Res judicata barred subsequent UDRP proceeding

Domain Name: vrsim.com

Case: VRSim, Inc. v. John Makara, No. FA1003001314947 (Nat’l Arb. Forum April 30, 2010)

In 2008, Complainant brought a UDRP action over the same domain name at issue in this case – vrsim.com. Complainant lost that proceeding because it failed to establish any protectible trademark rights (it asserted only a registration on the Supplemental Register and did not argue it had any common law rights).

Complainant tried again in this case, but the Panel rejected the effort, holding that the action was barred under principles of res judicata.

The Panel looked to Creo Prods., Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) to see that res judicata will bar subsequent complaints unless complainant meets a high burden.

Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) guided the Panel as to the factors derived from the common law that a panel should apply in evaluating whether this burden has been met:

  • serious misconduct
  • perjured testimony
  • new credible and material evidence
  • breach of natural justice

In this case, the Panel found that Complainant presented nothing that would support entertaining a second complaint. For that reason, the Panel denied relief to Complainant.

Photo courtesy CarbonNYC under this Creative Commons license.


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for information about general internet law.

All signs point to descriptiveness in domain name dispute

Domain Name: glasgowsigns.com

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.

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