However identical or confusingly similar a disputed domain name may be to a name used by the complainant if the name is not a trademark the dispute does not belong in a UDRP proceeding. Although it is not necessary for an alleged trademark to be registered, the complainant’s burden of proof rises in proportion to its classification. Generally, descriptive and suggestive words require more proof; arbitrary and fanciful less. To successfully assert common law or unregistered trademark rights, a complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. “Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning,” citing Canadian and U.S. case law, Jason Hachkowski v. Lucas Barnes, D2009-1800 (WIPO February 5, 2010) alleging common law trademark in AIDS-DRUGS-ONLINE.COM.
The proof problem in establishing unregistered rights is also illustrated in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010). The Complainant alleged that she has an unregistered trademark in <papersnowflakes.com>; allegedly infringed by the Respondent’s registration of <papersnowflake.com>. As stated by the U.S. Supreme Court and echoed in many ICANN cases, a trademark acquires secondary meaning when, “in the minds of the public, [its] primary significance is to identify the source of the product rather than the product itself,” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851, n.11 (1982). The Patricia Kelley Panel noted that ordinarily one “might expect details of users, markets, testimonials, annual advertising figures, annual business turnover details, detailed website statistics and any awards or public reports or commentary in relation to the business or website.” Explanation long on unsupported statements and short on facts has never been a winning formula.
Moreover, “[m]ere evidence of use in relation to a website and a bare submission that there have been substantial website page views during that period is insufficient, even in relation to a not-for-profit business, in order to enable the Panel to infer the requisite degree of secondary meaning to support a claim of common law trade mark rights.” It is not even a matter of providing advertising expenses. For example, the Complainant in The College Network, Inc. v. IV-MEDIA, LLC, FA0811001234688 (Nat. Arb. Forum January 23, 2009) provided evidence of the dollar amount spent in advertising its products under THE COLLEGE NETWORK mark. However, it failed to offer “any evidence that the public at large has come to associate the mark with Complainant’s goods and services.” According to the 3-Member Panel “the focus of a secondary meaning inquiry should be on the public’s awareness of the mark, not just on a complainant’s sales or advertising data.” So, too in Patricia Kelley. While the Complainant alleged that “since 2000 … there has been 18,000,000 views of the website… [she provided no] other evidence of renown in any particular marketplace.”