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Non-Conflicting Use of and Equal Rights in Generic Terms

The general rule is that parties who utilize generic terms as trademarks or service marks (dictionary words, common phrases) cannot use the UDRP to bar others from using them absent proof that the respondent has targeted the complainant or its trademark for commercial gain. This extends to exotic and foreign words of uncertain meaning to an English audience but understood by an ethnic one. A case in point is Vartkes V. Marjik d/b/a Zankou Chicken, Inc. v. ArmenianMatch.com, FA0911001292651 (Nat. Arb. Forum December 23, 2009). The disputed domain name, <zankou.com> is confusingly similar to the Complainant’s U.S. registered trademark ZANKOU CHICKEN – “removal of the term ‘chicken,’ does not distinguish the disputed domain name from the mark, because the distinctive portion ‘zankou’ remains”. However, the Respondent operates a business in a different Class of service. A search for “zankou” solo brings up in declining order the Complainant’s restaurant, a fictional work having a character by that name and the Respondent’s Armenian dating service.

The parties share an ethnic background; both are located in California. “Zankou” appears to be an Armenian word (of uncertain meaning; could not find on an Internet search). The disputed domain name was registered (1998) after the trademark’s alleged first use in commerce (1984), but before the trademark registration (2003). There is no question that the Respondent’s website is the portal to its business. “Complainant alleges that the <zankou.com> domain name redirects to a website that sells social networking services,” which is a “purpose wholly unrelated to Complainant’s use of its ZANKOU chicken mark.”

First use in commerce, however, is not proved by assertion alone. “Although the Complainant asserts that it has used the ZANKOU CHICKEN mark since 1984, without evidence in the record supporting these assertions, the Panel cannot find Complainant had rights prior to those established through the registration of its mark. ” Since evidence of use of the trademark prior to its registration on the Principal Register is entirely under the Complainant’s control, its failure to submit proof of 14 years of commercial presence in the Respondent’s marketplace is insufficient to overcome the facts of record, namely timing of the registration of the domain name and the use of the website.

Although not discussed in the decision, the Respondent’s continued use of a domain name (over 10 years) incorporating the trademark “before any notice to you of the dispute” supports the affirmative defense under paragraph 4(c)(i) of the Policy. The UDRP recognizes that two parties can equally be entitled to the use of a term, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). Different classes under these circumstances cannot (as required under paragraph 4(b)(iv) of the Policy) create any “likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

Gerald M. Levine, <udrpcommentaries.com>

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