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Complainant Cannot Rest its Case on Opprobrium

As for trademarks based on generic terms, however powerful they may be in market A they are unrecognized in market B. If market A and B are widely separated, as are Spain and the United States, and the dispute centers on a two syllable term that is attractive to many merchants peddling goods and services in different Classes, the complainant cannot rest its case on opprobrium. In Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) the Complainant disputed the Respondent’s right to retain <clara.com>. The Complainant has a Spanish trademark for CLARA which it claims is “well-known”, but offered no proof for reputation beyond the borders of Spain. The Respondent pointed out that “the same mark is registered in Spain and in the United States by many others; the same mark is used in France for a similar but unrelated magazine; and … the Complainant has made no claim to any reputation beyond Spain.” Where the complainant alleges that it has a reputation it has the burden of proving it; it is not for the respondent to rebut the allegation.

Essentially, the Complainant rested its case on the Respondent “usurping a domain name which obviously corresponds to a complainant as owner of a priority-registered trademark” and that this “reprehensible behaviour” prevented “the Complainant from carrying on its normal business activity through the domain name.” Whether a respondent is usurping the disputed domain name and acting reprehensibly is not determined on the basis of conclusory statements. It is no more necessary for a respondent to have trademark rights to establish a “right or legitimate interest” in the disputed domain name than it is for a complainant to prove a legal right to the domain name. It would turn “the Policy on its head,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009).

As to registration, the

Complainant must be able to satisfy the Panel that it is more likely than not that the Respondent was aware of the Complainant or of its CLARA trademark at time of the registration of the disputed domain name by acquisition in 2005 and intended to benefit unfairly from that trademark and/or to damage the business of the Complainant.

However, the female name “Clara” and the Spanish word “clara” (meaning “egg white” or “albumen”) are not granted a higher classification for the asking without proving secondary meaning in the respondent’s market; that it has travelled intact from Spain to the United States. “Complainant’s submission that the term ‘Clara’ has “full distinctive capacity and should be considered a whim or at most a fantasy trademark with respect to its distinctive products” is rather a fantasy in eyes of the beholder. “The totality of … circumstances [being taken into account] affords no reason to suppose that the Respondent had the trademark meaning or the Complainant’s magazine in mind on registration of the disputed domain name.” A generic or descriptive term does not transform to the suggestive or arbitrary because in its niche it is recognized by the consuming public.

Gerald M. Levine <udrpcommentaries.com>.

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