Complaint denied due to failure to prove common law trademark rights

Jason Hashkowski, a Canadian individual, has lost a complaint filed with the World Intellectual Property Organization (WIPO) in relation to the domain name '' under the Uniform Domain Name Dispute Resolution Policy (UDRP) (Case D2009-1800, February 5 2010).
Hashkowski, who is based in Manitoba, Canada, filed a complaint against Lucas Barnes, an individual residing in California, United States, seeking the transfer of the domain name into his ownership.
To obtain a favourable ruling, Hashkowski had to convince the panel that the three cumulative requirements set out in Paragraph 4(a) of the UDRP were fulfilled, namely that:
  • The domain name registered by Barnes was identical or confusingly similar to a trademark or service mark in which Hashkowski had rights;
  • Barnes had no rights or legitimate interests in respect of the domain name; and
  • The domain name had been registered and was being used in bad faith.
Hashkowski is the sole officer, director and shareholder of an online pharmacy accessible at ''. The domain name '', registered on June 25 2004, points to a website through which Hashkowski runs an e-business, trading generic medications aimed at the treatment of HIV and providing information resources on HIV and AIDS.

Barnes registered the domain name '' on August 26 2008 and directed it to a website which offered goods and services competing with Hashkowski's.

In an attempt to satisfy the first limb of the UDRP, Hashkowski contended that he had acquired a common law trademark in the expression '' through commercial use of, and marketing efforts under, the domain name ''. In support of this submission, he emphasized that he held prior rights via his registration of the domain name '' and the particular presentation of the words composing the domain name, including the hyphens separating the words. He further claimed that the domain name '' was confusingly similar to his alleged mark, noting that it differed from that mark only in the omission of hyphens.
Counter-arguing the first submission, Barnes noted that Hashkowski had not registered the phrase '' as a trademark and that such generic words did not grant common law trademark rights.
The panel highlighted that the first requirement could be satisfied by rights which were not registered, such as common law rights protected by laws on unfair competition or passing off. However, the panel stressed that a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning designating its business. The extent of use of the term has to be proportionate to the descriptive aspect of the term if it is to acquire such a secondary meaning and become distinctive. However, the panel indicated that Canadian and US case law consider that, where a term is highly descriptive (as in this case), even very extensive use may be insufficient to establish the requisite secondary meaning.
The panel considered that Hashkowski had failed to provide any evidence which demonstrated use of the term apart from use of a website found at a domain name. Hashkowski did not provide any sales figures associated with its use of the common law trademark, nor did he demonstrate any investment in advertising or marketing made using the mark. As such, the panel felt that there was no evidence that consumers associated the term 'aids drugs online' with Hashkowski or perceived it as a brand.
The panel's view was that Hashkowski had not proved that he had rights in the alleged mark. Thus, the panel found that Hashkowski had not made a showing that the domain name was similar or confusingly similar to a trademark in which he had rights.
The panel considered that, as the first limb of the UDRP had not been met, it was unnecessary to examine the other requirements to come to the conclusion that the transfer of the domain name should be denied.
The decision complies with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which state that, in order to successfully assert common law or unregistered trademark rights, a complainant must show that the name has become a distinctive identifier associated with it or its goods and services.
Furthermore, the decision is in line with previous rulings concluding that:
"[if the term for which protection is sought] is highly descriptive of the complainant's background services..., it is deemed a weak mark and, absent proof of fame or widespread recognition, it would be entitled to narrow protection at best. Generally, the scope of rights afforded to weak descriptive marks is limited to protection against identical marks" (Amsec Enterprises LC v McCall (Case D2001-0083).
This case clearly shows the need for complainants filing under the UDRP to have a good knowledge of trademark law and what the burdens of proof are to demonstrate common law trademark rights. Had the complainant in this case been the holder of a registered trademark, it is possible that he may well have fared better.

David Taylor, Lovells LLP, Paris

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