A complainant does not succeed on the strength of a valid trademark registration. It has to assemble a record. The Panel in Transport Exchange Group Limited v. Tiriazo Technology Limited, D2009-0541 (WIPO June 15, 2009) (<courierexchange.com>) noted that “[o]ne of the problems with this dispute is that the factual background is far from clear.” Why? Because “[v]ery few of the factual assertions in either the Complaint or the Response are supported by any documentation.” Since the onus is on the complainant to prove its case, any deficiency in the record undercuts its position.
It is evident from the record that the Respondent was not unaware of the Complainant. Indeed, the Respondent “stressed the lengths to which it has gone to obviate any risk of confusion.” However, the phrase “courier exchange” is not exactly on the suggestive, arbitrary or fanciful end of the scale and the Complaint did nothing to help the Panel:
The Complaint fails to establish with any degree of certainty the extent of the Complainant’s business under and by reference to the name, “Courier Express”. The Panel has been given no sales figures, no advertising figures and no examples of any business literature or press cuttings. For all the Panel knows, the business may have been miniscule for 6 or 7 years and only developed into a substantial business over the last two or three years. If, as the Respondent claims, it acquired the Domain Name several years ago, it may have been reasonable for the Respondent to have concluded that at that stage, while there was a risk of confusion between the Domain Name and the Complainant’s domain name, <courierexchange.co.uk>, this was purely down to the descriptiveness of the two names, not to any secondary meaning acquired by the Complainant through long and extensive use.
By failing to offer the kind of evidence necessary to establish distinctiveness from the time it commenced its commercial operation under a trademark registered only recently acquired was insufficient. Worse, the Complainant damaged its credibility by failing to disclose the full exchange of correspondence relating to an offer for the domain name:
A factor which has made the Panel less willing to make assumptions in favour of the Complainant was the Complainant’s failure to put before the Panel the full correspondence between the parties, choosing instead to rely upon the final letter in the correspondence, being a demand of £25,000 for the Domain Name made on behalf of the Respondent. If the Respondent is correct, the Complaint fails to make clear that this demand followed an approach from the Complainant. Whether or not this was the case and whether or not it is of any relevance is impossible for the Panel to assess without sight of the full correspondence.
Of course, neither did the Respondent divulge the full correspondence, but the Complainant made no attempt to deny that the “demand followed an approach from the Complainant” and the Complainant's silence was an affirmation that the allegation was true.
