What’s in a Name? Trade Name Protection Under the Uniform Domain Name Dispute Resolution Policy

“What’s in a name?” Juliet asks Romeo in that famous balcony scene. ¹Shakespeare, William, Romeo and Juliet Act II, Scene 2, line 47. Business name owners may ask the same. Companies may try to protect their business names, or trade names, from cybersquatters by registering them in the popular .com, .net, and .biz top-level domains, or some of the newer top-level domains now becoming available.

The Uniform Domain Name Dispute Resolution Policy (UDRP), has long been a useful tool for those trademark owners who fall prey to cybersquatters. Adopted in 1999 by the governing body of the Internet, the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP is administered by several tribunals. ²See http://www.icann.org/en/help/dndr/udrp/providers for a list of providers. The World Intellectual Property Organization (WIPO) remains the most popular, ³Bouchoux, Deborah, Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets (4th ed. 2013) at 150. with the National Arbitration Forum (NAF) also a common venue. While monetary damages are not available under a UDRP proceeding, the process offers a quick and relatively easy alternative to a lawsuit for those who are most interested in capturing domain names that violate their trademark rights. The process does not entail any discovery or in-person hearings; a panelist or three-member panel appointed by the tribunal decides a dispute within two months of the trademark owner’s complaint. The process is trademark-owner friendly: brand owners win approximately 80 percent of UDRP cases. ⁴Id. at 151. The owners of trade names, or business names, however, may not always fare as well under the UDRP.

Section 4(a) of the UDRP ⁵The text of the UDRP is available at http://www.icann.org/en/help/dndr/udrp/policy. establishes a three-part test that a complainant must satisfy to prevail:

• (i) the domain name at issue must be “identical or confusingly similar to a trademark or service mark in which the complainant has rights”;
• (ii) the domain name registrant must not have any rights or legitimate interests in respect of the domain name; and
• (iii) the domain name must have been registered and is being used in bad faith.

It is the first prong of the test, i.e., that the domain name must be “identical or confusingly similar to a trademark or service mark in which the complainant has rights,” that may create an issue for a complainant trying to enforce rights in a company name as opposed to a trademark. Section 4(a)(i) of the Policy speaks clearly in terms of “trademark or service mark”; the language does not contemplate relief for owners of trade names. This article examines the origins of this provision, surveys WIPO and NAF decisions addressing trade names, and provides guidance for trade name owners seeking to avail themselves of the UDRP.

Protection of Trade Names under the UDRP: Historical Limitations

The formation of ICANN and subsequent adoption of the UDRP was influenced by the Dispute Settlement Policy (DSP) that ICANN’s predecessor, Network Solutions, Inc. (NSI), developed and administered. ⁶Kur, Dr. Annette, A Study by the Max-Planck-Institute for Foreign and International Patent, Copyright and Competition Law, (2002), §2. The DSP, first enacted in November 1996, provided broad relief for owners of “any intellectual property” right that was “identical or quasi-identical” to a domain name. ⁷Id. The DSP, however, was largely considered more of a problem than a solution. In fact, the phenomenon of “reverse domain hijacking” came into existence after challengers were observed using the DSP’s requirement that domain names be put on hold during the proceedings to pressure domain name owners into paying for use of the challenged domain name. ⁸Id. The need for a new system was widely recognized; ICANN and the UDRP emerged in 1999.

By the time the UDRP was adopted in 1999, cybersquatting had become a persistent problem without a readily acceptable and effective dispute resolution procedure. As reflected by the April 30, 1999 Final Report of the WIPO Internet Domain Name Process (“the 1999 Final Report”), ⁹The Management Of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process http://wipo2.wipo.int, April 30, 1999. the UDRP was enacted based upon a more narrow jurisdictional scope of protecting trademarks and service marks with the express intent of broadening its reach to trade names and other forms of intellectual property over time. ¹⁰Id. at ¶ 168.

The 1999 Final Report’s conservative approach was, at least in part, a reflection of inconsistent global protection of unregistered marks, geographical indications, and trade names. ¹¹Id. at ¶ 167. Unlike the relatively consistent global jurisprudence of trademark and service mark protection, trade name protection and geographical indication protection was “less evenly harmonized.” ¹²Id. As such, to hedge on the side of credibility and consistent protection of intellectual property rights, the UDRP was extended solely to trademarks and service marks. The 1999 Final Report expressed optimism that eventually its scope would be extended to include protection of trade names and unregistered marks, stating that once “experience has been gained with the operation of the administrative procedure and time has allowed for an assessment of its efficacy … the question of extending the notion of abusive registration to other intellectual property rights can always be re-visited.” ¹³Id. at ¶ 168.

Barely two years after the 1999 Final Report was published, WIPO did revisit the treatment of trade names under the UDRP in its September 3, 2001 Report of the Second WIPO Internet Domain Name Process (the “2001 Final Report”). ¹⁴The Recognition of Rights and the Use of Names in the Internet Domain Name System: Report of the Second WIPO Internet Domain Name Process http://wipo2.wipo.int, September 3, 2001. The 2001 Final Report observed that the “means of protection favored by most commentators to the Second WIPO Process was the extension of the UDRP … to cover trade names.” ¹⁵Id. at ¶ 312. Indeed, according to this later report, some commentators believed “that most trade names also function as trademarks, as such, they are already protectable under the UDRP.” ¹⁶Id.

The 2001 Final Report also acknowledged opposition to adding trade names to the UDRP. For example, it recounted concerns that “numerous identical trade names may legitimately co-exist in different jurisdictions,” and that several jurisdictions do not “accord protection” to “unregistered rights.” ¹⁷Id. at ¶¶ 312-316.

While recognizing the “majority opinion” that the UDRP should be extended to trade names, WIPO declined expressly to extend the UDRP to include trade name protection. ¹⁸Id. at 318. As reflected in the 2001 Final Report, this decision was based on, in part, the “extensive scope of differing national implementations” of trade name protection; that local trade names might not deserve the global protection afforded by the UDRP; and because trade name disputes were complicated by competing “interests on both sides,” whereas trademark issues under the UDRP are “straight-forward disputes, where there are rights on one side and no rights or legitimate interests on the other side.” ¹⁹Id. at ¶¶ 317-19.

Despite WIPO’s reports and the UDRP’s clear limiting language, administrative panels have sometimes relied on “common law trademark or sufficient rights to ground an action for passing off” to extend the UDRP to other types of rights. ²⁰See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000) (finding complainant had common law trademark rights in her personal name). Indeed, panels have expressly cited “common law rights” in a mark that has been used “as a trade name” as the basis for ordering the transfer of a domain name under the UDRP. ²¹See, e.g., Cedar Trade Assoc., Inc. v. Gregg Ricks, NAF Claim No. FA0002000093633 (Feb. 24, 2000) (Complainant “has common law rights in the mark ’BuyPC.com’ and has used it as a trade name for the resale of personal computers and peripherals.”).

Now, fifteen years after the enactment of the UDRP and with substantial panel decisions applying the UDRP to common law trademark rights, the wealth of UDRP decisions provides several guiding principles for companies seeking to rely upon their trade names in pursuing cybersquatters.

UDRP Treatment of Trade Names: The Current State

A complainant has relied upon its trade name rights per se in relatively few UDRP disputes. ²²Cases involving unregistered, common law trademarks are far more common. Generally, to prevail in a case involving a common law mark, the trademark owner must show secondary meaning. See MaxID Corp. v. Sam Koulusi/Sam, NAF Claim No. 1421132 (Feb. 24, 2012) (recognizing that common law rights may satisfy Paragraph 4(a)(i) of the UDRP, and collecting cases). Searches in both the WIPO and NAF databases specific to trade names show that these decisions are a mixed bag. They are proportionally far less favorable to complainants than cases in which the complainants rely upon their registered trademarks. Specifically, according to a search in the trade name section of the WIPO website as of the writing of this article, in only 50% of the decisions specifically involving trade names, whether registered or unregistered, did the panels transfer all of the names at issue to the complainant. Twelve cases out of 24 granted transfers, 11 denied transfers, and one was a split decision. ²³See
http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11240 (cases involving unregistered trade names; http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11230 (cases involving registered trade names). These may not encompass the full list of WIPO decisions involving trade names, but represent only search results returned by the indices. Likewise, in only five out of ten NAF decisions involving trade names did NAF panels order transfers. In four out of ten NAF decisions, the panels denied transfers. Again, one decision was split. ²⁴See http://domains.adrforum.com/decision.aspx. This represents the results of a search for “effect of trade names” in cases involving a discussion of confusing similarity. Other NAF decisions, such as the Diversified Marketing case discussed in the text, also address this issue; thus, the search results are only a partial indicator.

Prior UDRP panels have not hesitated to interpret Section 4(a)(i) of the Policy, i.e., the section requiring that the complainant show rights in a trademark or service mark, narrowly. For example, the WIPO panel in University of Konstanz v. uni-konstanz.com
²⁵WIPO Case No. D2001-0744 (Oct. 18, 2001). refused to transfer the domain name “uni-konstanz.com,” which incorporated the name of Complainant’s famous university, even when the Respondent defaulted. The panelist felt constrained to deny the university’s claim, stating: “According to paragraph 4(a)(i) of the Policy, the Complainant must prove a confusing similarity of the Domain Name to a trademark or service mark. It is the clear language of the present UDRP Policy that this administrative proceeding does apply to disputes involving such trademarks or service marks only. They represent the lowest internationally accepted standards in decisions concerning domain name disputes.” (Emphasis in original.) See also
The Mills LP v. Michael G. Miller, WIPO Case No. D2000-1577 (March 8, 2001) (denying claim because complainant had no service mark use of the mark at issue at the time that defendant registered its domain names).

This reasoning has applied even where the Complainant has registered its business name as a trade name — but not a trademark. See, e.g., Enmersan Granit Mermerve Inaat Taahhut Sanayive Ticaret A.S. v. Ibrahim Sahin, WIPO Case No. D2004-0439 (Aug. 13, 2004) (denying complaint based on rights in registered trade name). The Enmersan panel stated:

According to the explicit wording of paragraph 4(a) of the Policy and paragraphs 3(viii) and 3 (ix) of the Rules, the Complainant should have rights in a trademark to which the Domain Name is identical or confusingly similar… . the Policy and Rules do not leave room for extending trademarks in paragraph 4(a) of the Policy and paragraphs 3(viii) and 3 (ix) of the Rules to include trade names (which are not also used as non registered trademarks). Therefore, the Panel finds that the Policy does not apply to domain names that allegedly infringe trade names or company names.

Panelists have instead referred complainants with registered company names to “national judicial systems” for relief. ²⁶01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig, WIPO Case No. D2004-0541 (Sept. 10, 2004).

NAF decisions have also reflected this reasoning. In The Woodlands Dermatology Assoc., P.A. v. Perri,
²⁷FA 1110001410742 (Nov. 28, 2011). the Panel refused to transfer Respondent’s domain name, thewoodlandsdermatology.com, to Complainant. The Panel found “[t]he use of the trade name ‘The Woodlands Dermatology Associates, P.A.’ by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy” despite Complainant’s argument that it had established trade name rights under Texas law.

To the same effect, in another NAF decision, Diversified Mortgage, ²⁸Diversified Mortgage, Inc. v. World Financial Partners a/k/a Bill Trudelle, NAF Claim No. FA0208000118308 (Oct. 30, 2002). the Panel declined to transfer “diversifiedmortgage.com” to the Complainant although the Complainant previously owned the domain name and let it lapse, and the Respondent’s good faith was “questionable.” The Panel found “one fatal flaw … the fact that the domain name and the business name is not a registered or even a common law trademark, and is in fact so descriptive that it is unlikely anyone would be able to obtain a trademark registration on these two words standing alone.”

Likewise, the three-member panel in BeneFACT Consulting Group v. Rarenames, Inc./RN WebReg found that the Complainant, which had simply applied to register a corporate name as a trademark — without showing that it has been registered as such — did not establish trademark use. ²⁹NAF Claim No. FA1412205 (Nov. 29, 2011) (denying claim).

Where panels do rule in a complainant’s favor, it is generally because the complainant’s jurisdiction recognizes common law trademarks and the complainant has demonstrated such rights. The panel in dB Special Instruments Inc. v. AIM Techs., NAF Claim No. 1397026 (Sept. 6, 2011) put it this way: “[I]t is well established under numerous UDRP decisions that if the law of the relevant jurisdiction recognizes rights in unregistered trademarks, then such rights come within the ambit of Paragraph 4(a)(i)” (applying Canadian law).

Decisions finding that a company name has acquired common law trademark rights cite factors such as longstanding use of the name, widespread public recognition of the name, and media attention for the company. See, e.g., Sintef v. Sintef.com
³⁰WIPO Case No. D2001-0507 (June 9, 2001) (transferring domain names that were confusingly similar to complainant’s unregistered trade name SINTEF because “SINTEF ha[d] been used to identify the Complainant’s research services for more than 50 years” and the trademark law of complainant’s jurisdiction provided that such use of a trade name gave rise to common law trademark rights). More recently, in Nu Mark LLC v. Bui, Long, ³¹WIPO Case No. D2013-1785 (Dec. 22, 2013) the panel concluded that the “Nu Mark” trade name had become a distinctive identifier of Nu Mark’s products such that the respondent’s registration of several “numark” domain names were confusingly similar to Nu Mark’s rights within the meaning of the Policy. The Nu Mark Panel explained:

Common law rights may give rise to trademark rights under paragraph 4(a)(i) of the Policy, provided the complainant has demonstrated that the indicator in question “has become a distinctive identifier associated with the complainant or its goods or services”… . Relevant evidence is likely to include information on length of use, sales data, nature and extent of advertising, media recognition and other evidence tending to show consumer recognition.

The Panel cited Nu Mark’s use of its name on its website “www.nu-mark.com,” the use of the trade name “Nu Mark” to denote Nu Mark in news sources, and the portfolio of “numark” domain names owned by Nu Mark’s corporate group.

A similar analysis may apply if the complainant uses his or her personal name as a common law trademark. For instance, in Yasmin Abadian v. Thomas Gibson, ³²NAF Claim No. 1522396 (Nov. 4, 2013). But see Thomas Pritzker, The Pritzker Organization, LLC v. Richard Brown, Case No. D2009-0911 (Oct. 12, 2009), in which a WIPO panel found that a personal name must qualify as a common law trademark or registered trademark to be protected under the UDRP. the complainant, a real estate agent, prevailed upon showing that she had used her name in connection with real estate services and had hundreds of millions of dollars in sales.

Guidance for Trade Name Complainants

For those trade name complainants located in the United States, Canada, or other jurisdictions that treat trade name rights on a par with trademark rights, analogizing to trademark law may prove effective in establishing confusing similarity sufficient to satisfy the UDRP. It is a well-established principle under U.S. intellectual property law, for example, that company or trade names may give rise to trademark rights affording the owner of the name the same protections as any other trademark in certain instances. See, e.g., Attrezzi, LLC v. Maytag Corp. (stating “[a] trade name is safeguarded by the Lanham Act” when “consumers associate it with a particular producer or source.”) (internal quotation marks and citations omitted) ³³436 F.3d 32, 37-38 (1st Cir. 2006).; American Ass’n of Naturopathic Physicians v. American Ass’n of Naturopathic Physicians (stating “[h]ere plaintiff submitted uncontroverted facts in support of summary judgment that prove trade name infringement”). ³⁴15 F.3d 1082, 1082 (9th Cir. 1994).

Merely citing continuous use of an unregistered mark may not be sufficient. As one NAF panel explained: “Previous panels have differed in opinion on whether a complainant’s assertion of continuous use is sufficient to establish secondary meaning indicating common law rights.” ³⁵MSC-Headhunting v. Domain Privacy Service BO Registrant, NAF Claim No. 1529622 (Jan. 20, 2014).

A complainant should also avoid describing its name as a “trade name” or simply providing evidence showing the associations in which it is listed by its name. ³⁶See
Sealite Pty Ltd. v. Carmanah Technologies, Inc., WIPO Case No. D2003-0277 (Nov. 6, 2003). Rather, a complainant should take care to characterize its mark as a common law trademark. ³⁷See, e.g., MaxID Corp. v. Sam Koulusi/Sam, NAF Claim No. 1421132 (Feb. 24, 2012) (denying claim, and stating “[p]anel also notes that Complainant’s Annexes largely portray MAXID as a trade name, rather than as trademarks or service marks, which are properly used as adjectives to describe a product or service”); Tom’s Outdoor Living v. Domain Privacy Services, NAF Claim No. 1481773 (March 6, 2013) (“It is undisputed that Complainant was incorporated in 2005 under the name Tom’s Lawn, LLC and that it filed in the office of the Oklahoma Secretary of State a trade name report to do business under the trade name Tom’s Outdoor Living in 2012. However, Complainant does not claim to own a trademark and has provided no evidence that it has registered the name Tom’s Outdoor Living as a trademark or service mark.”) (emphasis added); Manchester Airport and Club Ltd., WIPO Case No. D2000-0638 (Aug. 22, 2000) (“One of the members of the Panel is of the view that the Complainant has failed to allege that it has a common law trademark, much less argue the point”; complaint denied).

WIPO and NAF decisions provide useful guidance for establishing common law trademark rights when a trade name or unregistered mark is at issue. Panelists have cited the following as persuasive:

• Samples showing use of a trade name in promotions ³⁸dB Special Instruments Inc. v. Aim Technologies, supra;

• Sales figures in dollar values ³⁹Id.; Yasmin Abadian v. Thomas Gibson, supra.;

• Registration to do business in a U.S. state and 13 years’ use of the name, so that it has become distinctive ⁴⁰ Tri-County Aquatics, Inc. v. Jason Blake/The Pond Guy, Inc., NAF Claim No. 1509416 (Oct. 1, 2013).;

• Registration of other domain names incorporating the name as a second-level domain ⁴¹MSC-Headhunting v. Domain Privacy Service BO Registrant, supra.;

• Evidence showing the nature and extent of advertising using the name ⁴²Tom’s Outdoor Living v. Domain Privacy Services, supra.;

• Evidence of media recognition of the name ⁴³ Id.; Nu Mark LLC v. Bui, Long, supra.;

• Consumer surveys ⁴⁴Tom’s Outdoor Living v. Domain Privacy Services, supra.;

• Use of the claimed common law mark on the company’s website ⁴⁵ See Endeavors Tech., Inc. v. Dick In Jar, WIPO Case No. D2001-0770 (July 29, 2001) (Complainant’s use of mark as second-level domain on website offering its proprietary software constituted trademark use; transfer ordered). ; and

• Search engine results showing websites linked to the complainant’s site ⁴⁶See
  James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391 (July 5, 2004)..

To the trained eye, this is the same sort of evidence that may suffice to show that a common law mark is associated with goods and services from a single source, i.e., that it has acquired secondary meaning. ⁴⁷See, e.g., Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of New Jersey, 894 F. Supp.2d 288, 315 (S.D.N.Y. 2012).

Undoubtedly, a complainant seeking to show common law trademark rights will not have all of this evidence at its disposal. Yet, the more evidence that a complainant has of the sort described above, the better its chances of prevailing in a proceeding based upon common law rights in a trade name under the UDRP.

Conclusion

A threshold question for a complainant relying upon its trade name in a UDRP case will be whether its jurisdiction recognizes common law trademarks. Assuming that is the case, marshalling the evidence demonstrating that its trade name has become a common law mark through the complainant’s own efforts and public recognition of the name is a key to succeeding in a domain name dispute.