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Achieving Secondary Meaning for UDRP Standing

An unregistered trademark is no less entitled to protection, 15 U.S.C. §1125 (Section 43 of the Lanham Act) if it has secondary meaning, but distinctiveness is not presumed. A claim for common law protection must be earned. It has been noted that “Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark ‘rights’ … in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning,” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). “Relaxed” nonetheless, for standing secondary meaning must be established. Assertion of recognition of not evidence.

The penalty for insufficiency is illustrated in Mega Shoes, Inc. v. Gregg Ostrick / GNO, Inc., FA1012001362894 (Nat. Arb. Forum February 1, 2011) (Respondent appeared). It is true that the more distinctive the trademark the less proof and vice versa. “Mega” is not distinctive.  Mega Shoes can be contrasted with The Ogilvy Group, Inc. d/b/a The Lacek Group v. Tony Y. Jackson, D2010-2015 (WIPO January 31, 2011) (<lacekgroup.com>, Respondent defaulted) in which the Panel found

The Complainant has provided services and conducted business under its mark since its founding. Through the Complainant’s many years of consistent and continuous advertising, marketing and extensive use, the Complainant’s mark has gained a secondary meaning and has come to be associated with the Complainant’s services.

While MEGA SHOES is a registered mark presently it is offset by the fact that it acquired the right six years after the registration of the domain name. The Panel continues

In mitigation, [Mega Shoes] says that proof of any secondary meaning is unnecessary in this particular case because it owns a trademark registration, which is inherently distinctive. That argument might hold up if the said trademark registration pre-dated the registration of the disputed domain name. But it does not.

It is precisely because the registration post-dated the domain name that assertion must be supported with evidence. The Complainant’s Declaration failed to provide it:

Although the Declaration by Mr. Garcia, Complainant’s Operations Manager, states that Complainant has used the name MEGA SHOES since “at least as early as 1994,” Complainant has provided very little proof to support this assertion.

Finally, there is the mark itself. UDRP does not authorize forfeiture of domain names consisting of common terms, unless the proof demonstrates an intentional appropriation of the complainant’s marketplace identity. The first to register a common term is entitled to it. “Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis,” Zero International Holding v. Beyonet Services., D2000-0161 (WIPO May 12, 2000) (<zero.com>). Similarly with “target” as in <target.org> when used consistent with the cultural understandings of the word and not targeting the trademark owned by Target Brands, Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004).

Trade names such as the “Lacek Group” that have taken on the characteristics of trademarks and are themselves badges recognized by the relevant public pass the threshold test for standing under the UDRP. The fact that a respondent is the first to register the trademark as a domain name confers no rights, but is evidence of abusive registration whether it not it is active.

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