But if the trademark relied on by the Complainant is a common law or unregistered trademark, it must be proved by evidence satisfactory to the panellist. It is not enough to assert these issues; they must be proved. A recent case re-enforces this principle and shows that Complainants sometimes fail in proving this point.
The case was Alexey Kistenev v. Jinsu Kim, decided on 2 March 2009, and concerning one of a growing number of valuable domain names formed around the expression Bit Torrent, in this case , which the Respondent had bought for USD $17,500.
The Bit Torrent process as the panellist in this case described it is:
“…software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). “
The Complainant claimed that it owned another domain name, and that this gave it trademark rights sufficient to mount its claim for.
Not so, said the Panellist.
“The Complainant argues that it owns and has used the domain name , and that there are many visitors to this site. However, the mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right. For example, the site found at “www.cars.com” appears to be extremely successful and has been in service for quite some time, but related trademark applications have been denied registration before the United States Patent and Trademark Office. The provided record and submissions in the proceeding are in this Panel’s view insufficient to establish that the Complainant has the requisite rights to the claimed TORRENTREACTOR mark. Perhaps if the provided record had contained stronger evidence of the claimed mark having acquired secondary meaning as an identifier of the Complainant’s goods and services, the outcome might have been different. The onus is ultimately on the Complainant to make its case, particularly in relation to the threshold issue of rights in a mark, and here the Complainant has not succeeded in doing so. If the Complainant is confident that he has rights in TORRENTREACTOR, the Panel suggests that he obtain a trademark registration, which would put many of the related issues to rest.”
So the claim failed because the Complainant could not prove the first of the 3 UDRP elements. Goodbye $17, 500.
The Panel went on to consider the other 2 UDRP elements. The Respondent had claimed that he had a right or legitimate interest in the domain name because he had bought it,
Not so, said the Panellist:
“The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.”
There would also have been a finding of bad faith against the Respondent.
Thus, although the Respondent failed on the second and third elements, the Complaint was denied as the Complainant had failed on the first element.