Complainants whose unregistered trademarks consist of generic words or descriptive expressions may have standing to maintain the UDRP proceeding, but they have narrow rights confined to the geographic area in which they do business. CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010) disputing over <adventurerv.com>. The Complainant’s business in located in the Eastern part of Tennessee near Gatlinburg and the Smoky Mountains National Park. The Respondent has a substantial collection of domain names incorporating “adventure” which it uses in connection with “Yahoo auto-generated pay-per-click (PPC) advertisement related” to recreational activities.
The majority agreed that the Complainant had standing. Although extensive third party use of words and expressions claimed by a complainant as its badge to the world may overrate itself in believing that the public distinguishes it from the others, nevertheless it “would not be fatal to the Complainant’s contentions if its alleged common law mark were only recognised within a certain geographical area,” Nexmedia Pte Ltd. v. Heavy Lifting LLC, et al., D2010-0059 (WIPO Mar. 9, 2010). In both CNRV and Nexmedia the Respondents adduced evidence that the words or expressions were used by a number of other companies.
The dissent, however, noted that there is “nothing to suggest that the expression has ever been claimed by Complainant as a trademark or applied to be registered by it as such although the registration of trademarks is apparently available in the State of Tennessee for a fee of $20.” He cites a decision from the Supreme Court of North Carolina in which the Court stated:
When a particular business has used words publici juris for so long or so exclusively or when it has promoted its product to such an extent that the words do not register their literal meaning on the public mind but are instantly associated with one enterprise, such words have attained a secondary meaning. That is to say, a secondary meaning exists when in addition to their literal, or dictionary meaning, words connote to the public a produce from a unique source. (Emphasis by the dissent).
The Complainant offered no evidence that the literal meanings of “recreational” combined with “rv” had become connotative in the public’s mind to identify it as the “unique source” for goods or services outside of its geographic area. “Indeed, the same majority of the Panel [that found for standing] also notes that ‘US ADVENTURE RV’ has been registered by a third party as a trademark in the United States (interestingly, without a disclaimer of the word ‘adventure’ and without the requirement of showing secondary meaning under Section 2(f) of the Lanham Act).”
U.S. law recognizes that identical or similar trademarks may co-exist if each are used in discrete geographic areas, as concurrent uses. This is evidently the case with in the RV market for the name “Adventure RV.” All three panelists concur on the issue of reverse domain name hijacking. Two of them make explicit reference to the geographic limitation of the trademark. The “Complainant must have known it could not demonstrate bad faith registration and use, given the weakness of its trademark ... and the inherent unlikeliness that Respondent could have had Complainant in mind when registering the Domain Name, given the narrow geographic scope of Complainant’s activities and the many concurrent users of the same name.”
