The domain name DegreeSearch.com was just saved in a UDRP brought by the holder of the .org version of the domain which also said they had a registered trademark on the term DegreeSearch.org
Said is the operative word as the complainant did not provide proof of a registered trademark and the panel found the .org holder was not entitled to a common law mark
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.
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.
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.
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. This conduct shows lack of seriousness from Complainant and is not sponsored by the Panel.
The Panel considers that “common law rights” should not be taken as a “last resource” when a Complainant does not have a trademark registration, as it appears to be the case of the Complainant’s Additional Submission where the argument changes from a trademark right as described in the Complaint, to a common law right and secondary meaning of the expression DEGREESEARCH.ORG, as set forth in the Complainant’s Additional Submission. Common law rights must be proven by strong and serious evidence of constant use and recognition from the objective customers of the goods or services. A simple argument based on a screenshot and an employee declaration, is not enough to comply with the requirements of trademark recognition under the URDP.
As trademark registrations, common law right must be seriously demonstrated, since under the Policy both trademark recognition systems are enforceable as equals. Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust with the systems where, unless a registration is obtained, no trademark rights can be awarded even if the expression allegedly from which trademark rights are derived has been used for many years in a certain jurisdiction.
Moreover, the disputed domain name is integrated by two expressions that together make a description of a service. As per the Merriam Webster online dictionary, the word “degree” means: “a step or stage in a process, course, or order of classification ”. On the other hand, “search” means: “to look into or over carefully or thoroughly in an effort to find or discover something.” Therefore, the expression “degree search” means: to look for a course or order of classification, i.e., to look for a program which grants a degree. As a result, the expression is indeed descriptive of school matching services, online directory of schools and tools, information and resources for assisting with the school selection process, which are the services provided by Complainant as per the Complaint.
Furthermore, since Complainant is a commercial entity, Complainant should have tried to register a “.com” website, or at least should have done an availability search of the “.com” generic top-level domain. However, Complainant registered an “.org” domain name, years after the registration of the disputed domain name. Thus, Complainant should have known of the existence of the disputed domain name, since a commercial site such as Complainant’s would have used “.com” as a generic top-level domain, instead of “.org” reserved for organizations.
Finally, on the descriptiveness of the expression “degree search”, the USPTO has established: “The term DEGREE SEARCH describes the services, because applicant’s specimen shows that the applicant is providing searches on school and ‘degree programs.’”
For the aforementioned reasons, the Panel concludes that Complainant has not demonstrated rights in the trademark DEGREESEARCH.ORG for purposes of Paragraph 4(a)(i) of the Policy, and that the expression DEGREESEARCH is merely descriptive for the services provided by Complainant.
Consequently, the element of the Policy paragraph 4(a)(i) has not been established in the present case.
“Regarding the reverse domain name hijacking Respondent’s allegation, although the Panel found several suggestions as to the possibility of its existence, the Panel did not find incontestable evidence of bad faith on the filing of the Complaint, since failing to prove one element of the Policy cannot be considered as bad faith.”