However famous a complainant’s trademark and the company’s ubiquity in the culture its non-brand trademarks have no advantage by association. Particularly if the trademarks are composed of dictionary words or descriptive phrases current in the language non-brand trademarks rise or fall on their own merits. “America On Line” and “AOL” are interchangeable household names; but “autoblog”? AOL LLC v. Joe DiMarco, FA0907001275978 (Nat. Arb. Forum September 9, 2009). The Complainant claimed unregistered rights to AUTOBLOG and argued that <autoblogreviews.com> infringed its rights. Its proof was, well, less than what would have been expected from a brand name law firm. A similar disjunction was found in British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, D2009-0817 (WIPO August 26, 2009). SKY is a well known trademark; the Complainant requested transfer of <skytravel.com>. Unlike AOL, the Complainant actually had U.K. and Community trademarks in SKY TRAVEL. However, the Respondent denied knowledge of the trademark, which was not implausible because one member of the Panel “has been a subscriber to Sky for many years and was similarly unaware of the Complainant’s Sky Travel channel/trade mark until he received the papers in this case.”
Ubiquity does not excuse a complainant of having to prove its trademark right. “A party claiming trademark rights in a generic or descriptive mark must show that such mark has acquired secondary meaning through use.” Secondary meaning is acquired when “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.” Evidence of secondary meaning can be direct or circumstantial:
Direct evidence ... includes: (a) direct consumer testimony; and (b) consumer surveys. Circumstantial evidence ... includes: (c) exclusivity, length, and manner of use; (d) amount and manner of advertising; (e) amount of sales and number of customers; (f) established place in the market; and (g) proof of intentional copying.
The Panel found AOL deficient measured by standards laid down by U.S. Courts and prior UDRP Panels. “[I]t is Complainant’s burden to not only plead, but also prove that its descriptive mark has acquired distinctiveness and thereby is a protectable trademark.” The never to forget mantra is “[t]here is no presumption in Complainant’s favor. Complainant must prove the status of its mark via competent evidence, not by conjecture or innuendo.”
An interesting side point advanced in favor of bad faith was that Respondent’s counsel offered to settle the dispute by selling the domain names to AOL. What appears to be the Panel’s response (although set forth in summary of the Respondent’s position) is the following: “While offers to sell a contested domain name may in certain circumstances be probative evidence of bad faith, such an offer coming from an attorney in the context of settlement negotiations is not.” A questionable proposition, but its antecedent may be found in those cases in which offers to sell are not a violation of paragraph 4(b)(i) if the respondent has a right or legitimate interest in the disputed domain name.
