Paragraph 4(a)(i) of the Policy is silent on whether the right the complainant is seeking to vindicate must be registered, but panelists quickly concluded that unregistered trademarks were equally protected. It was not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist. The Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000).
Under U.S. trademark law for registration on the Principal Register the registrant must prove that it has made “substantially exclusive and continuous use [of a designation] as a mark … in commerce for the five years before the claim of distinctiveness is made,” Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). A symbol or badge is entitled to legal protection if it acquires a secondary meaning that distinguishes the goods/services it represents from the goods/services of another, which it does when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the product/service itself, but the identification of the product/service with a single source.
Despite initial hesitations the equal protection principle applies to unregistered trademarks whether accrued under common law or civil law jurisdictions. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions published in 2005 notes that “[u]nregistered rights can arise even when the complainant is based in a civil law jurisdiction.” The issue is discussed in S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO November 21, 2009) and most recently in MCP Holding Ltd. v. Linh Wang, D2010-1999 (WIPO February 4, 2011) which cited the earlier case. S.N.C. Jesta Fontainebleau is a French company. The “domain name is very similar to the name of the hotel complex operated by the Complainant, differing as it does by a letter or two at the end of the name, a distinction which makes no difference to either the pronunciation of the name or its overall appearance.” Since S.N.C. Jesta Fontainebleau has no registered trademark rights “the question is … whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP,” (emphasis added).
The evidentiary requirement for the “equivalent” to unregistered common law trademark rights is not significantly different, although the reasoning tacks to a passing off analysis. “Under highly specific circumstances, unregistered trademarks based in civil law jurisdictions may yet be protected under the Policy if narrowly defined requirements are fulfilled. In order to qualify for such protection, Complainant would have to show successfully that its name for example has become a distinctive identifier associated with its business or services.” The S.N.C. Jesta Fontainebleau Panel explains that
for the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
Under whatever analysis, the complainant has a heavy burden to demonstrate that at the time of the registration of the domain name it had “a reputation and goodwill in respect of the name of sign in question” and that the respondent’s use of it is likely to cause “deception in the marketplace.”