A UDRP claim was rejected today on the domain name CloudProvider.com
The claim was so bad the one person panel rejected it even in absence of a response by the domain holder.
The complainant was XXL Webhosting B.V of Leeuwarden, Netherlands.
The complainant didn’t have a registered trademark on the generic term, but they did own several similar domains; cloudprovider.nl, cloudprovider.eu and cloudproviderusa.com
The panel rejected the complainant’s claim that they were entitled to the domain on the basis of a common law trademark.
Here are the facts and findings by the panel:
“The domain name cloudprovider.com was registered on April 8, 2008.”
“The Complainant does not rely on any trademark registrations in relation to the terms Cloud Provider.”
“However, it offers webhosting services, including an advanced cloud platform for setting up servers, and for this purpose it operates websites that resolve to the domain names cloudprovider.nl, cloudprovider.eu and cloudproviderusa.com”
“The Complainant asserts it has a branch in the United States where it maintains the latter domain name and offers services under the trade name “Cloud Provider USA”.
“The Complainant contends that it has established rights in the trade name “Cloud Provider” as an unregistered or common law mark”
“The Complainant asserts that it has continuously performed webhosting services under the name Cloud Provider for customers in the United States and the Netherlands since 2008. ”
“The Complainant has no relevant registered trademarks, but it is well established that the Complainant can succeed on the basis of an unregistered or common law mark or marks.”
“However, the Complainant must establish that it has rights in the unregistered mark. ”
“It is not impossible for a Complainant to establish that it has rights in a descriptive or generic term or terms, but it must advance sufficient evidence of secondary meaning acquired by use. The terms must distinguish the Complainant as the source of the particular services or goods offered under the mark.”
In the present case, the terms “Cloud Provider” are inherently descriptive, as they describe a provider of cloud computing services or on-demand server space. The Complainant itself admits the terms have “a certain generic character”.
“The terms are descriptive of the kind of service the Complainant provides. Consumers of computer storage products and services would be familiar with the meaning of these terms in their descriptive primary sense. ”
“Neither word is created or invented or fanciful, or combined in a particular or unusual way. ”
“On the other hand, the term “CloudProvider” has some small element of inherent distinctiveness about it in that it is a contraction of the two terms.”
“A further difficulty in this case is that the Complainant apparently seeks indiscriminately to rely on the use of different names or marks: “CloudProvider”, “Cloud Provider”; “Cloudprovider.nl”; “Cloudprovider.eu”; “CloudProviderUSA” and “CloudProviderUSA.com”. The Panel notes that nothing put before it establishes the precise relationship between the Complainant and the use of the various names or marks, in particular “CloudProviderUSA” and “CloudProviderUSA.com”.
“In conclusion, because: of the inherent descriptiveness of the terms at issue; of the insubstantial nature of the evidence of secondary meaning provided; of the absence of historical data concerning the volume and extent of the service offerings of the Complainant, or of its use of the terms “Cloud Provider”; of the fact that establishing distinctiveness of a particular representation of descriptive terms is not by itself enough to establish distinctiveness of the terms not so represented; the term “CloudProvider” was commonly used by the Complainant in a particular colour and script and in combination with a particular device; and because there is no evidence before the Panel of the volume of advertising, consumption or broad consumer perception of the Complainant’s services even in the Dutch market, the Panel is not persuaded that the Complainant has established sufficient rights in the terms “Cloud Provider” for purposes of satisfying the first element of the Policy in this proceeding.”
“Moreover, the disputed domain name was apparently registered before the Complainant started to use the incorporated terms for its own service, and before it registered any domain names incorporating those terms. Therefore it is not apparent that the Respondent registered the disputed domain name in bad faith, nor can it be said on this record that in the absence of competing trade mark rights he has no legitimate interest in a domain name that is descriptive of a class of services. It may be perfectly legitimate for a party, when a new descriptive term such as cloud computing starts to emerge, rapidly to register it with the intent of turning it to account once it has become common currency.”
Another real piece of crap case brought by someone with nothing but a punchers chance with no downside except for the filing fee.
Boy do we need UDRP reform.