Different Domain Dispute Decisions: back to basics

Written by Samuel O’Toole | May 27, 2021

Intellectual Property

A requirement of most domain name dispute resolution procedures is that the complainant (the person bringing the complaint) must have trade mark rights in the disputed domain name.

In “DRS” proceedings, which largely apply to “.uk” domain names, a complaint needs to show it has rights in respect of a name or mark which is identical or similar do the disputed domain name. Guidance has been provided in which it is confirmed this “rights test” is intended to be a relatively low-level test. Complainants mostly rely on registered trade mark rights but it is also possible to rely on unregistered trade mark rights such as personal names and company names but evidence, and the more the better, needs to be provided of these rights.

In “UDRP” proceedings, which generally apply to “.com” domain names, a complainant will also require trade mark rights. These also can be the registered or unregistered variety but if you are relying on the latter, the threshold in the UDPR is higher than in the DRS.

In Sister Sister LLC and James Charles Dickinson p/k/a James Charles v. TUNG LAM, the complainants brought UDRP proceedings over the sisters-apparel.us domain name. The complainants asserted they had common law or unregistered trade mark rights in the SISTERS mark, the panel found that “Rights may be shown by persuasive evidence of common law trademark rights in a mark”.

The complainants claimed they had trade mark rights in the SISTERS mark because James Charles calls his fans “sisters”. The panel noted that the complainants have a formidable burden of proving common law trade mark rights where the mark in question is descriptive. Despite the complainant having asserted its claimed rights, and the respondent having not responded to the claims, the panel found that the complainants had not met the high evidential burden required to show it has trade mark rights in the SISTERS mark.

Trade mark rights are the first step in any domain name proceedings, without trade mark rights or substantial evidence to back up the claimed rights, it is likely a domain name complaint will fail. If you fail in your domain complaint first time around, then you may be prevented from bringing a second set of proceedings so it is very important to get it right first time – its also quicker!

At Briffa we offer a free consultation and all of our lawyers are experts in domain name disputes, why not get in touch and we can let you know whether your trade mark rights sit on the “right” side of the line for a domain name complaint.

Written by Sam O’Toole, Solicitor

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