Name Administration won its 35th UDRP today as a three member panel of the National Arbitration Forum, rejected Paris Jewellers Ltd. of Canada Complaint on the domain name ParisJewellers.com which was registered by Name Administration back in 2004.
As always, Name Administration was represented by John Berryhill, Esq.
This decision was short and sweet as the Complainant didn’t have a registered trademark and its two attempts to register a trademark in Canada were rejected by the Canadian Intellectual Property Office on the grounds of descriptiveness, even with an explicit disclaimer of the words “Paris” and “Jewellers”.
The panel found the Complaintant did not produced evidence to prove a common law trademark.
Here are the highlights of the three member panel decision of Flip Jan Claude Petillion, Anne M. Wallace and Héctor Ariel Manoff (Chair):
“The Domain name at issue is identical to PARIS JEWELLERS, but Complainant does not have a trademark registration for these terms.
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark.
Complainant alleges PARIS JEWELLERS has been used in association with specific wares such as jewellery; rings, earrings, bracelets, watches, pendants, necklaces; giftware, namely, pens, picture frames, mugs, crystal, jewellery cleaner, jewellery boxes; family jewellery since 1987 and it has currently 28 locations.
However, those claims are not in any way supported by evidence.
No evidence was submitted to support a finding of common law rights.
Even though Complainant submitted evidence to prove corporate registration of PARIS JEWELLERS LTD. this Panel finds it is not sufficient to create trademark rights.
Moreover, according to the evidence submitted by Respondent (Exhibit A), Complaint filed two prior applications for PARIS JEWELLERS before the Canadian Intellectual Property Office were rejected on the grounds of descriptiveness
This Panel finds that since the claimed mark is comprised of two common, generic and descriptive terms (PARIS JEWELLERS), Complainant should have submitted sufficient evidence to establish secondary meaning and Complainant failed to do it.
Complainant has not established rights in the PARIS JEWELLERS mark under Policy ¶ 4(a)(i).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) due to Complainant’s failure to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy.””
Thanks to Zak Muscovitch, for lightning fast service in ferreting out the Canadian Intellectual Property Office files.
great result but how does someone who can’t afford John Berryhill defend a baseless udrp.
it seems that the whole udrp process is set up to serve those who can afford to either protect a domain name or to grab one.
The facts win the case. All I do is to help present them in a way that makes sense to a UDRP panel, and point out gaps in the complainant’s argument. Many people do fine without an attorney at all. As an example, take a look at the four “braindumps” cases which were decided and posted a few days ago (on one of the domain blogs). I defended one of them, another attorney defended one of them, the registrant defended one, and one of them had no response at all. All four were decided in favor of the registrant, which is a stark illustration of how little I bring to the table. Once in a while I think writing “This is stupid” in crayon on a piece of paper and sending that in would work.
“Once in a while I think writing “This is stupid” in crayon on a piece of paper and sending that in would work.”
Well if its in one my case I would expect a large discount off the fees.
I wish I could, Mike, but it’s a very special crayon.
Mike has other things to worry about, like if his Gators can survive Tuscaloosa this Saturday 🙂
Up against John Berryhill and Zak Muscovitch in tandem, with no registered trade mark? This complaint makes the Charge of the Light Brigade seem like a brilliant plan!
Ramahn
Your’e not kidding
Actually I hope they get blown out so we finally fire out coach, was hoping they would have lost to Kentucky, that might have done it
#shouldhavehiredcharie