Timing is a critical factor in determining whether a complainant satisfies its first and third UDRP requirements. When parties’ acquire their respective rights ultimately determines whether or not the complainant has standing to maintain an administrative proceeding and if it does whether it can prove bad faith registration. So, for example, an application to register a trademark is only proof that the complainant has filed an application which explains why an application alone is insufficient for standing. If the complainant also alleges a common law right it must demonstrate that the trademark has acquired distinctiveness associated with the complainant or its goods or services.
The Panel in Digital Ceramic Systems Limited v. Baltea SRL, D2012-1198 (WIPO July 24, 2012) explains why Complainant does not get to first base. The disputed domain name, is a descriptive phrase. Although “Complainant’s application for the registration of the trademark DIGITAL CERAMICS in 2012 does not exclude a finding of identity or confusing similarity in terms of paragraph 4(a) of the Policy” evidence for a common law rests on specific requirements; assertion of the right is insufficient . “Relevant evidence for such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” Paragraph 1.7 of the WIPO Overview 2.0 states that “the fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark.”
The consensus is that “a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.” In this case, the Panel notes that “the Complainant does not deliver any evidence supporting ‘secondary meaning’.” It only states that it
has manufactured and sold [inter alia] digital printing systems and toners under the ‘Digital Ceramics’ mark around the world, including but not limited to North America, the Far East, Europe, New Zealand and Australia, having built up an extensive customer base…; and that [it] has spent significant sums on advertising its branded products in trading magazines and at National Exhibitions such as ‘Grand Designs Live’ and has dedicated time, resource and investment to building the brand since the Complainant’s inception.
For trademarks composed of descriptive words “the burden of proof is even higher.” To be protected, an unregistered mark must also be used in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark. Stronger trademarks (unregistered when the domain name was acquired) have no problem in passing the “standing” test, but the complainant must still satisfy the third requirement that it had market recognition when the domain name was registered and the respondent registered the domain name to take advantage of the complainant and its mark. Navista S.A. v. Virtual Point Inc. dba CrossPath, It Manager, D2012-1157 (WIPO July 24, 2012).
