Complainant failed to show trademark rights in mark comprising disputed domain name

In the case of Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd, a WIPO Panel denied the Complainant’s efforts to have the domain name <banskoexpresstransfer.com> transferred because the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights.

The Complainant runs an online business that allows passengers to book and pay for transfers from airports in Bulgaria and Greece to the Bulgarian ski resort of Bansko, and claimed common law trademark rights in the mark BANKSO EXPRESS. The Panel found that the Complainant failed on the first UDRP element — that the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant had rights — because the Complainant did not provide sufficient evidence that the mark BANKSO EXPRESS, a descriptive term, had acquired secondary meaning.

The Complainant did not provide information such as advertising figures to show the reach or extent of his business, the income derived from the trade that he conducted under the trademark BANSKO EXPRESS, or support from members of the public or persons involved in his trade to prove the existence of a secondary meaning associated with his trademark. Given the descriptive nature of the Complainant’s business name, the Panel found this to be a high hurdle to overcome.

In these circumstances, the Panel found that the Complainant failed to prove that the disputed domain name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights, and for that reason the Complaint failed.

Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd. WIPO Case No. D2016-0306 (April 20, 2016)


Evan_BrownAbout the Author: Evan Brown is a 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 more information about general internet law.

Evidence of rights in unregistered trademark was insufficient to meet first UDRP element

In Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, a NAF Panel denied the complaint because it found that Complainant had failed to show unregistered rights in the mark SILVER STREAK, which comprised the domain name. Complainant introduced evidence of pending applications for the mark which it claimed to have used since 1978. But the Panel found this evidence unpersuasive, especially for a mark, in the Panel’s view, “by its nature not readily susceptible to monopolization by a single trader.”

Though it did not need to (i.e. it had sufficient grounds already to deny the complaint), the Panel went on to find that Complainant had established a prima facie case that Respondent lacked rights or legitimate interests in the domain name. But on the question of bad faith, the Panel found it more likely than not that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark, and registered the name for a purpose in no way linked with Complainant.

Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, FA 1510001643236 (Nat. Arb. Forum November 23, 2015)

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago 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