Common law rights may be established based on press release

International
In Reveille LLC v Lazier (WIPO Case D2011-0601, May 15 2011), the producers of the US television programme The Biggest Loser were successful in a complaint brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the registrant of 'thebiggestloser.com'.

The Biggest Loser is a television programme broadcast in the United States by the NBC television network. The programme was first broadcast on October 19 2004. However, the producers of the programme, and the complainant in the proceeding, Reveille LLC, had publicly announced the launch of the programme months earlier, on May 25 2004. That announcement had generated substantial publicity for the programme by May 26 2004, as the announcement was widely circulated in major newspapers, television news programmes and over the internet.

That same day, May 26 2004, the respondent, Theodore Lazier, registered the domain name 'thebiggestloser.com'. At various times between 2004 and release of the decision in 2011, the domain name resolved to websites identifying the programme and certain of the complainant’s ancillary services. At the time of the dispute, the domain name resolved to a website which provided information about The Biggest Loser and provided links to content about the programme.

In order to succeed in a dispute under the UDRP, a complainant must prove that:
  • the domain name at issue is identical, or confusingly similar, to a trademark in which the complainant has rights;
  • the registrant has no rights or legitimate interest in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.
A single panellist under the UDRP had no difficulty in concluding that the domain name was confusingly similar to the mark THE BIGGEST LOSER, which was first registered by the complainant in 2007. The question about when the complainant’s trademark rights arose were deferred to be addressed when considering bad faith. 

The panellist also had no trouble concluding that Lazier had no legitimate interest in the domain name, noting that he had used the domain name in connection with a website that conveyed the appearance of sponsorship, affiliation with, or endorsement by, the complainant.

Regarding bad faith, the panellist noted the general proposition that a complainant must have established rights in a trademark prior to the registration by the respondent of a domain name in order to prove that the registration was undertaken in bad faith. This would appear to raise a significant problem for the complainant in this case, since, as of the date of registration of the domain name, the complainant had not used THE BIGGEST LOSER in association with any goods or services, having merely made a public announcement of the programme a day earlier. 

The other issue facing the complainant was the descriptive or suggestive nature of THE BIGGEST LOSER. On that point, the panel concluded that it was not descriptive of a television reality show, but rather suggestive.

Regarding use, although the complainant had substantial evidence of use of the mark THE BIGGEST LOSER in the years after the announcement, the only evidence of use of the trademark as of the date of the registration of the domain name was the press announcement, and subsequent media publicity. Nonetheless, the panel concluded that, upon using THE BIGGEST LOSER “in national commerce” on May 25 2004, the complainant had established common law trademark rights. 

Clearly, the panel was influenced by the respondent’s decision to register the domain name the day after the announcement of the television programme (strongly suggesting that the respondent registered it in reaction to the announcement), as well as the manner in which the domain name was used subsequently. The inference of some kind of bad faith (or at least motivation to profit) on the part of the respondent appeared strong. However, the question of whether a press release constitutes use sufficient to establish common law trademark rights is interesting. There are certainly situations where, given the nature of the product launch (eg, if supported by a substantial advertising campaign and tremendous press coverage), it could generate common law rights.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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