have repeatedly concluded that common law trademark and service mark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name that it has acquired “distinctiveness”, also referred to as “secondary meaning” to establish an association of the domain name with the complainant itself. They have determined that to establish unregistered or common law trademark rights for purposes of the UDRP proceeding, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.  Relevant evidence demonstrating such acquired distinctiveness or secondary meaning include 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. 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 UDRP case, would not normally suffice to show secondary meaning. 

In a recent  FORUM panel decision, King & Spalding LLP v. John Valmont / K AND S Claim FA221200202484 , complainant, an international law firm, having already asserted that it had rights in the “KING & SPALDING” mark through numerous trademark registrations, also submitted that it had common law trademark rights in the <kslaw.com> domain name so as to give rise to a common law trademark.  In this case, the complainant pointed to its exclusive and decades-long use of the domain name, as well as its marketing and promotion of the <kslaw.com> domain name in connection with the legal services it provides. The complainant also noted that the domain name is used as an email suffix for all its employees and that the use of the domain name dated back to 1995. The Panel determined that complainant had adequately demonstrated secondary meaning in the <kslaw.com> domain name and had established that it had common law trademark rights thereto pursuant to the Policy.

Falling Short

In contradistinction to the above, in The Posture Lab Pte Ltd. v. Privacy Administrator, Anonymize, Inc. WIPO Case No. D2022-4181, the complainant was ruled by a panel of the WIPO Arbitration and Mediation Center ( “the WIPO Center”) not to possess UDRP-relevant rights in a trademark. The complainant had put forward various pending trademark applications for the mark “BODYNETIC” but these by themselves were insufficient to establish rights in a trademark for the purposes of the first element under the Policy. The complainant might have sought to establish unregistered trademark rights in such pending mark, given its submission that it adopted it in mid-2021, but had chosen not to do so. As the complainant had been unable to establish the threshold requirement that it had rights in a trademark within the meaning of the Policy, it followed that it had not carried its burden in terms of paragraph 4(a)(i) of the Policy, and the complaint failed.  And, in another recent WIPO case, the Panel was not persuaded that the current record of trademark or service mark rights produced as evidence were sufficient to establish standing for a UDRP complaint. It determined that such unexamined, state-registered marks of a descriptive nature were not entitled to deference with regard to standing for purposes of the first element of the complaint, but required evidence of acquired distinctiveness which was lacking in this case  See: All Day $49 Montana Registered Agent, LLC v. Nathan Resnick, 1 DollarMontana, Street Legal Registration and Wasatch Real Estate LLC  WIPO Case No. D2022-4302.

In regard to unregistered trademarks, the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) was held to have supported the complainant’s assertion that its mark had achieved significance as a source identifier. See: Zak Zilesnick v. Egor Sherbin  WIPO Case No. D2022-4005. It should also be noted that it is not necessary for the complainant itself to own the relevant trademarks. It is a well-established principal in UDRP proceedings that a trade mark owner’s affiliate, such as a subsidiary of a parent, or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trade mark for purposes of UDRP standing to file a complaint  See Active Sports, Inc. v. 建华 晏 WIPO Case No. D2022-4270.

Identical or Confusing Similarity

Once having established that it has rights in the trademark or service mark, the standing or threshold test involves a visual and aural comparison of the disputed domain name to the proven trademark. Such comparison is generally considered to be relatively straightforward. In my next article, I will look at some decisions handed down by the UDRP, demonstrating that while such comparison should be straightforward, each case must be considered carefully before bringing a complaint. 

If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.

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