A favorite topic that I return to time and again in this blog is the need for brand owners to carefully select a counsel who knows the domain name rules if they don’t want to waste their money going after a possible trademark infringement. The UDRP and URS , by design, not nearly as complex as court-based litigation, they do have their own nuances and idiosyncrasies which originate both from the language of the policies themselves and even more so from over 15 years of published decisions. This niche area of practice is often underestimated and, in fact, there have even been instances where experienced courtroom litigators in the trademark infringement field have lost cases due to missteps onto one of the UDRP’s procedural or evidentiary minefields. For this reason, I always make it a point to advise potential complainants to only retain counsel who are specifically experienced in anti-cybersquatting and in filing UDRP or URS complaints.
Knowing When to Say “No” to a Case
One of the main advantages of following this advice is the ability of someone to say “no” when they feel a given dispute is not appropriate for the UDRP or URS. Perhaps the domain name is not close enough to the brand for a Panel to find confusing similarity, maybe the content of the domain’s website indicates that the owner has some rights or legitimate interests or that it didn’t act in bad faith. Or, as was the case in a recent decision, the complainant simply can’t meet the burden of proof to show that it owns trademark rights to the asserted brand.
The Complainant in a UDRP case against the domain etsalesrecruiters.com claimed that it owned trademark rights to the brand ETSRECRUITERS but admitted that it held no registration of the mark. Instead, it claimed rights in the mark under the common law – in other words, that through extensive use, the name has taken on a secondary meaning to the mere words themselves as evidenced by the mark’s public recognition. To support this, it submitted screenshots of its www.etsrecruiters.com website as well as copies of its LinkedIn and Twitter account pages showing the claimed mark.
Unfortunately, the Panel found this insufficient to demonstrate common–law trademark rights through public recognition. It held that “[p]roof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the production of the goods or services to which the mark is affixed. Here the Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”
It concluded with the statement “Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”
Playing by the Rules
In my own practice I’ve filed a number of complaints which required showing common-law rights because the complainant didn’t own a trademark registration at the time the disputed domain was created. In these situations, I’ve submitted historical evidence showing use of the mark prior to the registration of the domain. However, when filing such complaints, I’ve maintained a keen sense that the burden of proof is on the complainant to support its claims on all three UDRP or URS elements. Even though the proof of rights and likelihood of confusion analysis have often been referred to as “standing” or “threshold” matters, even these lower standards must be met. A Panel is not likely to do your homework for you and conduct its own research into a complainant’s claimed trademark rights.
Unfortunately, under the principles of res judicata, the Complainant in the etsalesrecruiters.com case won’t be able to fix its mistake and refile its complaint with additional proof. Just another reason UDRP panels have said brand owners must “get it right the first time” and why one should only hire experienced UDRP counsel to file these sorts of cases.
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