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Proving a Trademark Right for Cybersquatting

Proving a trademark right is essential to maintain a claim of cybersquatting. For registered trademarks, proof of standing is satisfied by submitting a copy of the registration certificate –which “is prima facie evidence of [the trademark’s] validity.” NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009). There is no piece of paper for unregistered trademarks but it was quickly recognized that they too are protected “in the context of abusive registration of domain names” but the proof requirements are more demanding. There is no presumption of distinctiveness. Early UDRP cases include The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000) and SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). The consensus holds that complainants must earn standing by proving that their alleged marks are distinctive in a trademark sense of being recognized by consumers; that they have acquired a secondary meaning.

Complainants cannot prove distinctiveness by asserting that their marks are well-known. Assertion is not proof. “To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for complainant to prove that the mark is in fact a trademark.” British Heart Foundation v. Harold A Meyer III, AF0957 (eResolution November 13, 2001) (“Thus, complainant must produce evidence [that] … prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent.”)

Both U.S. courts and ICANN Panels insist that proof of secondary meaning “includes evidence as to (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures.” San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (March 3, 2010). It would be thought that complainants represented by counsel are particularly attuned to the evidentiary requirements for establishing the first element of the Policy, but there continue to be cases that confound this belief. The latest entry is CAM London Limited and Comgest Asset Management International Limited v. Cam LondonLtd, D2013-2190 (WIPO February 4, 2014) (Dismissing a complainant is “extremely regrettable” particularly because of the “circumstances described in the Complaint and the serious allegations made therein.”)

Complainants in CAMLondon (who are unrelated parties having a common grievance) alleged that “the Respondent is passing off its services as being those of the First Complainant or being in some way associated therewith …. [And, further] that due to the content of the website associated with the disputed domain name the Respondent is passing off its services as those of the Second Complainant.” There is no impediment to unrelated parties with a common grievance consolidating their claims in a single proceeding as long as “it would be equitable and procedurally efficient to permit the consolidation.” See WIPO Overview 2.0, paragraph 4.16. However, these parties have to establish their “common law unregistered trademark rights in their respective names.”

Instead of doing this the CAMLondon complainants produced “virtually no evidence … to support … [their] assertions.” The first complainant asserted that it has “established significant goodwill and reputation in the UK and elsewhere in the mark CAM LONDON as an unregistered trade mark in relation to the advertising, production and publication of music.” However, the “only evidence provided in support of this is the First Complainant’s certificate of incorporation dating from 1984.”

The Panel held that this “is of no assistance” because it “tells [the Panel] nothing regarding how the claimed unregistered trademark has been established.” The Second Complainant merely asserted that COMGEST is its unregistered trademark and proffered no “supporting evidence whatsoever … and, in any event, the Panel does not understand the Complainants to be claiming that the disputed domain name [] is identical or confusingly similar to the COMGEST mark.”

WIPO Overview, paragraph 1.7 notes that a “conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.” There are different levels of evidentiary demand:

Some panels have … noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. [Other] panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

Panels have discretionary authority to request “further statements or documents from either of the parties.” Rule 12 of the Rules of the Policy. Whether to exercise this discretion is an interesting question. The Panel in CamLondon considered the question but decided against it: “The Panel is conscious of the fact that it could have called for detailed evidence to support the Complainants’ assertion of rights in unregistered trademarks.” But, “to give the Complainant ‘a second bite at the apple’ would not be in line with the spirit of expediency and efficiency suggested in the Policy.”

The ostensible reason for not exercising discretion is that “complainants should ‘get it right’ the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone.” An unspoken reason for not exercising Rule 12 discretion is that the Complainants were represented by counsel. In a number of cases, pro se arbitants are treated more gently.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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