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Recent Case Notes & Commentary

Common Law Trademarks, Generic Words and Parties’ Intent

Mimic Skateboards Inc. v. Domains By Proxy, LLC / Travis McGlothin, Point Distribution

WIPO Case No. D2019-0722. May 23, 2019.

Sometimes, we see cases under the UDRP where complainant and respondent are truly grinding it out. In this instance, where both parties supply and sell custom skateboard products, we are afforded some interesting insights into the nuances of the UDRP. Notably, the case provides an example of how common law trademarks work under the policy, and also demonstrates that the second and third elements of the UDRP are often intimately linked.

In addition, the successful party in this case, the respondent, was not represented by counsel, highlighting that the UDRP can be a relatively straightforward and accessible arbitration process and that you may not need a lawyer to succeed.

The Case:

Two online businesses dealt in custom printed skateboards, and their fight was over the disputed domain name <>. The complainant, who has been running a variety of such businesses since 1999, has operated at the similar, but pluralised, domain name <> since 2012.

The respondent, who also manufactures and prints designs on custom skateboards, holds several domain names related to his business, but primarily operates at <www.>. However, he also holds several other domain names related to his business, including <> and <>, acquiring both well before he registered the disputed domain name.

In early 2018, the respondent bought the disputed domain name at auction, which for him, was fantastic as it constituted a shorter version of his own domain names. However, given that it differs in one letter from the complainant’s own website, he naturally took an interest in it. The Complainant tried to buy it from the respondent, but failed. Proceedings then began under the UDRP.

Given the complainant had no registered trademark registration for the term CUSTOMSKATEBOARDS, he had to first prove that he held a common law trademark in that expression so that he could get to first base in claiming <>. Under the UDRP, to assert common law trademark rights “the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” As with all claims, this has to be substantiated by evidence, and on this occasion the panel found that there was sufficient evidence to find in favour of the Complainant. No doubt, this was because the Complainant, who already owned <> had been using that name to sell his skateboards.

As <> was only letter shorter than the common law trademark, the Panel held that the disputed domain name as confusingly similar to the trademark.

Although the complainant was able to prove it had trademark rights, CUSTOMSKATEBOARDS is a fairly descriptive term. As such, the rest of the case centred around whether the respondent had registered and used the domain name for its value in attacking the complainant’s common law trademark, or whether it did so merely for its descriptive value.

The complainant tried to argue that the respondent, as a competitor, was aware of the complainant’s own business and used the disputed domain to redirect customers to its own site, thereby diverting them from the complainant’s business in bad faith.

As part of his case for keeping <> the Respondent said that he had used the descriptive terms “Custom Skateboard” and “Custom Skateboards” (singular and plural) in its marketing and on its website since the founding of his company in 2004.This enabled the respondent, who was not represented by counsel, to argue that his legitimate interest in the domain name emerged from a desire to use a “shorter URL” than ones it previously held, and that it was an appropriate generic term relevant to its own website and business.

Ultimately, the panel found that on balance, the respondent’s stated motivation was more credible than complainant’s arguments. This was largely due to the fact that the Respondent made prior use of the descriptive term “custom skateboard” and had also outlined a plausible explanation for registering the domain name. Not only did the domain name describe the respondent’s products, but it was also shorter than existing names it held. As such, the second and third elements, and thereby the case itself was decided in favour of the Respondent.

The result reminds us the true purpose of the UDRP; to resolve alleged claims of trademark infringement quickly and without the hassle of going to the courts. As long as one remembers to address each element of the policy directly, and substantiate their claims with evidence, the entire process can be relatively straight forward. Even unrepresented parties can – and do - win cases.

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