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Posts Tagged ‘Lack of Evidence’

WRESTLEMANIA Domain Fight Not Worthy Of Pay-Per-View

Friday, July 9th, 2010

wrestlemania

In the recent domain name dispute decision of World Wrestling Entertainment Inc. v. Israel Joffe WIPO D2010-0860 (July 1, 2010) a single member Panel was faced with a decision over the domains www.wrestlemania26.com, www.wrestlemania27.com and  www.wrestlemania28.com. Complaint is the well known media and sports entertainment company responsible for much of the past few decades worth of wrestling entertainment. They maintain a website at www.wwe.com. WWE claims rights to the WRESTLEMANIA mark dating back to 1985.

Respondent provided a short response to the Complaint which states in full as follows:

Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. However if the person does not attempt to sell the name to the company, then no laws have been violated since intent to sell in bad faith has not been proven. In Virtual Works, Inc. v. Volkswagen of America, Inc. (a dispute over the domain vw.net), the [United States] Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter exhibit a bad faith intent in order to confer liability. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. Rather, the domain name must have been registered with the bad faith intent to later sell it to the trademark holder. This “bad faith” concept is reiterated in 15 U.S.C. § 1125 and U.S.C. § 1129. I never had any intention of selling the names to WWE and made no attempts to sell it to them. They have not proven that I tried to sell them the name, therefore no laws have been violated and I should be allowed to keep the domain names.

The Panel did not buy these arguments and explained that paragraph 4(a) provides a non-exhaustive list of examples to prove bad faith. The Panel noted that the websites were not active and through its own research appeared to never have been active. Regardless, the Panel still explored the Respondent sole reason for proving lack of bad faith and stated:

The panel in Telstra, supra, and scores of panels subsequently, have found that “warehousing” or simply registering and holding a domain name whose dominant feature is a famous mark, is use in bad faith. This is now a well-settled rule of decision in UDRP proceedings. See WIPO Overview, paragraph 3.2, Consensus View: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”

Ultimately, the Panel found that Complaint satisfied all three elements and ordered the domains be TRANSFERRED.

Rachael Ray Cooks Up A Win

Thursday, July 8th, 2010

rachaelray

In a very interesting decision, a three member Panel appears to stretch the limits of what is acceptable evidence and methodology for UDRP cases. In the case of Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd. FA1319966 (Nat. Arb. Forum, July 7, 2010) the Panel was faced with a dispute over the domain www.rachelray.com. Living in the U.S. most of us have all seen on t.v. or heard about Rachael Ray. She maintains a website at www.rachaelray.com  Many would even think this was a slam dunk case for her, since the disputed domain was merely missing a letter. However, Respondent put up a fight and both parties provided additional submissions. As a result the Panel was faced with making some interesting findings.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

Some of the relevant arguments presented by Respondent are as follows:

Respondent, Rachel Ray Techniques Private Limited, is a company incorporated in India on July 23, 2009.  Respondent offers products that involve laser ray technology.  Prior to incorporation, Respondent was operated as a partnership that began April 10, 2007….The Complaint misstates the date of the cease and desist letter.  It was sent on February 24, 2010, not February 24, 2009.  This is an attempt by Complainant to mislead the Panel by creating the impression that the letter was sent prior to Respondent’s incorporation on July 23, 2009….Respondent selected the name “Rachel Ray” for its business because the daughter of the technical partner of the original firm was named “Rachel”.  The initial name for the company was going to be “Rachel Lazer Techniques”, but, for reasons related to the practice of numerology, there was a decision to switch to “Rachel Ray Techniques”.

In the decision, the Panel presented the following findings:

Respondent is the owner of the disputed domain name, <rachelray.com>, and the date of creation is September 20, 2001.  The Respondent acquired the name some time later. Respondent is a corporation organized under the laws of India on July 23, 2009, after having been formed as a partnership on April 10, 2007.

With that in mind the Panel reviewed the elements and quickly found that the domain was identical or confusingly similar. The fascinating parts of the decision came during the examination of the second element. The Panel found that the burden was shifted to Respondent to prove it had rights or legitimate interests in the domain. It stated as follows:

Respondent claims to have formed a company in April 2007, which was incorporated in 2009, to market laser-based equipment and other items.  Respondent has supplied the Panel with scads of evidence (Annexes A through W), citing its business name on advertisements, telephone listings, invoices and Indian governmental documents, to support its contention.

However, the Complaint provided evidence that the disputed domain hosted websites that offered Complainants own trademark. Respondent chalked this up to error and lack of control over third party hosting, exclaiming that they are not technical people. Armed with that argument, the Panel made the following statement.

The Panel is presented therefore with competing claims on this issue.  UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity.  One tool it can employ in this regard is to examine each party’s contentions for consistency.  On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent.  Respondent’s declaration about “not being technical people” is contradicted by Respondent earlier Additional Submission reference to its “technical partner”.  Moreover, that contradiction is heightened by Respondent’s claim to run a business that offers products “using the Technology involving Laser Rays”, which suggests that Respondent’s people must possess fairly sophisticated technical expertise.

Additionally, the Panel found that the lack of proof of sales volume or revenue in connection with products was fatal. Then the Panel turned its attention to the issue of whether Respondent was commonly known by the domain. AS stated earlier Respondents company name specifically includes the domain, but the Panel did not care.

However, it has not escaped the Panel’s notice that the date of Respondent’s origination, April 10, 2007, followed hard upon the date, March 27, 2007, of the USPTO registration of Complainant’s most basic trademark, RACHAEL RAY.  Is this coincidence or design?  Though Respondent is an Indian entity, the miracle of the Internet makes knowledge of such information as USPTO registrations almost instantaneous around the globe, and the Panel must keep in mind that the initiation of the Policy is predicated on the cunning and sophistication of global cyber-squatters. As discussed above, Respondent has provided the Panel with scant evidence of actually conducting business.  Consequently, the Panel cannot conclude that Respondent is  commonly known by that name, as is necessary for application of subparagraph 4(c)(ii).  The Panel believes that that subparagraph requires more than evidence suggesting a hastily formed “paper” company which adopts a name that is nearly indistinguishable from an established trademark and, soon after formation, acquires a corresponding domain name.

The Panel quickly resolved the bad faith element of the case. Ultimately, the Panel ruled that domain be TRANSFERRED.

SUBWAY Loses Relatively Simple Dispute

Tuesday, April 13th, 2010

     subway

Normally we would spend some time reviewing the facts and findings of the case, however Domain Name Wire did a great job, so we suggest you read thier post available HERE. We were preparing to provide a full write up on this case, but they did a perfect job summarizing and highlighting what every practioner should know about domain disputes.  The case  Doctor’s Associates Inc. v. Atomix (WIPO D2010-0060, April 6, 2010) is a lesson learned for other attorneys and trademark owners. Looks like Subway needs to sell a few more $5 Footlongs.

Theft of “RECENT” “THEY” and “THAN” Not Enough Without Trademark Proof

Monday, March 29th, 2010

In the recent cybersquatting dispute of Taeho Kim v. Skelton Logic FA1305934 (Nat. Arb. Forum March 22, 2010) a single member panel was faced with a dispute over the domains www.recent.net, www.they.net, and www.than.net. Complainaint claimed to have purchased the domains on June 30, 2009 and that they were stolen in December 2009. Complainant contends the domains were ultimately resold to Respondent. As the Panel noted “The Complaint is based on Complainant’s ownership of the domain names and his stated intention to use the marks RECENT.NET, THEY.NET and THAN.NET in the future, even though he does not have a trademark or service mark corresponding to any of the domain names.”

Respondent contends to be a bona fide purchaser of the domain, which were purchased from a common domain marketplace reseller. Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel explained that “The Policy is not designed to address cases of theft of domain names, whether brought against the alleged thief or against a subsequent purchaser.” In spite of that statement the Panel chose to review the facts under the policy and stated:

Complainant concedes that he has no trademark or service mark rights and relies solely on his prior registration of the domain names and his stated intent to use marks corresponding to the domain names in the future. Given the generic nature of the second level domains, “recent,” “they” and “that,” the mere acquisition by Complainant of the disputed domain names cannot possibly give rise to trademark rights in RECENT.NET, THEY.NET or THAT.NET. Nor can intent to use give rise to trademark rights.

For this reason the Panel DENIED Complainant’s request for transfer.

CRUISE SHIP CENTERS Can’t Sail Away With A Win.

Thursday, February 11th, 2010

cruiseshipcenters

In the recent cybersquatting decision of CruiseShipCenters International Inc. v. Leonard Brody FA1297509 (Nat. Arb. Forum February 10, 2010) a single member Panel was faced with a dispute over the domain www.cruiseshipcenters.mobi. Complainant maintains a web site at www.cruiseshipcenters.com, which appears to be run in connection with Expedia. Respondent registered the disputed domain name on November 9, 2006.  The disputed domain name does not resolve to an active website. 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel noted that Complainant had registered marks for CRUISESHIPCENTERS with Canada, the European Union and the U.S., which all were registered in early 2008. In addressing the first element, the Panel found that the registrations were enough to prove complainant’s rights in the mark. As a result the Panel found that the disputed domain was identical to Complainant’s mark. The Panel declined to review the second element in light of its findings from the third element.

The Panel explained that although Complainant proved its rights in the mark, none of the registrations predated the November 2006 registration date of the disputed domain. The Complainant failed to provide any evidence showing common law rights which may have predated the domain registration. For these reasons, the Panel found Respondent did not register the disputed domain in bad faith. Ultimately, the Panel ruled that the request for transfer be DENIED.

Arbitrator Slams Complainant For “Paltry” Record Evidence

Wednesday, January 13th, 2010

In the recent cybersquatting case of Digital Alchemy, LLC v. Digital Alchemy c/o Ramon Felciano FA1295928 (Nat. Arb. Forum, January 12, 2010) a single member Panel was faced with a dispute over the domain www.DigitalAlchemy.com. Complainant operates in the field of electronic CRM for the Hospitality Industry and maintains a web site at www.data2gold.com. Complainant claims no registered trademark but states it has common law rights dating back to 1996.  Respondent is a consulting firm based in San Francisco, California, specializing in business, product, and technology strategy for life sciences, healthcare and technology markets. Respondent claims to have been offering its consulting services since 1993.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that the disputed domain is identical to the DIGITAL ALCHEMY mark. But the Panel found that Complainant failed to demonstrate it has rights to the mark. The Panel criticized the Complainant’s contention that it had used the mark in connection with its services since 1996, noting that it was a conclusory statement lacking sufficient evidence. The Panel further finds that Complainant failed to present evidence of secondary meaning. The Panel cited to another prior decision and explained.

 In declining to recognize the complainant’s common law mark in Kip Cashmore the panel stated:  “Here, Complainant has not presented any credible evidence establishing acquired distinctiveness [for the complainant’s goods and services]. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin or services. Complainant’s record consists of merely a declaration of Complainant with unsupported facts…” Here the record is even more paltry than in Kip Cashmore, as there isn’t even a self-serving declaration by Complainant that its mark serves as an identifier of its goods and services in the public’s mind.

Moving to the second element, the Panel continued its analysis. The Panel found Complainant failed to present a prima facie case. Respondent presented evidence of doing business since 1993 under the Digital Alchemy name, which was prior to Complainant’s use. The Panel dismissed Complainant’s Additional Submission argument that there was no proof of continuos use by Respondent, noting the UDRP had no such requirement. The Panel also dismissed Complainant’s contention that the offer to sell the domain, after being solicited by Complainant did not satisfy this element.

In addressing the final element, bad faith, the Panel explained:

Given Respondent’s use of the Digital Alchemy name in its business since 1993, and the Panel’s finding that Respondent has rights and legitimate interests in the domain name, the Panel concludes that Respondent did not register and is not using the domain in bad faith. Indeed, as prior panels have held, once a panel has determined that a respondent has rights and legitimate interests in a domain name, the question of bad faith is moot.

Ultimately, the Panel found that Complainant failed to prove any of the three elements, and DENIED the request for transfer.

Would Bruce Lee Have Approved Of This Fight?

Tuesday, January 5th, 2010

 bruclee-b    bruclee-a

In the recent domain name dispute decision of Hargrave Arts LLC c/o Carter Hargrave v. Chiefasian LLC c/o Martin Eng FA1294273 (Nat. Arb. Forum, December 31, 2009), a single member Panel was faced with a dispute over the domain www.jeetkunedo.com. Complainant is the owner of multiple Jeet Kune Do related domains, including www.jeetkunedo.net and www.jeetkunedo.org. Mr. Hargrave is the president of the World Jeet Kune Do Federation. He claims common law trademark rights to the mark JEET KUNE DO. A little background is necessary, for an understanding of the origins of JEET KUNE DO. This form of martial arts was founded by Bruce Lee in the late 1960’s. According to the decision, Complainant is one of about 50 certified instructors. The disputed domain was registered on March 6, 2000 and Respondent provided a response to the complaint.  Although the Response was not provided the Panel noted that Respondent claims Hargrave does not have rights to the JEET KUNE DO mark.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel addressed the first element explaining that Complainaint contends he acquired rights to the JEET KUNE DO mark from Bruce Lee and the Bruce Lee Jeet Kune DO School. However, the Panel notes that Hargrave fails to provide any evidence that it represents Bruce Lee or the Bruce Lee School. Additionally, Hargrave fails to provide any evidence that any of the rights to the JEET KUNE DO mark were assigned or licensed to him. For these reasons, the Panel found that Hargrave did not satisfy the first element.

The Panel did not review the remaining elements and DENIED the request for transfer.

NATURE’S CHOICE Bark Smaller Then It’s Bite

Wednesday, December 23rd, 2009

       natures-choice

In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

Policy ¶ 4(a) of the ICANN UDRP rules requires that Complainant must prove each of the following three elements to obtain an order that the domain names should be cancelled or transferred: 1. the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the domain names; and 3. the domain names have been registered and is being used in bad faith.

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

Ultimately, the Panel found that Complainant had failed to prove up all three elements, and DENIED the request for transfer.

Competitors Fight Over Bottled Water

Monday, November 30th, 2009

greatwater_logo

In the recent domain name dispute decision of Greatwater, Inc. v. Greatwater Custom Label (2004) Inc FA1287920 (Nat. Arb. Forum November 25, 2009) a single member Panel was faced with a dispute over the domains www.greatwater.com and www.nationwidesprings.com. Complainant is the supplier of private label bottled water. Complainant originally registered the greatwater.com domain and its parent company purchased the nationwidesprings.com domain. Complainant’s company was sold to a third party company, who in turn sold it to a fourth company. That fourth company supposed then sold it to a fifth company, but started their own new bottled water business (Respondent) in competition with Complainant. That competition included Respondent maintaining control of and using the two disputed domains. Respondent argues that Complainant has failed to show it has any trademark rights, and challenges that Complainant has not established secondary meaning.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel found that Complainant failed to establish common law rights through secondary meaning of either domain name. Although the Complainant failed to prove the first element the Panel chose to review all of the elements.

Moving to the second element, the Panel found that Complainant failed to present a prima facie case in support of its arguments.

Respondent presents evidence and argues that it has used the disputed domain names in connection with its business selling bottled water since its incorporation in 2004. The Panel finds that Respondent has made demonstrable use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)….Respondent argues that Respondent has been commonly known by the disputed domain names since its incorporation in 2004 for the business of selling bottled water. The Panel finds that Respondent has rights and legitimate interests in the disputed domain names due to it being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

The Panel moved to the final element, bad faith, noting that Complainant did not present sufficient evidence. The Panel concluded that since Respondent had rights or legitimate interests in the domains, they had also not registered the domains in bad faith.

Ultimately, the Panel DENIED Complainant’s request to transfer the domains.

U.S. CLUB SOCCER Fails to Score a Win

Wednesday, September 23rd, 2009

            us_club_soccer

In the recent domain name decision of National Association of Competitive Soccer Clubs v. Bruce Binler (WIPO, D2009-0957, September 7, 2009), a single member panel was faced with a dispute over the domain www.usclubsoccer.net. Complainant is a non-for profit organization responsible for putting together soccer clubs, leagues and tournaments across the U.S. Complainant maintains a web site at www.usclubsoccer.org and has a servicemark registration for US CLUB SOCCER. Respondent registered the domain in 2007 and failed to provide a response to the Complaint.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that: (i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) respondent’s domain name has been registered and is being used in bad faith.

Some of the facts presented included that Respondent used the domain in connection with promoting soccer events sanctioned by Complainant in 2006 and 2007.These facts may have been relevant in the Panel’s findings, however, the Panel did not make it passed the first element.

The Panel found that Complainant did not establish sufficient rights in the mark US CLUB SOCCER. The Panel noted that Complainant’s citation to a federal registration failed to inform the Panel that it was actually on the Supplemental Register.

Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.

Although Complainant has recently applied again to the USPTO for the same mark seeking registration on the Principal Register. Therefore, the Panel noted that Complainant must show that it had sufficient common law rights. The Panel was concerned that the USPTO rejected the original application for being primarily geographically descriptive with terms that are generic or merely descriptive. The Panel took some liberties in doing some market reserach and made the following observations:

Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together. Those searches returned many millions of “hits”. While Complainant’s organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.

In light of these findings the Panel found as follows:

The rejection by the USPTO of Complainant’s application for registration on the Principal Register and Complainant’s conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description).

The Panel found that Complainant failed to establish the first element and thus did not address the other two elements. The Panel ordered the request for transfer be DENIED.

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