When Online Brand Protection Goes Awry

The case I’d like to talk about this week really got under my skin.

Instead of using the UDRP as the online brand protection tool it was meant to be, this Complainant’s case falls into the categories of Complainant maliciousness and, worse, counsel ignorance or ineffectiveness.

Represented by a law firm in Washington, the Complainant in this case managed to hit a number of UDRP land mines including failure to prove trademark rights, failure to prove prior trademark rights, delay, misrepresentation of evidence to a Panel and, oh did I mention, either using counsel with no experience in the UDRP or at least disregarding any good advice it had to offer.

The Complainant’s Case for Online Brand Protection

Let’s start with the basics. Complainant, who was formed in 2004, claims to own trademark rights in the term SPEEDTEST in relation to software used to test the speed of a user’s Internet connection. (Some of you may already be rolling your eyes). It pointed to longstanding and extensive use of the phrase and even submitted a copy of a U.S. trademark registration that it had obtained for this mark.

The Complainant argues that the domain speedtest.org, when used for a pay-per-click website showing at least some links relating to Internet connection testing, infringes on its mark. And so, the Complainant decided to use the UDRP as a part of its online brand protection efforts.

The Respondent’s Case for Bona Fide Use of the Domain

The Respondent argues that the domain and phrase “speed test”, when used in relation to such services, cannot be protected as a trademark and that his pay-per-click site is a bona fide use of the domain.  On this footing, the Respondent offered to sell the domain to the Complainant but they were not able to arrive at agreeable terms.

The Panel Unpacks the Complainant’s Claims

• Does the Complainant have trademark rights?

The first issue tackled by the 3-member Panel was the threshold question of whether Complainant has proven the existence of trademark rights in the term SPEEDTEST.  From a review of evidence submitted by the Respondent, the Panel noted that the USPTO had rejected an earlier trademark application for this phrase on the ground that it’s generic for the claimed services.  The PTO Examining Attorney even admonished the Complainant not to try and submit evidence of acquired distinctiveness (under Sec. 2(f)) or to amend to the Supplemental Register since generic terms can never gain trademark rights no matter how long or extensively it’s been used.  For its part, the Panel in this decision took a deferential tone saying “Considering the USPTO’s decision, which it would be inappropriate for this Panel to question or overrule, we agree [that] … no amount of secondary meaning can convert a generic term into a trademark.” So strike one for this Complainant.

• What does the Complainant’s trademark registration mean?

Next, the Panel addressed the fact that, despite this PTO history, the Complainant did, in fact, manage to obtain a trademark registration for SPEEDTEST.  Unfortunately, what the Complainant and its counsel didn’t do is mention that this is on the Supplemental Registry, which is reserved for descriptive terms that may have some potential to gain distinctiveness as trademarks in the future.

This registration was obtained when Complainant filed another application for its claimed mark but listed slightly different services (“Providing information in the field of Internet connections”).  This clever move gave it just enough wiggle room to have the registration issue on the Supplemental Register.  However, both Complainant and its counsel were unaware of the line of UDRP precedent, which holds that such registrations are not sufficient to prove trademark rights under the Policy.  So, strike two for this and for failing to inform the Panel of the nature of this registration.

• Could the Respondent really have registered the domain name in bad faith?

Now, for the kicker.  As mentioned, Complainant’s company was formed in 2004 but the speedtest.org domain was created by the Respondent in 2000.  This sets up a situation where the Complainant is claiming that Respondent registered its domain in bad faith despite the fact that the SPEEDTEST trademark didn’t yet exist and compounds it with the fact that there was a ten-year delay in bringing this case.  Although the Panel didn’t dwell upon alternate interpretations of section 4(a)(iii) of the UDRP which have been adopted by a minority of Panelists, it simply mentioned that this section requires both bad faith registration and use of the domain and concluded that the Respondent couldn’t have registered in bad faith if it didn’t even know of the Complainant or its mark at that time. Strike three and you’re out!

Not Just a Failed Pursuit at Online Brand Protection, But a Case of Domain Name Hijacking

The Panel could have just denied the complaint and left things at that, but instead it took the added step of holding that the Complainant is guilty of reverse domain name hijacking (RDNH).  Citing the fact that the claimed mark is generic, its failure to disclose the true nature of its trademark registration, and the fact that its mark doesn’t predate the creation of the domain, the Panel held that Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.”

This is rather diplomatic language but it reveals the Panel’s frustration with both the Complainant and its counsel for wasting the time and effort of both the Respondent and the Panel itself in a transparent attempt to own a domain name that it couldn’t get through negotiation.

How Can a Brand Owner Adapt this Lesson to Its Own Online Brand Protection Efforts?

I see a few take-aways from this decision but the most important are 1) only use experienced UDRP counsel when filing complaints and 2) don’t use the UDRP as a blunt tool as part of a clumsy attempt to gain leverage in a negotiation when you don’t have legal rights to enforce against a domain.