In a recent UDRP decision, a National Arbitration Forum panelist ruled that Andy Mohr Chevrolet, Inc., lacked the trademark rights necessary to takeover the domain andymohrchevrolet.com from its current owner.

In Andy Mohr Chevrolet, Inc. v. Cayman Ninety Business c/o Domain Administrator (Nat. Arb. Forum April 28, 2014) an Indiana car dealership made a UDRP complaint against an entity that registered andymohrchevrolet.com.  That entity, Cayman Ninety Business  (“CNB”), had been the respondent in at least four previous UDRP proceedings.  In one of those proceedings the UDRP panelist noted that CNB “has a pattern of domain name registration that shows bad faith registration and use.”   Despite CNB’s less than reputable history, a factor that had hurt the entity in the past, the panelist ruled that Andy Mohr Chevrolet, Inc., had not established trade or service rights to the ANDY MOHR CHEVROLET mark.

There Can Be No Cybersquatting Without Trademark Rights

In 1999 the Internet Corporation for Assigned Names and Numbers (ICANN) enacted the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to combat cybersquatting.  Cybersquatting occurs when a domain name that contains the trade or service mark of an existing business is registered by someone trying to free ride on the goodwill of that mark.  Cybersquatters profit, for example, from the web traffic created by confused customers of the business or by simply selling the domain name to the business with an excessive mark-up.  Trademark holders who successfully bring a claim under the UDRP can get the disputed domain canceled, changed or transferred from the cybersquatter to the trademark holder.  To bring a complaint under the UDRP, the trademark holder must demonstrate the following:

1. the domain name registered by the squater is identical or confusingly similar to a trademark or service mark the complaining party has rights to;
2. the squater has no rights or legitimate interests with respect to the domain name; and
3. the domain name was registered and is being used in bad faith

Importantly, no matter how strongly a given domain registration looks and smells of improper motives, there can be no cybersquatting without trademark rights.  Typically, however, UDRP panels have viewed this requirement as “a low-threshold, standing requirement” that “does not impose a high-bar.” [1]

Like U.S. trademark law, trademark rights can be proved for UDRP purposes in two ways: 1) if the mark is registered or 2) if the mark has acquired secondary meaning.  According to UDRP rules and case law, secondary meaning is established once the mark “has become a distinctive identifier associated with the complainant[’s] . . . goods or services.” [2]  More generally, secondary meaning can be demonstrated by a history of continuous use and public recognition associated with a mark. “Relevant evidence of ‘such secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” [3]

The ANDY MOHR CHEVROLET mark was not registered with the PTO, so to prove secondary meaning, Mohr submitted the following evidence:

• articles of incorporation in the State of Indiana for Andy Mohr Chevrolet, Buick, Geo, Inc., filed November 18, 1992
• articles of incorporationfor Andy Mohr Chevrolet, Inc., filed May 18, 2001
• a 2014 advertisement
• Facebook screenshots of February and March 2014 advertisements

The panelist deemed this evidence insufficient to establish that the ANDY MOHR CHEVROLET mark had acquired secondary meaning, and dismissed the complaint.

It’s unclear why the evidence that Mohr submitted was insufficient, especially when compared with several past UDRP cases involving similar facts. [4] In fact CNB had already lost a UDRP decision involving its registration of a domain associated with a car dealership.  In RML-Bel Air, LLC d/b/a Bel Air Honda v. Cayman Ninety Business c/o Domain Administrator (Nat. Arb. Forum June 19, 2010), CNB was forced to transfer belairhonda.com to the Bel Air Honda dealership.  The panelist found that the BEL AIR HONDA mark had secondary meaning because it had been used continuously since 2001 to promote the sale of cars in connection with an authorized Honda dealer.  The decision noted that the mark was featured in automotive trade publications, but didn’t elaborate further on how Bel Air Honda established the continuous use of its mark.

Takeaways

In a perfect world procedures would exist that prevented the domain name registration process from being abused by opportunistic entities like CNB.  It’s not always clear, however, when a domain registration is legitimate, so ICANN has limited UDRP relief to disputes involving established trade and service mark rights.   While this requirement is not intended to be a high burden, it still must be taken seriously.  One UDRP panel that more thoroughly examined this issue, noted that parties should consider using the following types of evidence to establish secondary meaning:

• length and amount of sales under the trademark
• the nature and extent of advertising
• consumer surveys
• media recognition

In Mohr’s case, the panel ruled without prejudice, so Mohr is allowed to bring a new complaint against CNB that includes stronger evidence of secondary meaning.

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[1] The Uniform Domain Name Dispute Resolution Process and WIPO, August 2011, Pg 7.

[2] WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, para. 1.7.

[3] Id.

[4] See Toyota of Des Moines v. Domain Administrator, (Nat. Arb. Forum March 24, 2009) (finding secondary meaning established by registration with Iowa Secretary of State, continuous operation of dealership since 1994, and evidence of sales and advertisements using the mark); Toyota Sunnyvale v. Adfero Publ’g Co. (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).