A recent decision reminds us that a claim for an unregistered or common law trademark will not always succeed and that evidence is needed. The evidence of the Complainant on this issue in Alliance Member Services, Inc. v. Jiang Li, FORUM case FA2111001973871 (29 December 2021) did not come up to scratch, it was unable to prove its claimed common law trademark and, as it had no registered trademark, the claim failed. This was a bad result for the Complainant, particularly as the claim was undefended and one would have thought that it must have been reasonably easy to prove the common law trademark.
So, why did the Complainant lose?
The panellist who decided the case made it clear what exactly had to be proved. A complainant in this situation has to show that the mark relied on is seen by the public as the mark or brand that associates the claimant with the goods and services it is promoting in the market.
This can most readily be shown by evidence of sales that have been made under the brand, media recognition, public opinion surveys, advertising, how long the mark has been in use and any other evidence that links the brand with the claimant.
The problem with the claimant’s evidence in this case was that there was none of it. It had a domain name and there was of course the claimed trademark. But they simply described the goods and services; they did not distinguish them from similar goods and services in the market.
So the Complainant lost on this pretty basic issue and the Respondent retains the domain name.