I noted yesterday that secondary meaning is earned not presumed. Panels determine first whether there is jurisdiction. If there is, they continue; if there is not, the proceeding is brought to an end. There may well be dispute over the domain name, but it belongs in a civil court of law applying different legal standards. Dismissal of the UDRP complaint at the earliest moment in the proceeding is justified on grounds of judicial efficiency. It makes no sense to do more analysis than is necessary. So, if there is no jurisdiction, there is no necessity to analyze facts for rights or legitimate interests or bad faith registration and use and proper for the Panel to decline to do so.

Dismissal for lack of jurisdiction is a standing issue. In Surfside Animal Hospital, APC v. Mission Animal & Bird Hospital, FA1006001330046 (Nat. Arb. Forum July 28, 2010) it is evident that the parties are locked in an overlapping or inclusive dispute which appears to include the domain name as one component, but both parties have withheld governing facts from the record. There is an unexplained relationship. However, none of this is of any consequences because the Complainant fails to demonstrate that SURFSIDE ANIMAL HOSPITAL had gained secondary meaning. The Panel noted

Complainant alleges it has used the SURFSIDE ANIMAL HOSPITAL mark in association with its veterinary services and all filings and business licenses associated with these services since May 18, 2009. Complainant also claims that it has invested substantially in marketing the SURFSIDE ANIMAL HOSPITAL mark.

Those claims are not in any way supported by evidence. There is no evidence whatsoever of reputation in, or public recognition of, the trademark, something consistently demanded in formative decisions under this Policy. The trademark is essentially descriptive. Even with extensive, well documented proof of use, Complainant might have struggled to show common law rights acquired over a period of barely more than one year.

Application “for a mark [as opposed to issuance of registration] is not per se sufficient to establish rights in a trademark for the purposes of the UDRP,” Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum September 20, 2004); Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001) and many later decisions. Although the Complainant in Surfside Animal Hospital alleges that its “first use in commerce” preceded by a year the registration of the disputed domain name the fact is its trademark registration occurred after the domain name. It is for this reason that the Panel could not accept its assertion of prior use without proof that its trademark had achieved recognition in the marketplace.

Since “it is impossible” (said the Panel) for it “to attribute common law rights in the trademark … [b]ased simply on the material before it” there was no necessity to proceed with the analysis. Because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary, citing Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002). Although the Panel in Creative Curb is making reference specifically to paragraph 4(a)(ii) of the Policy, this procedure applies equally to the threshold requirement.

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com