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Proving Trademark Right: Unregistered and Tradename

Paragraph 4(a)(i) of the Policy is silent on the rights the complainant seeks to vindicate. However, within the first few months of inception Panels concluded that the term “rights” in paragraph 4(a)(i) of the Policy was inclusive. 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); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). This construction is supported by the WIPO Final Report, at paragraph 150(ii) – “[t]he procedure should allow all relevant rights and interests of the parties to be considered.” It is also supported in the representation and warranty provisions of registration agreements and Paragraph 2 of the UDRP. Nothing in any of these provisions suggests that “[l]egal rights in a trade mark … require[s] that the trade mark must be registered,” Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000). However, while it is not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist the proof requirement for registered and unregistered trademarks is different. In contrast to registered trademarks, an unregistered mark is not presumed to be distinctive.

This brings us to Liverpool Lumber Co., Inc. and Joseph Ehle v. RESCUECOM, FA1105001389956 (Nat. Arb. Forum June 26, 2011). The Complainant claims “rights” in both the business name and the personal name of its President and CEO. The offending domain names are <liverpoollumber.com> and <joeehle.com>. The Respondent argues that the Complainants have no rights, but even if they did the proof establishes a noncommercial fair use of the domain names under paragraph 4(c)(iii) of the Policy. The question to be answered is whether the “alleged mark has become a distinctive identifier associated with the complainant or its goods and services.”

Whereas the owner of a registered mark succeeds in proving its trademark right 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), and also “creates a rebuttable presumption that the mark is inherently distinctive,” Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002). An owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark is recognized by the consuming public as an indicator of its goods or services prior to the registration of the domain name. The complainant’s burden under the UDRP may be less than demanded under international trademark regimes, but only in degree. The more distinctive the mark the less the proof and vice versa. Melanie Greenstein v. EMT Agency c/o Shelly Justice, FA1006001329849 (Nat. Arb. Forum July 28, 2010), citing CNRV, Inc. v. Vertical Axis Inc., FA 1300901 (Nat. Arb. Forum May 3, 2010) (The “burden [of proving a common law trademark] is heightened where a claimed mark is entirely descriptive or otherwise inherently weak.”).

Demonstrating a “distinctive identifier” requires proof that it is used as a trademark not simply a company selling services. “To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark,” British Heart Foundation .v. Harold A Meyer III, AF0957 (eResolution November 13, 2001). But, in Liverpool Lumber the Panel “after performing its own search on internet … found … no reference … to LIVERPOOL LUMBER CO., INC as a mark for certain services but to LIVERPOOL LUMBER CO., INC as a company name with contact data delivering such services.” Although panelists approach the issue of proof of unregistered trademark rights “in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning,” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009), assertions with no proof do not satisfy the evidentiary standard.

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