A complainant in domain name arbitration proceedings must establish rights in the trade mark or name used to ground the complaint.
For example, the Uniform Domain Name Dispute Resolution Policy (UDRP) only applies where: “[the registrant’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (Paragraph 4(a)).
Similarly, the Nominet Dispute Resolution Services (DRS) Policy only applies where the domain name in question was registered or otherwise acquired in a manner which trespassed upon the “Complainant’s Rights”: “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business ” (Paragraph 1).
Under the .eu Alternative Dispute Resolution Rules (ADR Rules), a complainant must show that the domain name is “…identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law” (Paragraph B11(d)(1)(i)).
Generally speaking, this is one of the easiest things to show in a domain name arbitration.
A relevant registered trade mark will almost always be sufficient to establish rights. For example, the WIPO “consensus view” is that, if a complainant owns a registered trade mark that will automatically satisfy the threshold “rights” requirement. For decisions made under the UDRP, the jurisdiction in which the trademark is registered will be irrelevant. However, Nominet DRS proceedings will usually only take account of UK or Community trade mark rights in connection with this requirement; and .eu ADR proceedings will usually only take account of Community trade mark or EU national trade mark rights in connection with this requirement.
Where complainants do not have relevant registered trade mark rights, they will have to rely upon unregistered trade mark rights. This usually means providing evidence of rights enforceable under the law of a particular jurisdiction. For example, a UK-based complainant without registered rights would seek to argue that it had rights under the law of passing off. Evidence might include details of the complainant’s business, history, sales and marketing.