To succeed in a cybersquatting case, a complainant must demonstrate rights in a trademark. The trademark might be registered or unregistered. I will analyze in this post recent UDRP decisions at WIPO looking at how panels address the issue of unregistered trademark rights, particularly how allegation of fraud is factored in.
Background
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for solving cybersquatting cases.
To succeed in a UDRP complaint, under the first element of the Policy, a trademark owner must prove it holds rights in a trademark, which under the case law developed under the Policy could be unregistered rights as well.
In this respect, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that “[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration 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.” (section 1.3)
Burden of Proof on the Complainant
As with all elements under the Policy, the burden of proof rests on the complainant to show it acquired common law or unregistered trademark rights. The burden is higher in case of descriptive terms.
In terms of what evidence is considered by panels as evidence of common law rights, in a recent case the panel considered that the complainant has proved its sign BRUGNATO 5TERRE OUTLET VILLAGE has become a distinctive identifier “which consumers associate with the Complainant’s goods and/or services at least in the Ligurian area. It results from the Complainant’s allegations and undisputed evidence, i.e. Italian media, including newspapers that:
– the Complainant uses consistently the sign BRUGNATO 5TERRE OUTLET VILLAGE to designate its shopping outlet since 2014;
– the BRUGNATO 5TERRE OUTLET VILLAGE achieved 20 million visitors over the decade, of which 35% were tourist, half of whom were foreigners;
– the BRUGNATO 5TERRE OUTLET VILLAGE’s revenues doubled between 2014 and 2024, with an average growth of 13% in the first five years. Since 2020, growth was averaged 10% per year;
– the BRUGNATO 5TERRE OUTLET VILLAGE has four hundred employees circa, with an income distributed of circa EUR 6,800,000.
– the BRUGNATO 5TERRE OUTLET VILLAGE has been organizing several summer events with Italian artists.”
Another recent example is the case concerning the domain name <trcci.com>, where the panel considered that the complainant proved common law rights in the TRCC mark based on “its long-standing, exclusive use of the mark as a distinctive identifier of its chemical manufacturing and distributorship services. Operating globally with facilities in nine countries and a substantial United States presence”, and also given that “[o]ver the past 14 years”, “the TRCC mark has been continuously featured on the Complainant’s website, advertising materials, and delivery trucks, building significant goodwill and public recognition”.
Similar decisions in the case concerning the domain name <westernsflyerexpress.com>, or the case concerning the domain name <globalbrother-srl.com>.
Where no evidence is brought by the complainant, the UDRP complaint would be denied, as it recently occurred in the case concerning the domain name <gopa.com>, where the domain name consisted of an acronym used by many diverse entities, and therefore could not “be regarded as inherently distinctive, and there is a greater onus on the Complainant to present evidence that it has acquired a secondary meaning”.
The panel did not find the evidence conclusive, as “[t]he only supporting evidence provided by the Complainant however consists of Wayback Machine archived copies of its own website, and there is no information from independent sources to confirm its allegations. The Complainant has not provided any evidence as to the amount of sales under the service mark GOPA and the nature and extent of advertising using it; there is no evidence as to the degree of actual recognition of the trademark by the public and no consumer surveys.”
A similar example in the case concerning the domain names <fredricmwinocur.com> and <fredricwinocur.com>, where the panel also gave examples of evidence that could have been provided by the complainant to prove that its trademark has attained secondary meaning in any client market for legal services.
Fraud as a Factor for Establishing Trademark Rights
In terms of how the domain name in dispute is used, and whether this is a factor to be considered under the first element of the Policy, WIPO Overview 3.0 mentions that “[t]he fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” (section 1.3)
When addressing this issue panels have generally held that evidence of fraud is not sufficient per se for a complainant to establish unregistered trademark rights. Other evidence is required as well.
Cases Where Fraud Was a Factor Under the First Element
In the above-mentioned case concerning the domain name <outlet5terre.com>, in addition to the evidence of use, the panel found that the respondent was shown to have been targeting the complainant’s trademark based on how the website at the domain name in dispute was used (i.e. to display the complainant’s trademark and device logo and offering the possibility to buy apparel at heavily discounted prices). Under such circumstances, the panel held that “this fact supports the Complainant’s assertion that the sign BRUGNATO 5TERRE OUTLET VILLAGE has achieved significance as a source identifier.”
Also, in the above case dealing with the domain name <trcci.com>, in addition to the long use, the panel noted that:
“the Respondent is shown to have been targeting the Complainant, reproducing the Complainant’s full logo in the email communications sent through an email address related to the disputed domain name, in an attempt
to pass off as coming from the Complainant. The Panel considers that such use supports the Panel’s finding
that the Complainant’s TRCC mark has achieved significance as a source identifier for the purposes of the
Policy. See WIPO Overview 3.0, section 1.3.”
In the case dealing with the domain name <ansett-spares.com>, despite the evidence brought by the complainant being rather scarce, the panel concluded first that that “the Complainant appears to be a substantial company conducting operations on an international basis. Also, the Panel appreciates that the initial, and thus dominating term of the mark, ANSETT, is not a descriptive term”. Second, looking at how the domain name was used, the panel held that “attaching the disputed domain name to a website that virtually duplicates the website found at the Complainant’s domain name — supports the conclusion that the Complainant’s mark is a source identifier”. Therefore, the panel took into account the fraudulent conduct of the respondent as a factor when determining that the complainant proved unregistered trademark rights.
On the same note, in the case concerning the domain name <hoveywiliams.com>, the complainant was a law firm claiming common law trademark rights in HOVEY WILLIAMS (I discussed in a previous post cybersquatting claims by lawyers), and the domain name was used to send fraudulent emails impersonating the complainant’s employee.
To conclude that the complainant has proved trademark rights, the panel noted that “the Complainant has used and advertised its legal services using the HOVEY WILLIAMS trademark since at least 2003. For a few decades prior 2003, the Complainant has also operated under the trade name including the HOVEY WILLIAMS trademark”. The way the domain name in dispute was used was considered by the panel as a factor supporting the above conclusion.
A similar decision in the UDRP case concerning the domain name <ocregisterjobs.com>, where the panel has held that “on the basis of this intentional targeting of Complainant’s name and reputation by Respondent, the Panel finds that Complainant has established unregistered trademark rights in the OC REGISTER Mark.” Similarly, in the case dealing with the domain name <archerflnancials.com>, the case concerning the domain name <delbuonosbakery.com>, the case concerning the domain name <barn-finds.com> or the case dealing with <maxshippingcontainers.com>.
Fraud Alone is Not Sufficient
Fraud alone is generally not held by panels to be sufficient for complainants to prove unregistered trademark rights.
In a recent case concerning the domain names <bsss-ph.com> and <smartk0in.net>, the complainant alleged that the disputed domain names were used to send to perpetrate a fraud on the complainant, namely emails with addresses at the disputed domain names were used to send instructions to an employee of the complainant. “The emails purported to come from another employee within the Complainant and were used to deceive the recipient into making a financial transfer.”
Despite procedural order being issued asking for evidence of common law rights and indicating the type of evidence needed, and despite the complainant asking for extension of time to file further evidence, the complainant eventually replied that they considered having filed sufficient evidence in that respect.
As per the decision in the above case, the only evidence provided with respect to one of the trademarks, SMARTKOIN, was a printout of the complainant’s website, which the panel has analyzed and concluded inter alia that “[t]hat website comprises a single page (and an associated pop up “contact us” form – see below). The single page has at the top a logo and the words “Smartkoin OPC”. Otherwise, the website is without detail as to the Complainant’s services, or recognition thereof”, and the only evidence as to the use of the other invoked trademark, BSS-PH.COM, showed it had been used as an email address in recruitment advertisements for candidates to send their applications to.
The panel considered that “the evidence presented provides the Panel with no information regarding public recognition of the Complainant and its relied upon trademarks”, and it provided details of what was missing. As to the fraud, the panel noted that “the fraud that is at the center of the Complaint is a fraud upon the Complainant itself, not a fraud on a customer”.
Importantly, the panel has held with respect to the allegation of fraud which was the only argument of the complainant to support unregistered trademark rights, that:
“the Complainant’s argument is circular – if accepted it would mean any email fraud of this nature automatically results in the term in question being held to be a trademark – that is not necessarily the case. Whilst a domain name can often be a trademark, that still needs to be proved by appropriate evidence – which the Complainant has failed to do here.” […] “It may well be that the Disputed Domain Names have been used fraudulently, but that does not automatically entitle the Complainant to succeed. It still has to show it has the necessary standing for the Policy to be applicable. It has not done so”.
Final Remarks
As correctly pointed out by a learned panelist in the UDRP case concerning the domain names <westernbridgeship.co> and <westernbridgeship.net>, “the existence of rights in a trade mark remains an essential part of the UDRP.
The UDRP is not designed to provide a remedy in call cases of wrongdoing on the Internet, and a complainant is required to show an unfair taking advantage of its trade mark rights.
So, for example, it is not sufficient for a complainant merely to demonstrate that a domain name has been used to perpetuate a fraud, if it cannot show that it has rights in a trade mark that is similar to that domain name”.
When filing a UDRP complaint based on unregistered trademark rights, complainants should go the extra mile and thoroughly describe and prove how their trademark achieved significance as a source identifier through use.
Sometimes, in limited situations, depending on the circumstances of the case, panels might consider fraud alone as proving limited trademark rights for the purposes of the first element of the Policy, as in cases referenced in the case concerning the domain name <ahascientificsessions.org>.
