In a case not otherwise remarkable, the Respondent in Disney Enterprises, Inc. v. Cyber Domain Services Pvt.Ltd., FA1012001365612 (Nat. Arb. Forum January 31, 2011) asserted in defense that he had a common law trademark for the domain name <waltdisneyswan.com> despite trafficking on a famous trademark. He based his right on a recent case from the district court from the Eastern District of Virginia, Weitzman v. Lead Networks Domains Pvt., Ltd., l:09-cv-01141 (October 26, 2010) in which the court (adopting the report and recommendation of the magistrate judge) entered an order granting judgment to return the domain names to the plaintiff. The magistrate judge found that the plaintiff, a domainer whose domains names were fraudulently transferred, was entitled to a remedy under the Anticybersquatting Consumer Protection Act. The Plaintiff argued that he had a common law trademark “because his advertising services are distinctive and pertain specifically to users clicking on the disputed Domain Names.” The “real question [noted the magistrate judge] now turns” on whether

Plaintiff has sufficiently shown that he owns the rights to these Domain Names [and, if he has] whether domain monetizing and common law ownership of a domain name fall under the purview and protection of the ACPA.

The magistrate judge held that the plaintiff – domainer had trademark rights in the domain names and was entitled to recover them from the defendant.

There is precedent under UDRP for complainants to recover domain names fraudulently transferred where their trademarks were incorporated in the domain names. However, it is an open question whether a complainant (like the plaintiff in Weitzman) who rests its trademark on the stolen domain names would have an actionable claim under the UDRP; that is, whether it would satisfy the first element of the Policy. Put another way, would Weitzman if he had commenced an administrative proceeding have been successful in recovering the stolen domain names. A remedy for fraudulent transfer or hijacking is clearly outside Policy where the complainant is unable to satisfy the threshold test, Lawrence Gurreri v. To Thai Ninh, FA1006001328554 (Nat. Arb. Forum July 12, 2010)

A reading of the decision in Edward G. Linskey Jr. v. Brian Valentine, D2006-0706 (WIPO September 18, 2006) indicates that a Weitman-like complainant could succeed. The Panel did held that the “Complainant’s evidence in this proceeding … is not sufficient to demonstrate any use of <finances.com> as the source of his claimed consulting services or any public recognition of his mark or website.” The evidence showed only the Complainant’s use of <finances.com> as a web and email address. “There is no evidence of any person visiting that website or sending or receiving emails from that email address. That alone does not establish trademark rights in <finances.com> sufficient to invoke the Policy.” By implication, if the Complainant had demonstrated that the general public recognized “<finances.com> as the source of his claimed consulting services or any public recognition of his mark or website” then the Panel would have moved on to the second and third elements of the Policy.

The decision in Lawrence Gurreri, however, by dicta similarly indicates that the problem for the Weitzman-like complainant is an evidentiary one. “Although Complainant provides some evidence of an association between his personal name and the INTERNATIONAL CIRCUIT mark, he has not established sufficient secondary meaning in the mark [<internationalcircuit.com>] to create common law rights in the mark.”