Moreover, it is now clear that many panellists will require good evidence before they are persuaded.
A recent case shows that some Complainants are not handling this issue properly and that cases, like the present one, will continue to fail if the evidence is not produced.
The Complainant was seeking the transfer of <autoblogreviews.com> and some related domain names and relied on common law trademarks it claimed that it had in AUTOBLOG and AUTOBLOG GREEN ( although the argument revolved around AUTOBLOG).
It was alleged that AOL had used the AUTOBLOG mark continuously since 2004 in providing services and information via the Internet. The mark AUTOBLOG was “used extensively at as part of a Complainant owned website, which is a significant method of promoting Complainant’s services.”
Respondent had registered the domain names
<autoblogreviews.com> etc. and used them in websites which were said to provide “the same types of information and services that AOL provides at its AUTOBLOG sites.” As AOL did not have a registered trademark in AUTOBLOG it had to prove a common law trademark.
The panellist was unpersuaded by the evidence advanced in support of this contention and rejected the claim.
The points made in the decision were as follows.
A party claiming trademark rights in a generic or descriptive mark must show that such mark has acquired secondary meaning through use: Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (U.S. 1995). But the Complainant had made only assertions as to this and not adduced evidence that “the public identifies the AUTOBLOG mark with the source of Complainant’s services rather than as merely a phrase describing those services.”
“In determining whether or not a mark has acquired secondary meaning, tribunals consider several factors. Direct evidence of secondary meaning includes: (a) direct consumer testimony; and (b) consumer surveys. Circumstantial evidence of secondary meaning includes: (c) exclusivity, length, and manner of use; (d) amount and manner of advertising; (e) amount of sales and number of customers; (f) established place in the market; and (g) proof of intentional copying.”
Cases are cited in support of these points.
The panellist then makes a valuable observation:
“Similarly put:
The factors considered … [in] determining whether a mark has acquired secondary meaning include: “(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, (4) whether use of the claimed trademark has been exclusive,” Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1357, 228 U.S.P.Q. (BNA) 346, 350 (9th Cir. 1985) (en banc), (5) whether defendant engaged in “exact copying” of plaintiff’s purported mark, see Committee for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 822, 39 U.S.P.Q.2D (BNA) 1705, 1711 (9th Cir. 1996), and (6) whether defendant’s use of the purported mark has led to actual [*14] consumer confusion, see Adray v. Adry-Mart, Inc., 76 F.3d 984, 987, 37 U.S.P.Q.2D (BNA) 1872, 1875 (9th Cir. 1995). Riggs Mktg., Inc. v. Mitchell, 1999 U.S. App. LEXIS 11862, 13-14 (Fed. Cir. June 8, 1999).
UDRP panels have likewise urged that particular evidence rather than mere conclusory allegations is required to show that an otherwise generic or descriptive mark has acquired distinctiveness and is a trademark for the purposes of Policy 4(a) (i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to UDRP ¶ 4(a)(i); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”).
Therefore, it is Complainant’s burden to not only plead, but also prove that that its descriptive mark has acquired distinctiveness and thereby is a protectable trademark under Policy ¶4(c) (i). There is no presumption in Complainant’s favour. Complainant must prove the status of its mark via competent evidence, not by conjecture or innuendo. Furthermore, the degree of burden to prove that a mark has acquired distinctiveness should not be attenuated because of the abbreviated nature of the instant proceeding. Nor should it be increased. To do either would indicate an arbitrary predisposition in favour the benefited party’s alignment. Expedience should not be served at the cost of fairness. There is no authority that the Panel is aware of that stands for the proposition that sufficient evidence of secondary meaning requires either volumes or even pages to present. But to the extent that it does in particular cases, the requirement is independent of the nature of the proceedings or forum.
Importantly, Complainant proffers no direct evidence, such as consumer testimony or consumer surveys, showing that AUTOBLOG has acquired secondary meaning. There is neither a shred of evidence of actual consumer confusion nor any evidence that consumers identify AUTOBLOGS as a source of information rather than merely a description of a type of information.”(emphasis added).
The decision also contains some useful advice on how gaps in the evidence might be filled .Thus:
“…Absent are Complainant’s declarations from its marketing management or other knowledgeable person supporting the raw advertising claims made in the Complaint. Also absent is any documentation of the amount, extent and kind of advertising.”
Finally,
“The burden required to prove that a complainant has trademark rights in a domain name under Policy 4(a) (i) is not trivial since in effect such rights predicate a complainant’s ability to bring an action under the UDRP. Choosing a descriptive mark and choosing not to seek registration of such mark increases Complainant’s burden to demonstrate that its descriptive mark had acquired protectable trademark rights.”
The decision is therefore another salutary reminder of the burden on complainants and the need for evidence.
It is particularly helpful in specifying the issues on which evidence will be required and how it might be obtained.