In a WIPO case decided on June 22nd, 2 of 3 panelists, Alistair Payne and Frederick M. Abbott, deny the Complaint in Holy Mother World Networks v. Gregg Ostrick, found here: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0627.
The panel indicated that the domain, HMWN.COM, registered in 2002, and serving as a parked page ever since then, should not be transferred to the Complainant who claimed a common law Canadian trademark for HMWN. It stated, “Previous UDRP panels, have required sufficient relevant evidence of use or of developed goodwill and reputation in order to make a finding that the mark has become a distinctive identifier of a complainant’s goods or services. Except in the case of extremely well known marks, this evidence has usually included details of the use and dissemination of the mark in question, advertising and sales figures as appropriate, readership or listener statistics and an indication of the geographical reach of the goods or services provided under the mark. Panels have tended to set a higher bar in relation to purely descriptive or generic terms, on the basis that these terms necessarily have a lower degree of inherent distinctiveness and should be available for use by all unless there is substantial evidence of use supporting a finding of unregistered trade mark rights. ”
The panel went on to say that no evidence is provided of the readership of the Complainant’s website or of the listenership or penetration of its radio broadcasting service at the date of registration of the Disputed Domain Name, being 27 December, 2002. Neither is there any evidence as to the number or scope of donations made to support the radio station by the Canadian public, nor of any promotional activities whether within the church or within the community which might demonstrate the type of use that the Complainant made of the acronym HMWN at the relevant date.
The Panel notes that as a general rule the registration or use of a domain name for the purpose of resale and in particular, the registration of domain names or groups of letters which are generic in nature and which have no trade mark significance is not prohibited per se under the Policy. It is only when this activity is aimed at taking advantage of another’s trade mark rights in circumstances that import bad faith that the Policy may intervene. It follows that use of such a domain name for pay-per-click advertising on a domain name registrar’s parking site is not prohibited per se under the Policy.
Keep this case in mind when defending against a common law trademark.
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