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Recent Case Notes & Commentary

Evidence in Domain Name Cases: Reverse Domain Name Hijacking

Wallace Media Pty Ltd v. CyclingTips CA

WIPO Case No. D2014-1384

For those wishing to bring an action under the UDRP it is important, colloquially speaking, that they ‘get their ducks in a row’ or at least that their bicycle has two wheels before starting the ride.

A recent dispute over the domain name <, shows how fatal it is not to do so. This scenario provides guidance on what evidence can prove the issues, and what evidence will not.

In this case[1], the Complainant contended its name CYCLINGTIPS had acquired a secondary meaning, and was therefore entitled to protection as a common law trademark. However, the “paucity of evidence” tendered by the Complainant left the Panel unpersuaded and unimpressed.

The Parties

The Australian Complainant commenced business operations in 2009. It already owned <> and now wanted to acquire <>. But the Canadian Respondent had purchased that domain name in September 2005, (it had been registered in 2002). It asserted it did it so because it recognised the inherent value of widespread English descriptive phrases such as “cycling tips”.

To get its first duck lined up, the Complainant had to show it had a trademark. Not having registered CYCLINGTIPS as a trademark, it had to prove that it owned a common law trademark in that phrase.

Identical or Confusingly Similar

The panel found the name CYCLINGTIPS not inherently distinctive in itself, as it comprised descriptive or dictionary words. Consequently, the Complainant had to surmount the additional evidentiary hurdle of showing the mark had acquired a secondary meaning in favour of the Complainant.

However, the panel was unconvinced, on the evidence, that a secondary meaning had been acquired, ruling the Complainant had failed to discharge its burden of proof and that, consequently, it had failed to prove a common law trademark. So the Complainant had really failed at the first hurdle.

Rights and Legitimate Interests

There was no unanimous view by the panel whether the Respondent had a right or legitimate interest in the disputed domain name; two panellists held that the Respondent’s website had not carried cycle-related tips and that, hence, the Respondent had not used the domain name within its generic meaning; one panellist found that it had. But, as the Complainant had already failed on the first element, this lack of unanimity on the second element could not affect the result.

Bad Faith

The evidence was that the Complainant had in effect started business in 2009, which was after the Respondent had registered the disputed domain name. So it was virtually impossible to show that the Respondent had or could have been motivated by bad faith towards a non-existent business at that time.

The Panel was clearly unimpressed by the allegation that the Respondent had engaged in any sort of bad faith as it was just contrary to the known facts.

Paragraph 15(e): The Finding of Reverse Name Hijacking

The Panel held that Complainant had engaged in RDNH, constituting an abuse of the Administrative Proceeding. There were so many marks against the Complainant that bringing the Complaint was really harassment: no registered trademark, the descriptiveness of the name CYCLINGTIPS, the paucity of evidence that CYCLINGTIPS was distinctive of the Complainant’s services, the registration of the disputed domain name predating the Complainant’s existence by several years and the absence of any evidence of the Respondent’s intention to target the Complainant. Note that the Panel added that the Complainant’s authorised representative should also have known of these shortcomings.

Complainant’s Conspicuous Absence of Adequate Evidence

For descriptive or dictionary terms, the evidentiary bar is raised even higher for a Complainant, with “compelling proof” being required to show the mark has obtained a secondary meaning. Acquisition of a secondary meaning necessitated evidence indicating an association in consumers’ minds between the term CYCLINGTIPS and the Complainant as the particular provider of services.

In proving that a mark has acquired a secondary meaning, Complainants may seek guidance from previous cases and the WIPO Overview 2.0. As stated by the Panel in this case, appropriate evidence has been found to include:

  • Number of sales and over what period of time under the trademark

  • Nature and extent of advertising

  • Consumer surveys and media recognition of the Complainant.

Having submitted little in the way of the above evidence, it was unlikely any panel could have found in favour of the Complainant. The basis of the Complainant’s argument was the increased website traffic, social media account numbers, and use of the CYCLINGTIPS name in a number of major Australian newspapers. This is hardly the “compelling evidence” required to discharge the burden of showing the mark has acquired distinctiveness.

Granting a trademark at common law on the basis of solely accepting evidence showing the number of followers on a Social Media account, and that the mark had been quoted in some newspaper articles would likely result in the number of secondary meaning claims skyrocketing. This would lead to a significant reduction of the evidentiary burden a Complainant must discharge in future actions.

Accordingly, while these things may be useful circumstantial evidence, it will not be direct enough to afford the mark common law trademark protection.

Knowing What Evidence Will Prove Your Case

As with all UDRP cases, having appropriate evidence to support your claim is essential. The evidence brought by the Complainant was underwhelming at best. Given the greater onus on proving a secondary meaning, this should have been apparent in the circumstances, particularly to its lawyers.

Therefore, to avoid the embarrassment of a Panel rendering a verdict of RNDH, it is vital those seeking a finding of cybersquatting consult relevant sources prior to commencing proceedings to see what evidence is available to support its case. This will highlight what the evidence can prove, and that which it cannot.

[1] The editor was a member of this 3 person panel.

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