Relevant Decisions

Alliance for Responsible Pet Ownership, Inc. v. Josh Huser, Forum FA2502002141249, <adoptarpo. org>, 3-Member, Denied

The Complainant failed to provide evidence regarding the duration and nature of use of the marks, the number of sales under the marks, the nature and extent of advertising using the marks, the degree of actual public recognition (e.g., website traffic), consumer surveys, etc. The burden of proof is on the Complainant. The Panel finds that the Complainant has not established sufficient secondary meaning…

Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, Forum FA2402002083049, <thegardensavvy.com>, 3-member, Denied

The Complainant also asserts that it has used its domain name <gardensavvy.com> since 2019 but failed to present any evidence about the use of the domain name or the development of secondary meaning…For the foregoing reasons, the Panel finds that the Complainant fails to establish unregistered or common law trademark rights due to lack of evidence provided to support that the mark “Garden Savvy” has generated a secondary meaning.

Chai Research Corp. v. Andrew Haynes, CAC-UDRP-105900 (2023), <CHAI-APP.com>, Transfer

The Complainant claims common law rights in the CHAI mark as a result of its extensive use of the mark for leading research and applications of chat dialogs with artificial intelligence since January 2022. The Panel finds that the Complainant has established common law rights in the CHAI mark prior to the registration of the disputed domain name under Policy paragraph 4(a)(i) because consumers in the relevant market are likely to recognize the mark “CHAI” as a source indicator of the Complainant’s app products and services…

Amit Kolambikar (Space Falcon LLC) v. John ladrok, CAC-UDRP-105490 (2023), <spacefalcon.com>, Transfer

Although the evidence of the use and extent of the Complainant’s trademark covers little more than a year, considering factors such as the type and scope of market activities and the nature of the Complainant’s goods and services, namely “online gaming, blockchain and NFTs”, and the fast growth shown in terms of users and followers, this Panel considers that there is nevertheless sufficient material in the present record to find that the SPACE FALCON trademark has acquired a secondary meaning and therefore that the Complainant has unregistered trademark rights therein for the purposes of the Policy.

In particular, the Complainant is able to show that before the registration of the disputed domain name its SPACE FALCON online game had already reached over 160 thousand followers, had raised several million US dollars from investors, and all this was announced with several articles on internet blogs.

iCommand Ltd v. Johnny Gray, ArtWired, Inc., WIPO D2020-1438, <downpat.com>, 3-member, Denied

Complainant asserts that it has taken certain preparatory steps to use the DOWNPAT trade mark. It also relies on its pending Australian Trade Mark Application and its ownership of the domain name <downpat.com.au>. However, Complainant acknowledges that it has not actually used the DOWNPAT trade mark in the course of trade. That being the case, Complainant cannot have acquired rights in DOWNPAT as an unregistered/common law trade mark.

Without trade mark rights, Complainant cannot satisfy the first requirement of the Policy. Under the circumstances, the Complaint must fail, and it is unnecessary to address the additional grounds.

DAY PASS LLC v. GymClub International Limited, CAC-UDRP-102552 (2019), <daypass.com>, 3-member, Denied

Although the complainant appears to have used the term Day Pass as part of its company name for some time, there is no real evidence of how that term has become understood by the relevant public. The Complainant’s website has changed over time and it seems clear that as late as 2016 this was one of a number of phrases that the Complainant was considering using as a trade mark. Further, there is no evidence whatsoever before the Panel of sales or advertising. Further, although there is a reference to media coverage, there has been no real attempt to properly collate and present material to the Panel in this respect.

The Indian Hotels Company Limited v. Roger Price, WIPO D2018-2325, <IndianHotels.com>,3-member, Denied, RDNH

In that regard, Complainant must establish that its claimed INDIAN HOTELS mark has become a distinctive identifier which consumers associate with Complainant’s goods and/or services. Proof of such rights cannot be based on conclusory allegations, particularly where, as here, a claimed trademark consists of a combination of two generic words. Id. For this reason, Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. and cases cited therein.

NTI CADCENTER A/S v. Domain Admin, Ashantiplc Limited, CAC-UDRP-101591 (2017), <nti.com>, 3-member, Denied

The Panel is comfortable to state that, three-letter marks have, in general, low distinctiveness (NB: the few exceptions that exist are confirming the rule). What is more, “NTI” can be found on the web to mean many different things in world commerce. The fact, mentioned by the Respondent, that a plethora of other domain names exist for “NTI” (nti.org, nti.net, nti.nl, nti.ch, etc.) reinforces this opinion of the Panel. It would, admittedly, be far-fetched to recognize -in the absence of at least one registered trademark- exclusive, common law rights on “NTI” to the Complainant, only on the basis of some limited use of “NTI” in the marketplace, which is clearly not enough to establish common law rights.

Chandler Horsley v. Fundacion Private Whois, NAF FA1305001497825 (2013) <degreesearch.com>, Denied, 3-member

The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.

Hence, to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the trademark owner…The Panel considers that “common law rights” should not be taken as a “last resource” when a Complainant does not have a trademark registration… As trademark registrations, common law right must be seriously demonstrated, since under the Policy both trademark recognition systems are enforceable as equals. Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust[.]

Digest Commentary

• Digest Vol.5.17 <genomedx.com>, Denied
• Digest Vol. 4.33 <vikimgcloud.com>, Denied
• Digest Vol. 4.23 <opns.domains>, Denied
• Digest Vol. 4.20 <barbosaforcongress.com>, Transfer
• Digest Vol. 3.43 <wilkesbarrerugby.com>, Transfer
• Digest Vol. 3.29 <spacefalcon.com>, Transfer
• Digest Vol. 3.27 <integrity.com>, Denied, RDNH
• Digest Vol. 3.9 <multitracks.com>, Transfer
• Digest Vol. 2.44 <baseballcoachtraining .com>, Transfer

Further Reading

“Unregistered Trademark Rights and Fraud in UDRP Cases”, by Mihaela Maravela