The standards for common law trademarks in UDRP cases? — What are

An NAF panelist is very generous is accepting common law trademark rights.

A National Arbitration Forum panelist recently awarded the domain name YouAreOK.com to T & P Holding Firm, LLC. This firm owns a number of hair salons and boutiques in Nashville under the name Local Honey. Its website is LHNashville.com.

The domain name owner, Ancient Holdings, LLC, has lost a handful of UDRP cases over the years. It also didn’t respond to the dispute. These factors certainly weighed against the registrant.

But I’m concerned that this case got past the first prong of UDRP: that the domain name is identical or confusingly similar to a mark in which the complainant has rights.

A complainant can show that it has registered rights in a mark or that it has common law rights in the mark. The UDRP itself does not spell out how common law rights can be proven, but the WIPO Jurisprudential Overview 3.0 has a good overview of standard practice:

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such purchased distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of purchased distinctiveness ought to be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of purchased distinctiveness/secondary meaning…

The YouAreOK.com case was filed at National Arbitration Forum, not WIPO. But panelists often hear cases for both of these forums and it’s notable to have consistency across them.

T & P Holding Firm filed a trademark with the US Patent and Trademark Office in March of this year, following filing the UDRP. The trademark claims first use in 2010. For the UDRP, T & P relied on common law trademark rights.

Panelist John Upchurch found T & P’s evidence to be compelling:

Complainant provides screenshots of its website and social media posts indicating it uses the mark. See Compl. Ex. 2. Complainant does not provide other evidence to support its claim of common law rights. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights per Policy 4(a)(i) by showing the YOU ARE OK mark has taken on a secondary meaning in association with Complainant’s business.

I don’t know what exhibits T & P provided to the panel, but it’s probably very similar to the specimens submitted to the USPTO, which you can see here (2MB PDF).

These images use the term You Are OK in very recent social media posts and a screen capture from LHNashville.com.  You’ll note that none of the uses in the specimens use a TM symbol.

I did a Google site search on LHNashville.com today for “Your are OK”. Two items came up.

One is the site’s blog, which has a title tag that states “You are OK.” The blog contains profiles of people with “Name is OK” as the title for each one. The other is for the home page that was submitted to the USPTO. I can’t find the text that was submitted to the USPTO on Local Honey’s home page when I visit it, though.

A firm doesn’t have to use a trademark on its website to have a trademark. Still, it would need to provide good evidence to the panel of its use of the trademark and when it is conceivable that the holder gained common law rights to the mark.

That brings up the issue of dates when it comes to registration in bad faith. T & P claims it began using the mark in 2010.

I performed the site search for dates prior to 2015. Google returned zero results.

In fact, the domain name LHNashville.com wasn’t registered until 2014. T & P Holding firm wasn’t organized in Tennessee until 2013. (Oddly, its trademark application states it’s organized in the US Virgin Islands.) Still, I found evidence that the firm might have been operating its salons in 2010 based on an old cancellation policy document.

The domain name itself was registered in 2009. The current registrant didn’t acquire it until later, but the case doesn’t address the fact that the claimed rights post-date the registration of the domain. So the case also ought to have addressed this timeline in the bad faith portion.

I’ve seen many stronger common law trademark claims denied in UDRPs for not providing enough evidence, such as proof of marketing expenditures related to the mark.

Even if common law rights were proven, it seems unlikely that the domain registrant could have been aware of them when it registered the domain.

Consistency is notable in UDRP. I do not think this case was consistent with general standards for showing common law rights.