TRADE MARK INFATUATION

What do a viral disease and a tax authority have in common? A domain name.

Trade Mark Infatuation is Lexsynergy’s coined term used to describe a trade mark owner who has fallen in love with its own trade mark (or a lawyer that admires their client’s trade mark), blurring reality and making them unable to see inherent weaknesses in enforcing their trade mark online.

It can be compared to a parent of an ill-behaved child who cannot objectively see that their child is behaving poorly or annoying others. We all know those parents!!!

SARS.APP DOMAIN DISPUTE

In the online world trade mark infatuation can have serious consequences.

The SARS.APP domain dispute is an example of trade mark infatuation.

The South African Revenue Service (SARS) is a well-known acronym within South Africa. It is the South African version of the Internal Revenue Service (IRS) and Her Majesty's Revenue and Customs (HMRC).

SARS filed and lost a domain complaint (UDRP) against a Chinese individual (Respondent) who did not respond to the complaint. Losing an undefended complaint is unforgivable.

Why did the complaint fail?

The Panelist (Matthew Kennedy) had an issue with the third element that a Complainant must prove to succeed in a UDRP complaint, namely that the domain was registered and used in bad faith. Mr Kennedy said, “A finding in a complainant’s favour on this element normally requires a finding that the respondent targeted a complainant’s mark.”

The Complainant overlooked some key issues:

  1. SARS is a four-letter acronym that has a dictionary meaning. “SARS (noun Pathology) Severe Acute Respiratory Syndrome: an acute respiratory illness caused by a coronavirus, characterized by fever, coughing, breathing difficulty, and usually pneumonia.”
  2. The Respondent must have been aware of and targeted the Complainant’s mark at the time that the domain was registered.
  3. The Complainant provided limited evidence of use of its mark. The evidence that was provided was from the Complainant’s websites and Facebook pages targeting South African taxpayers.

The Respondent was based in China and the domain did not resolve to an active website. Mr Kennedy stated that he “cannot find that the Respondent necessarily knew or should have known of the Complainant’s mark at any time prior to receiving notice of this dispute.”

He went on to say “The Complainant refers to prior decisions under the Policy, including Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866, for the proposition that “the registration and use of domain names ‘so obviously connected with such a well-known product… by someone with no connection with the product suggests opportunistic bad faith’”. The Panel considers this proposition inapposite in the present proceeding because the Complainant has not established from the evidence that its trademark or product is particularly known.”

SARS is well-known in South Africa but not beyond its borders. Do you know the abbreviated name of the Peruvian tax authority?

The Complainant did not mention the SARS virus, which was surprising given that it is the first result on Google for the searched term “SARS”, outside of South Africa. Furthermore, the domain was registered during the coronavirus outbreak, which was identified in China where the Respondent is based and where the SARS outbreak emerged during 2003.

REALITY CHECK

One way to avoid the afflictions of trade mark infatuation in the domain space is to do your homework and conduct an in-depth investigation into a matter before filing a domain complaint. Put yourself in the shoes of the Respondent. If your research reveals weaknesses, you need to address them or change your recovery strategy.

Additionally, Lexsynergy can assist by providing an objective, third-party viewpoint in regard to the global awareness of a trade mark and how it may affect the outcome of a complaint. This unbiased perspective can be difficult for the trade mark owners and their lawyers to recognise.

During the writing of this article, we identified that the domain SARS.APP had not been renewed. We placed it on our backorder service, which snapped it up when it became available. This clearly demonstrates that there are other ways to secure a domain. It is further surprising that the Complainant’s lawyers did not monitor the domain for a potential backorder recovery.

We invite SARS or their lawyers to contact us so we can hand over the domain at no charge.

Lexsynergy has a 100% record in domain complaints. Contact us at brandprotection@lexsynergy.com to recover your domain.