Here look-- we have a trademark! Please believe us!
In one of those cases where the Complainant could have but failed to prevail, the Panel in Gookinaid ERG, Inc. v. Valda Krievane, WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008) refused to transfer gookinaid.com and gookinaid.biz to a Complainant that claimed to own unregistered trademark rights in the designation GOOKINAID and GOOKINAID ERG.
The Panel first set out the test for demonstrating unregistered trademark rights under the UDRP:
"To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent." (Emphasis added.)
Here, however, the Complainant provided no evidence from which the Panel could conclude that the Complainant owned trademark rights. Beyond its bald assertion that the Complainant was "the owner of all right, title and interest in and to the tradenames and trademarks GOOKINAID and GOOKINAID ERG for use with its electrolyte replacement products" and self-serving statements that "world class marathon runners have been drinking beverages using the GOOKINAID tradenames/trademarks since the late 1970s and that the Complainant has extensively promoted those tradenames/trademarks," the Complainant offered little to back-up such claims.
Interestingly, it appears that the Complainant relied on the Respondent's use of the Complainant's designation to demonstrate the Complainant's trademark rights. The Panel was not prepared to accept such meager evidence: "The Panel is not prepared to infer, from the Respondent’s web pages printed out on March 28, 2008, that the Complainant has acquired, through many years of use, common law trademark rights in GOOKINAID or GOOKINAID ERG."
Because the Complainant failed to demonstrate the requisite trademark rights to support its UDRP claim, the Panel found it unnecessary to address the other elements of a UDRP claim and denied the Complainant's complaint.
What must make this decision particularly frustrating for the Complainant is the fact that the Respondent claimed to be a victim of an illegal domain transfer to it, claimed no rights in the disputed domains, and filed a statement with the Panel that it was willing to cooperate in the transfer of the disputed domains to the prior listed registrant in the Whois database. Given the Complainant's failure to put forward evidence of trademark rights, however, the Panel did not even have to address that issue.