The producer of the hit television show, The Biggest Loser won a UDRP against Theodore Lazier on the domain name thebiggestloser.com, finding that the show gained a Common Law Trademark the day the show was announced.
While the producer registered US Trademarks in various classes, they were all done so well after the date of the domain registration.”
Here are the relevant facts and findings of the one person panel:
“Complainant publicly announced the launch of a television program named “The Biggest Loser” to the media trade press on May 25, 2004. ”
“Complainant produces a television program broadcast in the United States by NBC under the name The Biggest Loser. ”
The television program was first broadcast on October 19, 2004. ”
“The record of registration of the disputed domain name was created on May 26, 2004″
S”tarting on or about October 24, 2006, the disputed domain name was used to redirect Internet users to Internet websites identifying Complainant’s program and certain of Complainant’s branded ancillary services.”
“In 2008, a representative of Complainant contacted Respondent seeking transfer of the disputed domain name, and Respondent indicated it would be willing to discuss its sale. Respondent did not, however, respond to a follow-up offer by Complainant of US D1000 for transfer of the disputed domain.”
“As of the date of commencement of this administrative proceeding, the disputed domain name was used to direct Internet users to a website headed “The Biggest Loser”, referring in subheadings to “Biggest Loser”, “The Contestants”, “Trainers”, “Show Summary”, “Season 9” and “Winners” .”
“The subheadings link to content regarding the television program. ”
“The website operated by Respondent includes Complainant’s distinctive logo that incorporates its trademark. ”
“The homepage of the website incorporates a substantial number of links to third-party operated websites, including websites sponsored or licensed by Complainant, and websites offering diet plans, products and lifestyle related services that are not sponsored by Complainant or Its licensees.”
“There is a disclaimer at the base of the website operated by Respondent, stating “This site is not affiliated with nor endorsed by The Biggest Loser TV show, NBC Universal, NBC Studios, Inc., or Reveille LLC.“ There is a copyright notice stating “Copyright © 2009 – 2010 The Biggest Loser: Lose Weight and Get in Shape. All rights reserved”.
“Respondent registered the disputed domain name immediately following announcement by Complainant of a television program using Complainant’s trademark. Respondent should have been aware that Complainant would object to its registration of the disputed domain name incorporating the name of that television program, and to Respondent’s subsequent use of the disputed domain name In connection with the advertisement of third-party goods and services competitive with those of Complainant. Respondent did not make a bona fide offering of goods or services prior to notice of a dispute.”
“Respondent has used the disputed domain name in connection with a website that conveys the substantial appearance of sponsorship, affiliation with or endorsement by Complainant. ”
“This appearance is conveyed by use of Complainant’s trademark as the heading of the website, provision of relatively current information about the program and its cast, use of Complainant’s distinctive logo, and link to a website of a prominent trainer/cast member of the program. ”
“The website includes a substantial number of links to third-party providers of goods and services, a number of which are not affiliated with Complainant and/or are competitors of Complainant.”
“This does not constitute legitimate noncommercial use of Complainant’s trademark because Respondent presumably is earning pay per click fees from the links. ”
“This does not constitute fair use of Complainant’s trademark because Respondent is using Complainant’s trademark to advertise goods and services of third parties that include competitors of Complainant (even though part of the content on Respondent’s website addresses Complainant’s television program in an informational way). ”
“The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.”
“Respondent registered the disputed domain name one day following the public announcement by Complainant of the launch of THE BIGGEST LOSER television program. ”
“Complainant has argued that the announcement is sufficient to establish common law (or unregistered) rights in THE BIGGEST LOSER in the United States as of the time of the announcement. ”
“Complainant relies particularly on True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930 as precedent for the proposition that common law trademark rights may be established in a single day based on announcement of a new television program. ”
“In its decision in True Blue Productions, the sole panelist (Peter Michaelson) based his finding of common law trademark rights in “Fat Actress” on that term’s association in a press announcement with the very well-known lead actress slated to appear in the program, Kirstie Alley. He suggested that combination of the name of the lead actress with the trademark term “Fat Actress” would be sufficient to create an enduring impression in the minds of the public such as to establish common law rights effective immediately.”
“Judicial precedent in U.S. trademark law recognizes distinct bases for the establishment of common law trademark rights. In order to establish common law trademark rights in “descriptive” terms, the party asserting those rights must establish secondary meaning among the consumer public (as well as use of the trademark in commerce). ”
“In order to establish common law trademark rights in terms which are “suggestive”, “fanciful” or “arbitrary”, a party asserting common law rights need only show that the terms have been used in commerce in association with the goods or services. So-called “inherently distinctive” marks do not require a demonstration of secondary meaning. ”
“Complainant has acknowledged that the terms ”the’, “biggest” and “loser’ each are dictionary terms with a meaning in the English language. The phrase ”the biggest loser” has a meaning in the English language, but not a meaning that is descriptively tied to a television reality show involving a weight-loss competition. In common language “the biggest loser” would be understood to refer to a person (individual or corporate) that had done the most poorly in some endeavor. For example, “the biggest loser” might be a gambler that lost the most money at the gaming tables, or it might be a basketball team that suffered the worst loss, or an individual who had tried and failed at the most tasks. Until given the context of a television program involving a weight loss competition, the natural English language descriptive meaning for “THE BIGGEST LOSER” would not be a television program involving a weight-loss competition.”
“Once the terms are understood to be associated with a television weight-loss competition, they do take on a descriptive meaning. This is in the nature of so-called “suggestive” terms constituting trademarks. There is some descriptive relationship, but only upon the exercise of some imagination.”
“Courts in the United States have often noted that there is no bright line that distinguishes “descriptive” from “suggestive” terms constituting trademarks.”
“The Panel here determines that “The Biggest Loser” is a suggestive term, and that upon using that term in national commerce on May 25, 2004, Complainant established common law rights in that term.”
“When Respondent registered the disputed domain name on May 26, 2004, Complainant had common law rights in the trademark THE BIGGEST LOSER in connection with its television program. It was thus possible for Respondent to register the disputed domain name in bad faith on May 26, 2004 because Complainant had established rights in its trademark.”
“The close timing sequence between Complainant’s announcement of its new television program and Respondent’s registration of the disputed domain name strongly suggests that Respondent registered the disputed domain name in reaction to Complainant’s announcement. Respondent had the opportunity, but failed to provide an alternative rationale for its registration of the disputed domain name. Respondent’s subsequent use of the disputed domain name takes direct advantage of the goodwill established by Complainant in its television program and related products and services. Respondent has used the disputed domain name in connection with a website that conveys the appearance of sponsorship, affiliation with or endorsement by Complainant with the intention to profit from Internet user confusion.”
“The Panel determines that Respondent registered and used the disputed domain name in bad faith by intentionally for commercial gain using Complainant’s trademark to create Internet user confusion regarding Complainant’s sponsorship, affiliation with or endorsement of Respondent’s website.”
Now I have to tell you I’m pretty sure I met the domain holder and even got a business card from him at either a domain show or an ICANN Meeting. I also remember briefly chatting with him about this show and whether he was concerned about losing the domain, which he told me he was not.
Of course he may have made a fatal mistake but not going for a three person panel for an extra $1,500.
I’m not sure I love the concept that someone can get common law trademark rights in something by simply announcing it, well before the show ever aired but maybe one of our UDRP attorney readers can chime in with there thoughts.