In Digest 2.31, I wrote about Panelist Aaron Newell’s decision in the TampaWaterTaxi case which resulted in the Respondent bringing the case to Federal Court (which we reported in Digest 2.48v). My concern with the decision in the TampaWaterTaxi.com dispute was that the Panelist ordered the transfer of a descriptive phrase domain name despite a dubious claim of the Complainant having enforceable trademark rights. The transfer of a domain name corresponding to a common term despite the absence of clearly evident trademark rights, is very concerning. Unfortunately this same panelist previously ordered the transfer of a descriptive domain name in the LiveVideo case, where he found unregistered trademark rights in connection with live video streaming services, based upon “extensive use” despite the fact that the Complainant had ceased using the Domain Name three years prior. Now, with the present Multitrack case, I am concerned that for the third time, the Panelist has ordered the transfer of a ‘generic.com’ domain name despite questionable trademark rights.
Appropriate Use of Procedural Orders
As Gerald Levine notes in his treatise (at Page 576), although Rule 12 grants Panels sole discretion to request further statements of documents from either of the parties by way of procedural orders, “exercising sole discretion raises questions of fairness and it should be exercised cautiously…Incautiously, it can be viewed as giving an unfair advantage to a party who has failed to marshal a full record”. A good example of the appropriate concern when considering requesting additional material from a party is Panelist Matthew Harris’s decision in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd, WIPO Case No. D2008-0841, which Mr. Levine cites in his aforementioned treatise. There, Panelist Harris expressly noted “that it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case. It is for a complainant to prove its case and it is not for a panel to do so on a complainant’s behalf”. Another good example is Precyse Corporation v. Punta Barajas, SA, D2002-0753, also cited by Mr. Levine, where Panelist Lyon stated that he had considered using his discretion under Rule 12 to request additional submissions, but had “determined not to do so”, inter alia because “the Policy and the Rules clearly impose on each party an obligation to come forward in the one pleading expressly allowed it with adequate evidence to sustain the legal conclusions it desires…and that sua sponte requests for additional material should be used sparingly”.
In Multitracks, not only did the Panelist accept an unsolicited supplemental submission from each party without explanation and despite the established case law limiting additional submissions to “exceptional cases” (See for example, Viacom v. Rattan Singh Mahon, WIPO Case No. D2000-1440), but the Panel also issued a Procedural Order specifically requesting that the Complainant provide “further evidence in support of its claim to secondary meaning and/or acquired distinctiveness”. Accordingly, even with two (2) respective pleadings already in hand from each party, the Panelist nevertheless determined that the Complainant had still not satisfactorily demonstrated acquired distinctiveness. Despite the requirement that such requests should only be used sparingly and in exceptional circumstances, the Panel nonetheless gave the Complainant an opportunity to improve upon its case, raising as Mr. Levine noted, a “question of fairness”. An appropriately circumspect Panel may have instead determined that it was for the Complainant to make its own case, and that since it had failed to do so despite already having submitted two pleadings, the case ought to be dismissed. After all, it is a Complainant’s obligation alone to make its case with adequate evidence, and not for a Panel to ensure.
The Primary Issue in this Proceeding: Proving Trademark Rights in an Otherwise ‘Generic’ Term
The primary issue in this proceeding was whether the Complainant had trademark rights in MULTITRACKS and MULTITRACKS.COM as claimed, or whether as the Respondent claimed, the Complainant cannot have such rights because the bar is too high due to the generic nature of the term. The Panelist correctly disregarded the Complainant’s only registered trademark, namely for MULTITRACKS CLOUD, because it was on the Supplemental Register and as such does not qualify as a trademark right under the Policy absent a demonstration of secondary meaning. The reason that the Complainant only had its mark on the Supplemental Register, was because the USPTO refused to allow it on the Principal Register. In an Office Action dated, March 25, 2015, the USPTO stated that “Registration is refused because the applied-for mark merely describes a feature of applicant’s services. In particular, the USPTO found that the term, “multitracks” is used by other people to describe multi-track recordings, and notably, that even the Complainant itself uses the term descriptively: “In 2006, Phillip Edwards and Raymond Boyd founded MultiTracks to resource worship leaders on the concept of running loops, clocks, and multi-tracks in live worship” [emphasis added]. Even today, in 2023, the Complainant continues to use the term, “multitracks” descriptively, as in, “The most reliable MultiTracks player for iOS” and offers a custom plan to “rent multitracks” where you can “Rent from over 21,000 MultiTracks in Playback for an affordable monthly price” and “Rent a high quality MultiTrack”.
Complainant’s Website Respondent’s Website
Lest there was any doubt that when the Complainant itself uses the word, “multitracks” it is referring to a generic thing rather than to its own alleged trademark, the Respondent provided evidence that the Merriam-Webster dictionary’s entry for “multitrack” defines the term inter alia, as “specifically of an audio recording: using more than one audio track” and the Cambridge Dictionary defined the term as “involving the mixing of several separately recorded tracks; pieces of music or sound, or made using this method”. The Cambridge Dictionary additionally provides a couple examples: “The company specializes in multi-track digital audio recording”, and “I put the whole project together in multitrack form so it can be mixed in surround sound”.
As the Panel noted, the Respondent also provided evidence of third-party common descriptive usage of the term for other websites, such as MultitrackStudio.com, MultitracksForWorship.com, Multitrack-Films.com, and MultitrackFellowship.wordpress.com. The Panelist dismissed each of these examples in turn. For example, he stated that MultitrackStudio.com “does not directly relate to the worship community” and that “the reviews on the website demonstrate that consumers understand that this is the name of the business and not simply a description of the the product – notwithstanding that on the website it states inter alia, “MultitrackStudio turns your computer into a digital multitrack music recording studio” and that MultiTrackStudio is “multitrack recording software for Windows and Mac”. The Panelist also dismissed for example, MultitracksForWorship.com because despite the evidence of its descriptive use of the term even in connection with worship music (e.g. “Each MultiTrack contains all the separate instrument and vocal parts in high quality”), the capitalization “suggests a recognition of the Complainant”, despite no evidence of that whatsoever.
The evidence that “Multitrack” and “Multitracks” are common descriptive or, alternatively, generic terms that are even employed as such by the Complainant itself, provides an indication of the reason that the Complainant selected Multitracks.com as its domain name: it describes what is on offer and plays a role in driving traffic to the website by people searching for multitracks. This reminds me of the UtahWedding.com case where the Panel noted that:
“In selecting the quintessentially descriptive name UtahWeddings.com 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.”
Nevertheless, the Complainant claimed and the Panel ultimately accepted, that “the Complainant has rights in the name MULTITRACKS including MULTITRACKS.COM”, explaining that “these rights may be limited and/or may subsist in a niche market, but Complainant is one of the key players within this market and has been recognized within this market as MultiTracks and/or MultiTracks.com for a significant time period”. In reaching this determination, the Panel noted inter alia, evidence of the Complainant’s longstanding use since 2012, evidence of 320,000 account holders, significant advertising, an affidavit from a lawyer for a Christian music record label, video recordings of the Complainant’s “MultiTracks Sessions” which garnered up to 35,000 viewers each, and various other examples of an “online presence as well as advertising, marketing, and media coverage, primarily all within the worship music or worship leader services industry”.
Application of the Booking.com Case
So, was the Panelist correct in finding that the Complainant had common law trademark rights in MULTITRACKS and MULTITRACKS.COM? He was likely incorrect regarding MULTITRACKS but conceivably correct regarding MULTITRACKS.COM, though he was not in a position to make this finding in the UDRP proceeding as will be explained below. Given that the UDRP proceeding involved two American parties, it is appropriate to have regard to the leading American case on this precise issue, the Booking.com case, however regrettably it was not referenced in the decision.
The Supreme Court in Booking.com, noted that “a generic term names a ‘class’ of goods or services, rather than any particular feature or exemplification of the class”. Undoubtedly, the evidence from the USPTO in connection with the Complainant’s mark on the Supplemental Register, combined with the Respondent’s evidence of the dictionary meaning of the term, evidence of third party usage of the term, and the Complainant’s own descriptive use of the term, demonstrates that “multitracks” refers to a class of goods, namely audio recordings that use more than one audio track. Indeed, the ordinary meaning of the word was implicitly conceded because the Complainant claimed “secondary meaning”, i.e. that although the term has a common meaning, it had allegedly acquired distinctiveness through use.
In the Booking.com case, the court noted that a generic term is ineligible for trademark registration and that it was not disputed that the word, “booking” was such a generic term for hotel reservations services. Nevertheless, the court noted that booking.com could possibly be eligible for registration since the inclusion of the .com element renders the mark as a whole, possibly capable of “convey[ing] to consumers a source-identifying characteristic: an association with a particular website”, i.e. since “only one entity can occupy a particular Internet domain name at a time… [a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity [and thereby] consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor”. Indeed, the ICA filed an Amicus Brief through its counsel, David Weslow of Wiley, in support of this position. The distinction between a generic word and a “generic.com” appears to have been lost by the Complaint and the Panel who conflated the two terms and that is why I concluded that the Panelist was incorrect when it came to finding trademark rights based upon the purported acquired secondary meaning of MULTITRACKS alone, but was conceivably correct that the Complainant had acquired a secondary meaning in MULTITRACKS.COM.
But “conceivable” does not equate to proven. For the Complainant to prevail in demonstrating that MULTITRACKS.COM was a trademark as a result of consumer perception, the Complainant would have to have provided sufficient evidence commensurate with the heavy burden that comes with proving that an otherwise generic dot-com has become a distinctive source identifier. As the Supreme Court held in Booking.com; “Whether any given “generic.com” term is generic… depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class”. The court noted that the “evidence informing that inquiry can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning. Surveys can be helpful evidence of consumer perception but require care in their design and interpretation.”
As noted in the USPTO’s Examination Guide 3-20, “Generic.com Terms after USPTO v. Booking.com”, while the Supreme Court “rejected a per se rule that generic.com terms are automatically generic” it also “specifically declined to adopt a rule that these terms are automatically non-generic” and the decision does not “otherwise significantly alter the genericness analysis to be applied to generic.com terms”. The USPTO stated that the following are examples of the type of evidence that may support the conclusion that consumers would perceive a generic.com as the name of the class of goods or services rather than being a distinctive identifier:
- a combination of dictionary excerpts defining the component elements of the generic.com term;
- significant evidence of generic usage of those elements or the combined term by consumers or competitors in the relevant marketplace;
- evidence of the “generic.com” term used by third parties as part of their domain names (e.g., “[adjective]generic.com”) in connection with the same or similar goods and/or services12; or
- evidence of the applicant’s own use of the generic.com term.
Each of these elements was arguably present in the Multitracks.com case and thereby strongly suggests that the term is generic. Nevertheless, it remains conceivable that despite this, consumers in fact perceive the term, MULTITRACKS.COM, as source identifying. In order to prove this, very strong evidence of consumer perception would be required. While the Complainant inter alia provided some evidence of longstanding use of the domain name, a substantial number of registered users, and significant evidence of marketing, no direct evidence from consumers themselves was provided, such as survey evidence or affidavit evidence, beyond a single affidavit from a lawyer for a record label.
Establishing Unregistered Rights in a Descriptive Term
The difficulty for the Complainant here, was that when it comes to proving consumer perception of a generic.com, it is likely to be at least as burdensome as proving secondary meaning in a descriptive term. It is not easy to prove secondary meaning in an otherwise descriptive term. As stated by Lord Russel in Canadian Shredded Wheat Co. v. Kellogg: Digest Volume 2.44, “the onus on the person who attempts to establish this secondary meaning is a heavy one. Where the words are purely descriptive and in common use it is even more difficult to conceive a case in which they could acquire a secondary meaning”. And as stated in Registrar of Trade Marks v. Hardie & Co. Ltd., [1949] S.C.R. 483, the burden of proof for acquired distinctiveness “increases in direct ratio to the degree in which a word or words, is in common use as a descript[or] of an article of trade or laudatory thereof”. Put another way by UDRP Panelist Tony Willoughby in UK Betting PLC v. Pam Oldfield, WIPO Case No. D2005-0637 <UKBet.com> (August 31, 2005): “Descriptive names are capable of acquiring distinctiveness (e.g. BRITISH AIRWAYS and BRITISH PETROLEUM), but the more descriptive the name, the more by way of evidence that a court will require to establish reputation and goodwill”.
Use of a mark is of course a crucial factor, however, use alone does not necessarily achieve the requisite acquired distinctiveness. The reason that use alone may be insufficient, is that mere usage of a generic or descriptive term, even for a length of time, does not necessarily confer common law trademark rights in a descriptive term. As explained in the WIPO Overview: “In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” And this evidence, must be strong and serious as held by the Panel in Chandler Horsley v. Fundacion Private Whois, NAF Claim Number: FA1305001497825:
“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…”
Fair or Unfair Competition?
The reason that I have focused so much on the first element of the UDRP, is because the analysis of the remaining two elements is entirely contingent upon its determination. Once the Panelist found trademark rights in a generic dot-com, it basically followed (at least according to the Panelist’s analysis) that the Respondent competitor’s registration and use of it was necessarily illegitimate and in bad faith. To employ an analogy, once a Panel determines that a Complainant has rights in PEPSI.COM, it is difficult to imagine any scenario where a Respondent can demonstrate rights and good faith in registering and using a similar domain name, especially where the Respondent is a competitor. On the other hand, if MULTITRACKS.COM was not demonstrated to be a trademark as understood by law, then the Respondent would have every right to use it, even for its competing business. To employ another analogy, it would be like a Respondent having every right to draw traffic to its Book.com website that sells books, even though the Complainant happens to already use Books.com as its domain name. One could argue that it is ”unfair” or constitutes “unfair competition” to intentionally draw traffic to the Respondent’s business by forwarding MULTITRACK.COM to its website as the Respondent did here, but absent trademark rights in MULTITRACKS.COM or any actual passing off in terms of look and feel etc., there is no legal basis for such a complaint since the Respondent is lawfully using a common generic word domain name related to its business and the Complainant enjoys no exclusive rights whatsoever.
The words of Lord Simonds, speaking for the House of Lords in Office Cleaning Services, Ld. v. Westminster Window and General Cleaners, Ltd., (1946) 63 C.P.C. 39 are particularly relevant in this regard:
“…It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.”
In other words, when a company adopts a word for its domain name that is the generic name for its goods or descriptive of the nature of its business, it will get much benefit on the Internet, but it has its downside too when compared to a distinctive and arbitrary brand.
Using the Respondent’s Registration as Proof of Secondary Meaning
One might also argue that the fact that the Respondent knowingly selected a domain name closely resembling that of its competitor, evidences that at least in the Respondent’s mind, it contained enough of the Complainant’s goodwill to make it attractive and thereby is proof of the existence of a secondary meaning. This argument however, presupposes that the Complainant has rights which exclude the Respondent from doing so, whereas in the absence of trademark rights, the Respondent can lawfully adopt a similar domain name even with the intention of drawing traffic away from the Complainant because the Complainant has no monopoly over the term and indeed, at least some of the Complainant’s traffic ostensibly comes from those looking for multitracks rather than the Complainant per se. Whatever windfall the Respondent may obtain in such a case, is the price that that the Complainant fairly pays for having adopted a common word and enjoying the benefit of it.
Moreover, this is a circular argument. WIPO Overview at 1.3 states that, “the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”. But as astutely noted by Panelist Nick J. Gardner in the south-coast-company case, which was kindly drawn to my attention by my colleague Igor Motsnyi:
“this approach may support a case where there is other evidence which is of a doubtful or marginal nature, but normally it would not constitute the sole evidence of unregistered rights. If that was not the case then the test would be entirely circular and any term used in a domain name could be said to support a finding of unregistered trademark rights – which is clearly not the intention of the Policy.” [emphasis added]
In the case at hand, there is no evidence of any misuse, passing off, or fraud by the Respondent who only uses the domain name to forward to its website. It is conceded that the Respondent must have appreciated that it would likely receive some errant traffic intended for the Complainant by virtue of the similarity of the respective domain names, however in the absence of any other evidence demonstrating trademark rights held by the Complainant, this factor alone is not enough to confer such rights since the word is generic and all traders are allowed to use it. Indeed, the Respondent’s website refers to multitracks as what if offers consumers for sale:
Scope of Trademark Rights in Generic dot-com Domain Names
That being said, even assuming that the Complainant had trademark rights in MULTITRACKS.COM, the Bookings.com case suggests that those rights may be so limited that they do not in fact prevent use by a competitor using Multitrack.com, the singular. The Supreme Court noted that a “registration for Booking.com would not yield its holder a monopoly on the term booking”. The court also noted that Booking.com conceded that the mark would be a “weak mark” making it harder to show a likelihood of confusion, and even accepted that “close variations are unlikely to infringe”. Accordingly, it is not certain that even if the Complainant in this case had demonstrated trademark rights, that “confusing similarity” would necessarily follow, although this is another instance of a complex issue that is not suitable for UDRP adjudication.
I have already mentioned that given the Panel’s finding on the first element, it did not take much for the Panel to make findings in favor of the Complainant on the other two elements. But I will nevertheless briefly canvas them as I see issues there as well. It appears that the Panel misconstrued the Respondent’s evidence and argument regarding “rights and legitimate interest”. The Panel acknowledged the Respondent’s argument that it has a legitimate interest in the disputed domain name “because it has used it to provide information about multitracks to consumers” but did not accept it because the Respondent’s use “has not primarily been informative” since it was not used “non-commercially” and did not constitute “fair use”. I do not think that the Respondent was at all making the argument that its use was non-commercial or constituted “fair use”. Rather, the Respondent was pointing out that it used the Domain Name to forward to its website which offered information and services related to multitrack audio recordings and therefore was bona fide and used descriptively, particularly in the absence of any Complainant trademark rights. Forwarding generic and descriptive domain names to a website to garner additional traffic is a well-established and lawful practice.
Why Didn’t the Complainant Have a Registered Trademark?
It is indeed curious that despite being in operation since 2012, the Complainant never obtained a trademark registration for MULTITRACKS.COM. When it did apply for a trademark registration, it was for MULTITRACKS CLOUD in 2015, and it was refused except on the Supplemental Register. The Complainant applied for MULTITRACKS STREAMING as well in 2015, and that was also refused by the USPTO because it was merely descriptive, and the application was subsequently abandoned. It is quite likely that the Complainant thereby knew very well that obtaining a trademark for a generic term was nearly impossible in the circumstances so did not even bother until just this past November 2022 when it applied for MULTITRACKS.COM. That application has yet to be examined. As such, the Panel could have deferred to the outcome of that application process rather than deliver a judgment.
Bad Faith is Contingent Upon Trademark Rights
I will briefly touch upon the Panel’s finding regarding bad faith registration and use. The Panel inter alia found that the “Respondent acquired the domain name primarily in order to redirect website traffic from multitracks.com to loopcommunity.com” and as such the “Respondent’s conduct is an act of typosquatting” and runs afoul of Paragraph 4(b) of the Policy. I do acknowledge as the Panel found, that it is inescapable that the Respondent registered the Domain Name with full knowledge of its competitor and with the expectation that the Respondent would likely gain errant traffic intended for its competitor. Nonetheless, as with legitimate interest, this is only wrongful if the Complainant enjoys a trademark in MULTITRACKS.COM which prevent the Respondent from using MULTITRACK.COM, which is at best, unclear. Otherwise, it is merely both parties which are lawfully exploiting the value of domain names corresponding to generic terms and the Complainant can only fault itself for promoting a common term as its “brand”. If, however, it turns out that the Complainant did have such trademark rights prior to the Respondent’s registration of the disputed Domain Name, then the Respondent’s registration and use would likely be considered in bad faith, but this again is a complex and nuanced matter for the USPTO and/or a court to decide, rather than in an expedited UDRP hearing.
The Limited Scope of the UDRP
Given the foregoing, it seems questionable at best, whether the Complainant met its evidentiary burden, particularly in light of the evidence of common usage that the Respondent provided. That is not to say that with a full evidentiary hearing, the Complainant would not be able to demonstrate the requisite level of consumer perception required in order to attain trademark status. The USPTO appears to continue to be vigilant on rejecting such applications except in the clearest of cases and that is what this comes down to. This is not the clearest of cases. The UDRP is only intended to adjudicate clear-cut cases and not to adjudicate disputes involving competing trademark rights, or to award trademark rights in questionable cases, or to decide matters that are best left to the courts (see for example, Final Report of the WIPO Internet Domain Name Process (April 30, 1999) and also see Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, at paragraph 4.1(c): “the Recommended Policy is minimalist in its resort to mandatory resolution”.
And that is where the Panel’s approach to this case ultimately breaks down. It was not for the Panel to wade into a very unclear case involving competitors battling over whether or not a generic dot-com has acquired secondary meaning in the minds of consumers, particularly given the equivocal, incomplete, and limited evidence that was presented and which is generally typical for an abbreviated UDRP proceeding. The Panel ought to have recognized this, at least when he determined that despite two submissions by each party having already been submitted, he still did not have enough evidence and issued a Procedural Order requesting more.
Prudent panelists have the requisite circumspection and restraint when it comes to their role in the UDRP and will not seek to unnecessarily aggrandize their role by deciding cases which are not suited to the UDRP. This case was not suited to the UDRP, not only because the legal issues are particularly novel given the recent Booking.com case and given the complex nature of the fundamental question at issue, but also because it goes far beyond the scope of what a Panelist is expected to adjudicate. This is not a trademarks court, but a forum for dealing with clear cases of cybersquatting. That this was a ‘clear case suitable for UDRP adjudication’ is belied by the extent to which the Panelist found the initial evidence wanting, the existence of competing evidence and compelling legal narratives, and the apparent difficulty in reaching a decision. Panelists need not do that. They do not get paid enough to do it and courts are far better equipped to handle such cases.
Panelists also ought to be hesitant in upending the status quo without clear-cut justification. “Do no harm” serves as an important principle for doctors, but also for UDRP Panelists. By upending the status quo, a Panelist is effectively shifting the burden onto the Respondent by forcing them to rush to court within 10 business days to block the ordered transfer. Instead, where the legal or factual issues are unclear, a Panelist ought to leave the status quo alone and invite the Complainant to take its unclear case to court and thereby maintain the status quo until such time as a court can adjudge the case on a full record and with all the procedural safeguards available. Panelists aggrandizing their role and pushing forward with a transfer decision despite numerous indications that the dispute is ill-suited for resolution under the UDRP, creates needless harm and is antithetical to the purpose and the spirit of the UDRP.
Going to Court?
Ultimately, court is where this matter appears headed, with the Respondent likely filing a federal lawsuit to overturn the UDRP transfer order. We will closely monitor the outcome.
For another perspective on this case, please see Panelist Jeff Newman’s blog.