No bad faith where registration of domain name predated Complainant’s trademark rights

The Panel denied the Complainant’s efforts to have the domain name <dafea.com> transferred, finding no evidence that the Respondent registered or used the disputed domain name in bad faith.

The Complainant began providing services in the oil and gas industry in 2014. The Respondent registered the disputed domain name in 2011. The web page associated with the disputed domain name contained many sponsored links, but none of them referred to the Complainant or its business. The parties’ were not successful in negotiating a purchase and transfer of the disputed domain.

The Panel found in the Respondent’s favor, finding there was no evidence that the Complainant used its mark as a source identifier for goods or services – i.e., as a trademark – any time before the Respondent registered the disputed domain name. The Complainant admitted that it did not form its business until after the Respondent registered the disputed domain name. There was evidence that the Complainant’s managing director (Mr. Dafea) had given some speeches in 2012 or later, but that likewise was after the Respondent had registered the disputed domain name. Moreover, those presentations identified Mr. Dafea as a representative of some other company, not of the Complainant.

Dafea Limited v. Owner/Operator of Dafea.com / Ali Alsayyar, WIPO Case No. D2016-0158

Evan_BrownAbout the Author: Chicago technology and intellectual property attorney Evan Brown helps 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 more information about general internet law.

Complainant failed to demonstrate unregistered trademark rights in UDRP action brought over blog name

In the case of VibrAlign, Inc. v. Armando Martinez / Ludeca, a 3-member Panel denied the complaint where Complainant failed to demonstrate any trademark rights in the expression “thealignmentblog.com”. Because the Complainant failed on this first element of the UDRP, the Panel did not consider the remaining two elements, i.e. rights/legitimate interests or bad faith use and registration.

The Panel found that the two words “alignment” and “blog” together make a description of a service. The only evidence Complainant submitted was a screenshot of a page showing first use of the expression back in 2009. The Panel found the evidence insufficient to show any secondary meaning or trademark rights in the expression owned by Complainant.

VibrAlign, Inc. v. Armando Martinez / Ludeca, FA1510001640543 (Nat’l Arb. Forum November 13, 2015).

About the Author: Chicago technology and intellectual property attorney Evan Brown helps 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 more 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.