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Recent Case Notes & Commentary

Unregistered Trademark – Evidence

An unregistered trademark is one of those issues where it is important to submit cogent evidence. It is also important to ensure that the evidence submitted relates to the correct and relevant time. It is not enough simply to submit evidence showing in a general way that the Complainant has or had an unregistered or common law trademark; if the Complainant needs the evidence to prove that the Respondent registered the domain name in bad faith, the evidence must relate to that period of time. That point arises in many cases and the mistake is sometimes made of not tendering evidence to show, for example, secondary meaning in a generic phrase at the time the domain name was registered. The present case is another example of the same point, but this time relating to rights and legitimate interests.

The Respondent had registered the domain names <>, <> and <> in 2001. The Complainant made several applications for trademarks for PNEUS ONLINE between 2003 and 2008, but it had no registered trademark prior to 2001. The relevance of this to rights and legitimate interests is shown from the following extract from the decision.

“Respondent has argued that it has a legitimate interest because the disputed domain names consist of purely descriptive terms, and because they are part of Respondent’s marketing strategy to register and use generic second level domains in the language of various countries and to use these domains for tire selling.”

But for the Respondent to show that its proposed use of the domain name was bona fide and that it had established a right or legitimate interest in the domain name under paragraph 4 (c) (i) of the Policy by means of “demonstrable preparations”, depended on whether it should be taken to have known of a trademark for PNEUS ONLINE owned by the Complainant at the time of the registration of the domain name. The Complainant did not have a registered trademark at that time, so the Respondent could not have known of that one. But could it have known of an unregistered trademark of the Complainant that existed at that time? That would depend on whether the Complainant had established a common law trademark because it was able to show that the expression “Pneus Online” had acquired a secondary meaning.

The Complainant had sought to establish this by evidence of sales figures and advertising expenditure, but that evidence related only to the time after the domain name had been registered in 2001.

On the evidence, the Complainant had therefore not shown that it had common law rights or unregistered trademark rights in the sign “Pneus Online” at the time of registration of the disputed domain names. The Panel therefore concluded that:

“It is therefore difficult for the Panel to conclude that Respondent should have been aware of Complainant’s rights on registration, let alone that Respondent’s bona fides at that time were compromised by an intent to target such rights.Therefore, the Panel finds the more probable conclusion on this record to be that Respondent’s preparations to use the disputed domain names in relation to the offering of goods and services were bona fide.”

On the issue of bad faith, the result was inevitable.

As the Panel said:

“The Panel is satisfied that the more probable explanation on the present record is that Respondent registered the disputed domain names for their descriptive nature and, at that time, was not aware of Complainant’s intention to use “Pneus Online” as a mark (or trade name), or of a possibly secondary meaning of “Pneus Online”.

The Panel therefore finds that Complainant has not demonstrated that Respondent registered the disputed domain names in bad faith.”

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