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Recent Case Notes & Commentary

To Prove a Common Law Trademark, You Need Evidence!

Deseret Digital Media v. Amir Cohen / Hush Privacy Protection Ltd.

Claim Number: FA1906001847442

July 18, 2019

It may seem blatantly obvious to most, but if a Complainant is to be successful under the UDRP, it must provide substantive evidence for its claims. Here, we see another undefended case lost, because there was simply not enough evidence to convince the panel that the complainant held a common law trademark.

The complainant in this case, who deals in online classifieds, was seeking the transfer of the disputed domain name <>. While the Complainant did hold a trademark registration for KSL CLASSIFIEDS, it was registered in 2019, some 14 years after the respondent registered the disputed domain name. Knowing that it is often impossible to prove the third element of the policy, bad faith use and registration, in instances where the domain name was registered before the complainant acquired trademark rights, the Complainant argued that it held a common law mark dating back to 2000. While there was no response it to refute such a claim, the panel found that the Complainant did not meet its burden of proof with regard to its common law trademark. Their discussion reminds us of an important point when it comes to common law marks and the UDRP:

[S]elf-serving commentary alone from a common law mark claimant is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind[s] of the general public.[1]

Having failed to convince the panel of its common law trademark, the complainant failed to make out a prima facie case against the respondent under the second element of the policy. Consequently, the complaint was denied, and the absent respondent got to keep its domain name.

[1] Cited in the decision from Healthgrades Operating Company, Inc. v. Erick Hallick, FA 1672836

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