Recent Case Notes & Commentary

HOW NOT TO PROVE TRADEMARK RIGHTS

KMD Partners, LLC v. Domain Admin / GuardPrivacy.org FORUM Claim Number: FA1908001856307 September 9, 2019


How to go about not proving a registered trademark

US company KMD Partners recently brought a claim against Hong Kong company Domain Admin, for the domain name <creditninjaeasy.com>.


Domain Admin did not respond, which is to say that none of the evidence nor any of the claims brought forward by KMD Partners were contested by the Respondent. Whilst this is an advantage for any Complainant, KMD Partners still failed to show that they had any rights to the relevant trademark it relied on, CREDITNINJA.


When a Respondent ‘defaults’ in this way, a panel can accept any reasonable assertion by a Complainant as long as it is not simply a conclusory allegation – there must be at least some evidence to support the assertion. This is where KMD Partners went wrong.


The first limb of the UDRP Rules requires complainants to prove that they have rights to a name which is identical or confusingly similar to the domain name. In this matter, the question of confusing similarity between the trademark CREDITNINJA and <creditninjaeasy.com> was not really addressed because the ‘rights to the name’ threshold was never crossed. Even though KMD Partners claimed both registered rights to the CREDIT NINJA trademark as well as common law rights there simply wasn’t enough evidence for either.


KMD Partners appears to have lodged an application for trademark registration with the USPO, but didn’t produce any evidence of the registration being granted and relevantly, the panel noted that “pending trademark applications do not establish rights in a mark”.


What about common law rights?

KMD Partners may have suspected that its attempt to claim registered rights was futile and so it attempted to claim common law rights to the trademark as well. The company has been operating in the credit lending industry since last year under the CREDITNINJA trademark. As was noted in Oculus VR, LLC v. Ivan Smirnov, FA 1625898 it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”. But how does one make it out?


Basically, the Complainant has to show that by its use of the trademark, it has taken on a secondary meaning associated with their brand and activities specifically, in other words a secondary meaning that CREDIT NINJA means the goods and services of KMD. Normally this would be proven by evidencing sales under that name, brand recognition in the media, community good will, and advertising efforts etc., which KMD Partners was unable to do sufficiently – including only screenshots of their website as evidence. (see the WIPO Jurisprudential Overview 3.0 for details).


For a young brand that hasn’t yet had the opportunity to generate vast sales and brand recognition, establishing common law rights can be difficult. KMD Partners may have been legitimately on course to establishing common law rights but simply had not been trading under the CREDITNINJA name for long enough. To an extent, a company’s chances of establishing common law rights are a function of time; infant companies should be alert to this challenge and keep their evidence from the early days as they go along.


See also our case note on

Vacasol GmbH v.O.M

WIPO Case DSE2019-0024, It is also on the issue of lack of evidence of a trademark, which underlines the importance of this providing this evidence.