WIPO Case No. D2020-0318
23rd March 2020
Social activists seek to control the use of a generic phrase
In the wake of the Harvey Weinstein scandal in 2017, a group of prominent Hollywood actors combined forces to spark a social activist movement against harassment and gendered discrimination in the work place and in particular – the entertainment industry. Along the way these celebrities coined the phrase “time’s up”.
By 2018 they had incorporated the Time’s Up Group and registered a TIME’S UP trademark in various European jurisdictions. No US registered trademark exists, however, because the application to the US trademark office was rejected on the basis that the mark was too generic or, as they put it, the phrase was “an informational, social message that identifies a social movement” that did not function as a trademark..
Yet the Time’s Up Group claimed common law rights to the phrase via public recognition of its use including at the Golden Globes, in open letters to the US government and having it featured on clothing and other merchandise sold by the group. However, the claim was not supported by any evidence.
The domain name <timesupseiu.com> was registered on July 17, 2019 and is owned by Berman and Company , a public affairs and non-profit management firm. The “seiu” stands for the Service Employees International Union which was criticised on the domain name’s website for alleged sexual harassment within the union and the allegedly inadequate responses by SEIU management to such alleged harassment.
The panel in this case found that the domain name was confusingly similar to the TIME’S UP European trademarks.
But the Time’s Up Group failed to show that Berman and Company did not have any legitimate interest in the domain name. It did have a legitimate interest in the domain name because it was using the common phrase “time’s up” as a call to social action pursuant to his rights of free speech under the First Amendment to the United States Constitution. This resulted in the Complainants failing to have the domain name transferred to them and failing to de-platform their fellow activists.
This case might have played out quite differently if the Respondent was using <timesupseiu.com> to profit on the basis of market confusion. The Time’s Up Group did not present any evidence of that happening. In fact, they proceeded without much evidence at all other than that pertaining to a loose claim of public recognition of the phrase.
Nevertheless, it was a victory for free speech. The Complainant, relying on its social activist cache, had failed to stifle another activist group who were thus allowed to continue criticising a third party (the union) for not taking action against the same harassment that the Complainant supposedly existed to stamp out. It looks as if the de-platformer had been de-platformed.
The generic nature of the phrase “time’s up” has powerful implications for the Complainant’s ability to control its usage. As the panellist pointed out, the Respondent (an American) has a legitimate interest in its use satisfied merely by his interest in free speech pursuant to the First Amendment. whilst the site leverages a similar activist sentiment. The decision highlights how much more difficult it is to control the use of a generic phrase compared to a made-up or commercialised one-but all to the good if you are an advocate for free speech.
Another irony, showing the universal application of the UDRP: an American activist group had to rely on European trademarks when it had no US trademark and could not prove a common law trademark. But having got past that hurdle, it fell over at the next one because the US Constitution defended free speech which the Complainant was trying to deny.