By Zak Muscovitch.

UDRP Complainants often fail to adequately demonstrate common law trademark rights. Sometimes the Panelists catch this and refuse to transfer the disputed domain name. At other times, the Complainant gets away with it.

It is well established that in order to succeed in a UDRP Complaint, a Complainant must establish either registered or common law trademark rights, in a mark that is identical or confusingly similar to the disputed domain name.

Accordingly, it is open to a Complainant to attempt to establish that its purported common law mark has, through extensive use and reputation, become "distinctive" of the Complainant, and that it has thereby acquired a "secondary meaning" apart from its ordinary and obvious meaning.
As the Panel found in Glasgow Signs v.1st Signs Limited, WIPO D2010-0409:
It is well established that the more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning: see, for example, Cellular Clothing v. Maxton & Murray [1899] AC 326.
Sometimes, a purported mark is so descriptive, that it would seem impossible to prove "acquired distinctiveness" or "secondary meaning", as was the case in RE HOTELS.COM, L.P., 2008-1429 (Serial No. 78/277,681), where the United States Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office Trademark Trial and Appeal Board’s decision that HOTELS.COM was merely descriptive. Despite evidence submitted by the trademark applicant, including sixty-four declarations and consumer survey evidence, the Court held that a secondary meaning was not established and that the common meaning of the term prevailed.
This was also the case in Monticello Country Realtors, Inc. v. Patsy Strong, NAF Claim Number: FA0506000499246 concerning the domain name,  <>. Here, the Complainant failed to satisfy its burden of providing proof upon which a finding of secondary meaning could be based. The Panel found that in the absence of a registered trademark, a mere corporate name was insufficient to prove that the name “Monticello Country Realtors” was sufficiently identified with the Complainant so as to constitute common law trademark rights.
Similarly, in the case  in Keystone Publishing, Inc. v., WIPO Case No. D2004-0725,  the Complainant was unable to prove common law trademark rights in The Complainant in that case had sought the transfer of the domain name, (the singular). The Panelist correctly pointed out, as follows:
“In selecting the quintessentially descriptive name for its wedding business in the State of Utah, the Complainant apparently was more interested in attracting Internet traffic than in coming up with a distinctive name. Thus, while the Complainant has a descriptive mark that attracts a large volume of casual search engine inquiries, the amount of time and effort it would take to endow this mark with secondary meaning is problematic.”
An allegation of common law trademark rights must not be taken lightly. As per the Panel in Chandler Horsley v. Fundacion Private Whois, “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…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…”.
So what kind of evidence of common law rights should be used? As the Panel also stated in Chandler Horsley, “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 Panel considers relevant evidence of secondary meaning include the income produced by the trademark (sales), the advertisement, and media recognition".
As held in Molecular Nutrition, Inc. v. Network News, FA 156715 (NAF June 24, 2003) a Complainant will fail to establish common law rights in its mark by making mere assertions of such rights, as such mere assertions are insufficient without accompanying evidence to demonstrate that the public actually identifies Complainant’s mark exclusively or primarily with the Complainant’s products.
Accordingly, in the absence of registered trademark rights, a Complainant should always lead with strong evidence of common law trademark rights, including sales figures, advertising budget and scope, media reports, website traffic, affidavits, and whatever other evidence will assist the Panel in concluding that the purported mark is actually identified with the Complainant to a sufficient degree to be considered an actual common law trademark.