By: www.DefendMyDomain.com/blog
In the recent domain name decision of National Association of Competitive Soccer Clubs v. Bruce Binler (WIPO, D2009-0957, September 7, 2009), a single member panel was faced with a dispute over the domain www.usclubsoccer.net. Complainant is a non-for profit organization responsible for putting together soccer clubs, leagues and tournaments across the U.S. Complainant maintains a web site at www.usclubsoccer.org and has a servicemark registration for US CLUB SOCCER. Respondent registered the domain in 2007 and failed to provide a response to the Complaint.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) respondent’s domain name has been registered and is being used in bad faith.
Some of the facts presented included that Respondent used the domain in connection with promoting soccer events sanctioned by Complainant in 2006 and 2007.These facts may have been relevant in the Panel’s findings, however, the Panel did not make it passed the first element.
The Panel found that Complainant did not establish sufficient rights in the mark US CLUB SOCCER. The Panel noted that Complainant’s citation to a federal registration failed to inform the Panel that it was actually on the Supplemental Register.
Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.
Although Complainant has recently applied again to the USPTO for the same mark seeking registration on the Principal Register. Therefore, the Panel noted that Complainant must show that it had sufficient common law rights. The Panel was concerned that the USPTO rejected the original application for being primarily geographically descriptive with terms that are generic or merely descriptive. The Panel took some liberties in doing some market reserach and made the following observations:
Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together. Those searches returned many millions of “hits”. While Complainant’s organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.
In light of these findings the Panel found as follows:
The rejection by the USPTO of Complainant’s application for registration on the Principal Register and Complainant’s conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description).
The Panel found that Complainant failed to establish the first element and thus did not address the other two elements. The Panel ordered the request for transfer be DENIED.
