In the recent NAF case of The Gourmet Depot v. DI S.A. / Administration Dom, found here:
http://domains.adrforum.com/domains/decisions/1378760.htm, Panelists Jonas Gulliksson, John J. Upchurch and David E. Sorkin, found that “Complainant has, as grounds for the complaint, stated that it has used the mark THE GOURMET DEPOT since 1996 in connection with its services. To establish common law rights in a mark requires that Complainant shows that its mark has acquired secondary meaning. In other words, Complainant must, by building a prima facie case, establish that the public associates the asserted mark with its goods or services.”
“Complainant has as evidence of established common law rights, submitted invoices for advertising material from 1999, 2004, 2007 and 2010. Evidence of Internet traffic for Complainant’s current website is submitted, showing 51,015 visits between March 5, 2011 and April 4, 2011. Evidence of costs for keyword purchasing for the month of March, 2010 and a sale value report from the same period has been submitted. Moreover, evidence of printed advertising material from the spring 2002 and other advertising material from an unspecified time period has been submitted together with a statement of sales from 2009, showing Internet sales to make up 78.8 percent of the total sales for that year”.
“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. ”
So here is the KEY FOR DEFENDING COMMON LAW TRADEMARK COMPLAINTS: “Although the Panel is satisfied that Complainant indeed is using the mark and has been using it for a number of years, the evidence is not of a prima facie character, showing secondary meaning. The evidence relating to advertising material appears to be representing circa 5 percent of Complainant’s revenues. The evidence relating to purchasing search engine key words does not give any indications on the public’s awareness of the mark as a source indicator. Moreover, the tables showing Internet traffic seem to point towards if anything at all, a mere local significance.”
So, bottom line is that if the Complainant does not have a Trademark that was registered before the domain name, the Complainant has a HEAVY Burden of Proof to make a PRIMA FACIE case and the Respondent may easily win.
Thanks for “Listening”
Howard
The Neu Facebook
