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.Org Domain & Trademark Holder Denied UDRP On .Com

Posted on the 13 June 2013 by Worldwide @thedomains

The domain name degreesearch.com was just saved in a UDRP brought by the holder of the .org verison of the domain which also owned a trademark on the DegreeSearch.org

The domain holder was represented by Zak Muscovitch

Here are the relevant facts and findings:

The disputed domain name was registered on April 25, 2003. Respondent came to acquire the domain name on or about May 28, 2010.

In this case, Complainant argues to have had rights over the expression DEGREESEARCH.ORG since 2006.

Since, no trademark registration was provided; Complainant’s alleged rights should be common law rights.

Common law rights are obtained with use of the trademark to identify certain goods or services in commerce and to distinguish them from those of competitors.[2] The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.

Hence, to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the trademark owner.[3]

The evidence filed must show that the trademark has acquired secondary meaning, i.e., that the public associates the trademark with Complainant’s services. The Panel considers relevant evidence of secondary meaning include the income produced by the trademark (sales), the advertisement and media recognition.[4]

However, there is no evidence of use or secondary meaning of the expression DEGREESEARCH.ORG. After reviewing the Annex 1 to the Complaint where, according to Complainant, there would be evidence of use regarding school matching services, online directory of schools and tools, information and resources for assisting with the school selection process, the Panel only found the current screenshot of the website , which by no means could be understood as use of a trademark.

Complainant also alleged that the expression DEGREESEARCH.ORG had acquired secondary meaning within the niche market of for-profit colleges. Notwithstanding, no evidence produced by such colleges is filed. The evidence in Annex 2 to the Additional Complaint was produced by an employee of Complainant; thus, it is not possible to conclude that the expression DEGREESEARCH.ORG has acquired secondary meaning within the niche market since the evidence did not come from the market.

Consequently, Complainant has not proven the secondary meaning or use of the expression DEGREESEARCH.ORG. Hence, Complainant has not established common law rights regarding the trademark DEGREESEARCH.ORG.

This Panel, emphasizes on the contradictions found between the Complaint and the Additional Submission to the Complaint, where Complainant adapts Complainant’s services identified with the alleged trademark DEGREESEARCH.ORG, from “school matching services, online directory of schools and tools, information and resources for assisting with the school selection process” to “lead generation service” as to fit the new arguments set forth in the Additional Submission to counter arguments in the Response.…


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