Recent Case Notes & Commentary

THE KNOWN AND THE COMMONLY KNOWN - A NEW TEST?

Jalmar Carvalho Araujo v. Jeff Hernandez / Black Rock Coffee Bar

FORUM: FA2005001895665 (June 19, 2020)

<br.coffee>.


One avenue to establishing that a party to a dispute has rights or legitimate interests in a domain name under contention is to prove that the party “[has] been commonly known by the domain name” (per paragraph 4(c)(ii) of the UDRP). This is no barrier for many of the internet giants whose domain names have become such iconic brands that one would have to be living under a rock not to recognise them.


Many smaller enterprises, however, do not enjoy such a luxury. Like everything else, whether the defence will be successful, all depends on the evidence.


This question arose in the dispute over whether Black Rock Coffee Bar, an American coffee chain with dozens of locations, was commonly known as “BR” and thus had a legitimate interest in the <br.coffee> domain name that it had registered under one of the new domains, “.coffee”. The Complainant was an American marketer and distributor of coffee products who had a registered trademark for BRCOFFEE. Whilst such a simple acronym as “br” may go unrecognised by the Average Joe, it may be enough that there are many who enjoy a cupful of our Average Joe within the relevant locale.


Panelist Dennis A. Foster held that it was sufficient that the Respondent had “put forth credible evidence that it could be commonly known as the disputed domain name within a certain sphere of the coffee-consuming market,” citing Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, D2003-0624(WIPO Oct. 16, 2003) ("...a Respondent need only show 'a plausible, non-infringing explanation for selecting the disputed domain name.'” The test applied here clarifies the ambiguity over whether a party to proceedings requires widespread recognition in order to be commonly known, or if it is enough to be recognised within a particular industry or geographical location. This standard arguably lowers the barrier for those seeking to establish legitimate interests in this way by allowing them to prove recognition within a limited scope. This approach makes it easier for smaller enterprises acting in good faith to protect their interests –one does not have to prove widespread recognition across land and sea to meet this standard.


Furthermore, those who are well regarded in lesser-known industries may be able to use this industry-specific profile to their advantage, even if the vast majority of households may have never heard of them.

It is yet to be seen whether this test will be applied in future cases, and how wide “a certain sphere” extends. As in the present case, the result will depend on the evidence. However, it is useful to note that the panelist used the words “believable” and “credible” as the test of whether any given evidence will carry the day, as it always is with evidence.


For now, coffee drinkers can rest easy knowing that their daily latté may be the one that keeps the pot brewing.