Wednesday, February 24, 2010

Solid UDRP Decision From Panelist Jonathan Turner

WIPO UDRP Panelist, Jonathan Turner, deserves kudos for authoring a fine decision which makes excellent use of appropriate and highly relevant case law, in the case (February 5, 2010).

He wrote as follows in this case brought by a Canadian against a Californian, wherein the Complainant alleged that the Respondent was a "cybersquatter":

"The more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning, as is illustrated in Canadian and United States law by Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. [1938] 1 All ER 618 and Kellogg Co. v. National Biscuit Co., 305 U.S. 111.

In this case, the Complainant has not provided any specific evidence as to the extent or nature of its use of the term in which it claims rights, apart from mentioning its website which is located by a domain name consisting of the alleged mark. The Complainant has not stated the value of its sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion. There is no evidence showing that consumers have been taught to regard or have come to perceive the term as a brand. "

Mr. Turner's excellent reference to appropriate and highly relevant case law (the "shredded wheat" cases) is of particular interest to me as I relied on the Canadian "shredded wheat" case in the CHEAP TICKETS case (See Paragraph 15 of Justice Strayer's decision).

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