Thursday, March 15, 2012

Lessons for Unregistered Common Law Trademark Owners

I often hear from businesses that do not have a registered trademark but have a problem with a cybersquatter. In order to be successful in a UDRP without a registered trademark, you must have common law trademark rights which precede a bad faith registration of a domain name. The key however, is in PROVING your common law trademark rights. This case shows how you need to do it, and the dangers of what happens when you do not do it properly, even with an undefended case:


The Complainant has produced nothing in the way of evidence to establish unregistered trade mark rights. The Complainant’s evidence contains no information on the nature and extent of its business; nothing in the way of sales figures; nothing in the way of advertising spend; and nothing to demonstrate any media recognition or third party recognition of any kind. Some of the documentation that the Complainant has produced has been in the French language. Notwithstanding that English is the language of this proceeding, the Panel has done his best to try and decipher whether any of the French language documents provide support of any kind for the existence of unregistered trade mark rights, but does not believe that they do.

The Complainant has produced a document certifying that the company was incorporated in 1999, but there is nothing before the Panel to establish when it actually commenced business. It claims to have a number of “elliweb” domain names, but the Panel has been given no information as to when they were registered. They may not have been registered until May 2011 when the Complainant registered its trade mark. The Panel simply does not know. The Complaint features screenshots of some of the Complainant’s webpages, but the Panel was unable to decipher any dates.


...

The Panel notes for the record that the Complaint makes no mention of the fact that the Complainant’s registered trade mark rights, the only rights expressly claimed by the Complainant, post-date registration of the Domain Name.


For the foregoing reasons the Complaint is denied.

1 comment:

Anonymous said...

I purchased a site and very unique domain name 2 years ago, spent money on advertising, made videos for promotion and spend countless hours submitting the links socially. I recently discovered that the former owner (or his affiliate) has been using my domain name as their subdomain. (Example: mydomain.hisdomain.com) - Can he do this?