NetProtect, Inc. just lost its attempt to grab the domain name unblock.com in a UDRP in a silly case that should have resulted in a finding of Reverse Domain Name Hijacking (RDNH) but the panelist was IMHO lazy and decided just to throw out the case.
Calvin A. Hamilton was the sole Panelist for the National Arbitration Forum (NAF) who rejected Complainant argument that it had acquired unregistered common law trademark rights.
“In order to acquire rights in an unregistered trademark, Complainant must show that the mark has acquired secondary meaning.
“Complainant has not put forward any evidence of sales of its services under, or by reference to, the UNBLOCK-US name, or any figures for commercial advertising. This evidence would be necessary to show that the UNBLOCK-US name functions as a trademark. “Simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in the WELLSERV mark. Complainant’s burden requires proffering supportive evidence or information that indicates relevant customers identify its alleged WELLSERV mark as representative of its services and identity” See Weatherford International v Paul Wells, FA 153626 (Nat. Arb. Forum May 19, 2003).
Complainant has not provided this Panel with compelling evidence of secondary meaning or distinctiveness. This evidence is particularly relevant where, as in this case, Complainant asserts common law rights in a trade mark that comprises of a descriptive word. Please see the Panel’s discussion on the descriptiveness of the term ‘unblocked’ below.
The Panel notes that Complainant itself uses the term “unblock” on its website in a manner which is entirely descriptive of its services and not distinctive. This can be gleaned from the opening text on Complainant’s home page which reads: “Unblock Everything on Netflix, Spotify, Hulu and more”. In this phrase, the word “unblock” is used to describe a method of “unblocking” access to the Internet.
The Panel agrees with Respondent that the domain name is a simple dictionary word.
The Panel appreciates that Respondent uses the word ‘unblocked’ as a common descriptive search term. Further, that Complainant also uses the term ‘unblocked’ on its web site in a manner which is entirely descriptive.
Accordingly, the Panel finds that Complainant has not established common law rights under Policy ¶ 4(a)(i).
Additionally, the Panel finds that the term ‘unblocked’ is descriptive of an element of the services of VPN or smart DNS and as a result cannot be said to be confusingly similar to the UNBLOCK-US mark for purposes of Policy ¶ 4(a)(i).
In light of the fact that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy.””
The panelist did not even discuss that the case was bought as an abuse of process, which if you don’t even have trademark rights to a term the case is by definition an abuse.
