All signs point to descriptiveness in domain name dispute

Domain Name:

Element(s) Not Met: 4(a)(i)

Case: Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, No. D2010-0409 (WIPO May 4, 2010)

Complainant and Respondent are both in the commercial signage business around Glasgow, Scotland. Respondent began using the Domain Name for its business in March 2006. The parties disputed when Complainant began using the term GLASGOW SIGNS.

That dispute as to facts, however, was immaterial to the Panel’s decision in the overall domain name dispute.

The Panel noted that under paragraph 4(a)(i) of the UDRP, a complainant may demonstrate rights in a mark which are not registered. But a person can only obtain rights in descriptive terms when it is shown through evidence that the term has become distinctive by acquiring a secondary meaning. Even very extensive use may not be enough to bring a highly descriptive term into the realm of protectibility.

In this case, the Panel found that Complaint failed because Complainant had put forward none of the following:

  • specific evidence as to the extent of its use of the descriptive term
  • a statement as to the value of sales made under the term
  • a statement of expenditures made on advertising or promotion of the term
  • disclosure of the nature of any advertising or promotin
  • evidence showing customers or suppliers had come to perceive the term as a brand

For these reasons, the Panel found that Complainant “fail[ed] at first base,” so there was no need to consider any of the remaining arguments under the UDRP.

Photo courtesy Flickr user rightee under this Creative Commons license.