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What It Takes to Prove Common Law Rights

The Uniform Domain Name Dispute Resolution Policy now has  seventeen years of history. A high percentage of disputes are indefensible and generally undefended. As the history lengthens early registrants of dictionary words-, common phrases, and arbitrary letter-domain names have been increasing challenged in two circumstances, namely by businesses who claim to have used the unregistered terms before respondents registered them and later by emerging businesses with no history prior to the registrations of the domain names. I have discussed the latter in earlier essays. Some examples from recently decided cases of the former include “gabs” (the only recent dictionary word case); phrases include “Gotham construction,” “Minute Clinic,” “Stage Coach,” and “Desert Trip” and for random letters (acronyms to complainants) “atc” and other  three-character domains. Some of these second level domains are discussed further below. Claiming unregistered rights is a recurring motif, important because it affects whether complainants have standing, discussed in an earlier essay, UDRP Standing: Proving Unregistered Trademark Rights).

Typical complainant allegations of common law rights confess they never registered their marks but their priority in the marketplace ought nevertheless to support abusive registration of the corresponding domain names. However, as a general rule complainants alleging common law rights have to work harder to overcome the distance of time.  To prevail in a UDRP proceeding parties have to be alert to their evidentiary demands. When a complainant alleges priority in using a mark currently being exploited by a respondent arguably violating its representations and warranties it has to prove “reputation in and public recognition of the trademark” prior to the registration of the domain name (the now versus then burden). The quotation comes from the Gotham construction case, Joel I. Picket v. Niyazi Palay / Gotham Constructions, FA1702001717501 (Forum April 10, 2017). Put another way—Stacy Hinojosa v. Tulip Trading Company, FA1704001725398 (Forum May 24, 2017) (<>):

[A] date of first use alone is not enough to establish common law rights in a mark. In order to have common law rights, a complainant must establish secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.”

The underlying rationale is simple: if prior to the registration of the domain name the unregistered mark had no reputation it follows respondent could not have registered the domain name in bad faith. It’s worse for a complainant who had no reputation in the past, and has none now! But these failures are frequently traceable to complainants not understanding what has to be proved, and argued by pro se disputants.

The term “rights” in paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy—“[the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”–encompasses unregistered as well as registered rights but whereas a complainant with a registered mark by definition has a “right” complainant with an unregistered right has to prove something more than simple priority. It may indeed have had a market presence, but who knew about it?  This is the kind of knowledge only a complainant would have, and if it doesn’t have (or doesn’t offer) documented proof it will be read negatively that silence means there is no proof to offer; and if there is no proof, it loses.

It has been said that Panels generally “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). However, “slightly more relaxed” has to be understood in a relative sense. The weaker the mark the greater the burden of proof.

A sufficient body of precedent has built up to form the consensus noted in the WIPO Overview at Paragraph 1.7.: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” This black letter statement of the law does not expressly include the “reputation” but it is necessarily implied.

The “relaxed manner” finds particular expression in claims by personalities (in sports, motion pictures, publishing, entertainment, etc.) who are widely known or have achieved fame in their fields. An example is Halle”Berry and Bellah Brands Incorporated v. Alberta Hot Rods, D2016-0256 (WIPO March 15, 2016) (). The Panel “consider[ed] it reasonable to infer that the Respondent was aware of the Complainants’ rights in the common law trademark HALLE BERRY when registering the disputed domain name in 1997, given Ms. Berry’s fame and the substantial goodwill which she had generated in her personal name by that date, commencing in the mid-1980s.” The Panel draws a similar conclusion in Jeffree Star and Jeffree Star Cosmetics LLC v. Lisa Katz / Domain Protection LLC, FA1607001682277 (Forum August 10, 2016) (> Transferred); and more recently in Carl Cartee v. Stanley Bell, FA1703001724616 (Forum May 8. 2017) (<>), but not in Stacy Hinojosa for the reasons already mentioned.

While marks claimed by personalities are on the strong end of the scale, common phrases and dictionary words are on the weak end. Complacency is fatal in claims for weak marks. GOTHAM CONSTRUCTION is hardly in the stratosphere of protected marks! In that case, the Panel pointed out that Complainant “proceeds on the belief that in law the essential element in the establishment of  common law rights is proof of first adoption. It is not. Rather, common law rights are premised upon proof of reputation in and public recognition of the trademark.” It’s very possible Complainant was the first to use the term but that does not prove Respondent registered it for its non-trademark value.

There are of course always dictionary words that ascend to the stratosphere, APPLE, VIRGIN, PRUDENTIAL, ENTERPRISE, and EASY (not an exhaustive list) but they have proved themselves in the market. That is not true of CURVAGE. In Jason Johnson v. Ramesh Mahadevan, FA1704001727694 (Forum May 17, 2017) Complainant asserted it had common law rights in its CURVAGE mark—“[and claimed it had] consistently used the mark since 2007”—but there is contradictory evidence in the record. Complainant could not have consistently used the mark because the prior owner of the business denied it:

Its (sic) pretty obvious to everyone that Ive (sic) basically ignored this site for the last year. Truth be told, I lost my interest long before then.  I feel Curvage will continue to languish from my lack of attention paid to it…. Ive (sic) got basically two choices: 1.  Treat Curvage like a business. This would mean ads and doing things to attract more traffic. 2. Have someone else take it over. Im (sic) leaning strongly towards the latter. Is there anyone interested?

Secondary meaning cannot be established without proving 1) continuous and uninterrupted use in commerce; and 2) reputation predating the registration of the domain name. In DealerX v. Gurri Kahlon,, D2017-0488 (WIPO May 4, 2017) () Complainant “alleges it has used the ROIQ mark in interstate commerce since 2007, but provides no factual support for this claim. Instead, it contradicts the claim by submitting the only evidence relating to Complainant’s use – the U.S. Registration for the ROIQ trademark – which claims first use in commerce on November 2013.” Sunk by its admission!

Prevailing presupposes the right palette of facts properly and persuasively laid out—Leslie Brown v. Peter Auger / adnetagency, FA1703001723736 (Forum May 1, 2017)  (<>) and CVS Pharmacy, Inc. and MinuteClinic, L.L.C  v. Pham Dinh Nhut, FA1703001723633 (Forum April 30, 2017) (MINUTE CLINIC and <>)—but insufficient if there is no supporting proof with the allegations ATC Group Services LLC v. BatchMaster Software, Inc., FA1703001722646 (Forum May  15, 2017) (<>).

In Leslie Brown, Complainant proved its common law right by providing “evidence that its website has had nearly 43 million page views for <>, and from this the Panel inferred (Respondent not having appeared) that Respondent “had actual knowledge because the disputed domain name is identical to Complainant’s mark and Respondent’s resolving webpage offers identical services to Complainant’s webpage.”

The ATC Group Services case is one of those decisions that should be on every parties’ study list. I say this for two reasons: first, the skill with which Respondent’s counsel marshaled the evidence; and second, the Panel’s reasoning in dismissing the complaint. As to the latter (which incorporates Respondent’s counsel’s analysis), while Complainant “submitted proof of use of the letters ATC as part of various corporate names [it submitted] no proof of use of ATC as a trademark brand, let alone sufficient proof of secondary meaning.” Further, “[n]o proof has been submitted establishing how ATC has been used as a trademark by Complainant, the advertising revenue incurred to promote the ATC brand, or the extent to which the ATC brand is associated with Complainant by the relevant public community.

All these decisions (even those I’ve noted only in passing) share some common features.  Prevailing parties have organized their evidence to prove their contentions.  This generally requires professional assistance; certainly without counsel, parties (I mean on both sides of the caption) lose.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP. 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. (Legal Corner Press, 2015). Supplement and Update 2017. Treatise and Supplement are available from Amazon or the Publisher. Learn more about the book at Legal Corner Press.

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