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Recent Case Notes & Commentary

Descriptive Domain Names and Common Law Trademarks

Wes Madan / United Oil Heat, Inc., d/b/a v. Michael Meehan

Claim Number: FA1701001715122

March 9, 2017

Cases involving descriptive terms and common law trademarks are often some of the most intricate that come under the UDRP. In most of these cases, panels are generally required to weigh up whether the disputed domain name is being used for its value as a generic term, or to directly attack a Complainant’s trademark or business. The panellists’ findings in this instance demonstrate that if the use of the disputed domain name is clearly linked to the generic meaning of the term, the complaint will usually be denied.[1]

Both parties in this case operate similar competing businesses, allowing customers to order oil online. Whether that oil is yours or mine depends on the business one chooses, as the Complainant operates his website at <> while the Respondent’s is located at the disputed domain <>. Understandably annoyed that the Respondent offered competing services on a similar website to their own, the Complainant sought transfer of the disputed domain name. However, it was unable to provide sufficient evidence the Respondent was attacking their trademark, and ultimately failed under the second and third elements of the UDRP.

The Respondent was able to demonstrate it had a right or legitimate interest in the disputed domain name. It argued that the domain name was comprised of words merely describing the purpose of the website: the legitimate and legal sale of oil online. This was not rebutted by the Complainant, and since such activities constitute a bona fide offering of goods and services, the panel found the second element in favour of the Respondent.

In most cases a finding usually signals game over for the Respondent. However, the panel also deemed it necessary to consider the third element - bad faith use and registration. Panellists sometimes do this because findings of bad faith can negate the bona fide nature of business activities under the second element of the policy. However, in the eyes of the panel, the Complainant was unable to provide any substantive evidence that the Respondent was attacking the Complainant’s trademark and acting in bad faith. Perhaps if the Complainant submitted more substantive evidence it could have had better luck here, but unfortunately for them, they were denied.

While the case was decided on these two elements alone, it is worth touching on the issue of common law trademarks. Such cases can often be interesting as common law marks are difficult to prove without a wealth of evidence. In this instance, the Complainant highlighted that it had already successfully affirmed common law rights in a previous UDRP decision. While previous cases are often mentioned in UDRP proceedings, the arbitration process is not built on precedent, and the Complainant would have still been required to prove its common law mark with evidence. Luckily for the panel, they were able to avoid making a decision on this matter as the complaint had failed against the other two elements of the policy.

[1] Some of these decisions can be quite contentious, such as Rosetta Stone Ltd. v. Digital Privacy Corporation / Stuart Thomas Case No. D2018-2322 which contained the generic term “Rosetta Stone” but was found in favour of the Complainant, albeit with a lengthy dissent by the owner of this publication.


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