In a recent decision by a National Arbitration Forum (NAF) Panel, Complainant, the law firm of Gable & Gotwals, Inc., found out the hard way that trademark rights in their own name is not as easy as simply saying that you have those rights. In the case of Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson, FA 1212305 (Nat. Arb. Forum, Sept. 18, 2008) the Panel heard a dispute over gablegotwals.com. Respondent did not provide file any response, which generally favors a finding for the Complainant an an order transferring the accused domain. However, in this case, the Panel was not so easily convinced by the Complainant’s evidence.

The Panel only focused on the first element, namely whether the Complainant has established rights to a mark and, if so, whether the accused domain is identical or confusingly similar to the mark. The Complainant did not have a trademark registration for GABLEGOTWALS, but alleged common law rights based on continuous use in commerce since January 1, 2006. Despite the assertions that the mark was used in the law firm name on letterhead and marketing materials, the Panel found that no evidence was submitted to support those statements. The panel noted:

Other than Complainant’s assertions, there is no other evidence indicating that the GABLEGOTWALS mark has acquired secondary meaning or source identity in commerce, and use alone is not sufficient to prove this assertion.  On this basis, the Panel concludes that Complainant has failed to establish any trademark or common law rights in the GABLEGOTWALS mark, and has therefore failed to satisfy this element of the Policy.

Finding that the Complainant did not satisfy the requirements of Policy ¶ 4(a)(i), the Panel did not analyze the other factors and DENIED Complainant’s request for transfer.