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Proving a Common Law (Unregistered) Trademark

Relief under the UDRP is not closed to unregistered trademark holders – they too are covered – but the burden to establish that right is significantly greater than for those with certificates. There is also a wide difference within the unregistered trademark ranks as to the evidence necessary to demonstrate the existence of the right. So, for example, “[t]he more descriptive the term the more extensive must be the use to show that the mark has acquired secondary meaning to become distinctive of a particular company,” Jason Hachkowski v Lucas Barnes, D2009-1800 (WIPO February 5, 2010) (<aidsdrugsonline.com>. In contrast to registered trademarks, distinctiveness is not presumed. But, if the evidence establishes secondary meaning, the complainant has standing and is entitled to relief.

The Respondent in Volunteering Travel Solutions Pvt Ltd. v. Puran Tours, D2011-0865 (WIPO July 4,2011) (< volunteeringindia.org>) argues that common law rights are a matter “internal … within Indian jurisdiction and the Complainant cannot claim protection in international jurisdiction unless the trademark has been registered under the Madrid System for the International Registration of Marks.” The view that local law can trump UDRP law has been solidly rejected. This is clear in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Paragraph 1.7 states the consensus: “the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction.”

What defeats a complainant is not that it is non-suited for lacking registration but that it is unable to marshal the necessary evidence to prove its case. Nevertheless, some ingredients in Volunteering Travel are not above suspicion. Complainant’s domain name which uses the “.com” extension but is otherwise identical to the disputed domain name was registered earlier than the Respondent’s, which means that the Respondent had knowledge of a prior registered domain name. The Complainant’s point is that “[a]s the disputed domain name was registered subsequent to the Complainant’s adoption of its mark and is identical to its domain name except for the gTLD ‘.org’, it is likely to cause confusion for customers, especially as the Respondent uses the disputed domain name for identical services as that of the Complainant.” However, the implication that therefore the Respondent had knowledge of the trademark is as equally invalid as Respondent’s about local law. Domain names are not place-holders for trademarks.

The proof in Volunteering Travel consists of documents that relate to another business entity. “[T]he Complainant has filed copies of Income tax returns for Experienz Travels, for the financial years 2009-2010 and 2010-2011, newspaper write-ups that mention Experienz Travels and selected testimonials from its customers over a period of four years 2008 to 2011, where some testimonials refer to the mark VOLUNTEERING INDIA. The Complainant also states that it extensively advertises online on websites such as ‘www.goabroad.com’, ‘www.volunteerabroad.com’ and ‘www.volunteerabroadworld.com’, and cites its listing in the World Youth Student and Educational Travel Confederation and Transitions Abroad to demonstrate its rights in the mark.” However,

[t]he Income tax returns and newspaper write-up about volunteer tourism filed as documents by the Complainant refer only to the Experienz Travels and makes no mention of the trademark or of the Complainant. In its submissions, the Complainant has stated that Experienz Travels is the predecessor in interest to the Complainant, yet continues to file income tax returns for the said entity. The testimonials filed by the Complainant appear to be feed back forms filled in by volunteers and does not sufficiently establish third party recognition of the mark.

The deficiency of evidence is that “[t]he Complainant has not furnished a statement of the turnover under the mark or a statement showing the amounts spent on advertisement and promotion of its mark.” Therefore, the “Panel finds that the documents filed by the Complainant in these proceedings are insufficient for the Panel to determine whether the mark has acquired secondary meaning.”

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