In common law jurisdictions an unregistered trademark is no less protected than one registered. But, the burden of proof is different; the bar is higher. This is illustrated in DogsBite.org v. Domain Privacy, Animal Farm Foundation Inc., D2010-0861 (WIPO July 27, 2010) in which the Complainant is arguing superior rights to the descriptive phrase, DOGS BITE. Also in Surfside Animal Hospital, APC v. Mission Animal & Bird Hospital, FA1006001330046 (Nat. Arb. Forum July 28, 2010) in which the Complainant has an application pending for a trademark. In these cases secondary meaning is earned not presumed.
Common words, descriptive phrases and pending applications aside, paragraph 4(a)(i) is silent on whether the trademark right the complainant is seeking to vindicate must be registered, but panelists within a few months of the UDRP’s introduction held that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000). It is not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). However, the proof demands for registered and unregistered are significantly different. Whereas the owner of a registered mark succeeds in proving its trademark right by submitting a copy of the registration certificate – which “is prima facie evidence of [the trademark’s] validity,” NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009) and also “creates a rebuttable presumption that the mark is inherently distinctive,” Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002) – an owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark was recognized by the consuming public as an indicator of its goods or services when the domain name was registered.
There nevertheless remained following these cases a question as to whether a complainant residing in a jurisdiction that did not recognize common law trademark rights could be said to have one for UDRP jurisdiction. The uncertainty is reflected in The Staff Manager’s Issues Report on UDRP Review (August 1, 2003) which posed the following question: “Should the policy be amended with respect to protection for non-registered marks?” Those in favor of reducing or eliminating recognition of unregistered marks argued that it “would increase registrants' certainty and the predictability of decisions.” It was also noted that “National (and local) trademark laws vary with respect to the deference afforded un-registered marks, so harmonization would not be feasible or within ICANN's scope.” “These rights” (one Panel noted) “derive from national laws and do not exist divorced from such laws,” Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005).
As it turned out, however, the issue was decided by construction: unregistered marks in countries that recognize them are no less entitled to protection from abusive registration than registered marks. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 states that “Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
In DogsBite the Complainant is located in Texas and the Respondent appears to be a coalition of parties located in the United Kingdom and New York. If common law rights are invoked, there must be a foundation. The Panel turned to earlier UDRP decisions that drew guidance from U.S. Courts. “In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use,” citing Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).
Centaur Communications held that a mark acquires secondary meaning when “it [is] shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” “Thus” (the DogsBite Panel notes)
the crux of the doctrine of secondary meaning ‘is that the mark comes to identify not only the goods but the source of those goods,’ even though the relevant consuming public might not know the name of the producer. … Nonetheless, someone seeking to establish secondary meaning must show that the purchasing public associates goods designated by a particular mark with but a single--although anonymous—source [...]
“The mark” (continued the Panel) “is, at best, merely descriptive of the services offered by the Complainant.” Moreover, “[g]iven the clear lack of inherent distinctiveness, it falls to the Complainant to prove that its purported mark has acquired distinctiveness.” While, “[i]t is possible that at a full trial hearing with all the benefits of discovery and cross-examination, the Complainant might be able to establish itself as the owner of a common law right ... [o]n the record before it in this proceeding, however, the Panel is unable to conclude that the Complainant has met its burden in this case.”
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