By Steve Levy
I recently issued a UDRP decision that offers a clear illustration of two recurring principles in domain name jurisprudence. The complaint against the domain name <greatstreettimmiller.com> was denied on two independent grounds. First, the Complainant failed to provide evidence sufficient to establish common law trademark rights in the term GREATSTREET as used in its commercial real estate business. Second, the Respondent’s website was found to be a legitimate noncommercial criticism site directed at one of the Complainant’s Principals, which placed the use squarely within the fair use protections recognized under the Policy.
The Complainant asserted that it had used the GREATSTREET name for more than two decades and that the commercial real estate industry and the consuming public recognized the term as a source identifier for its services. But the decision emphasized that assertions alone are not enough. To establish common law rights, a complainant must provide documentary evidence showing that the claimed mark has acquired distinctiveness. Panels typically look for Complainants to submit examples of advertising materials, sales figures, media coverage, social media engagement, unsolicited press, sponsorships, trade show participation, or other proof that the claimed mark has had extensive exposure and that, as a result, the public has come to associate the name with the Complainant. Here, the Complainant submitted only two screenshots from its own website. In the decision I noted that the images were genuine, but found that they did not demonstrate substantial public use or secondary meaning of the claimed trademark. As the decision noted, unsupported statements about reputation or industry standing cannot satisfy the burden of proof. Without evidence of acquired distinctiveness, the Complainant could not meet the first requirement of the Policy.
Although that failure alone required dismissal under the first prong of the UDRP, I went on to address the Respondent’s use of the domain name. The website displayed warnings about Tim Miller, one of the Complainant’s Principals, and included sections describing alleged personal experiences with him. The site also expressly stated that it was an opinion-based consumer warning. There is no indication of commercial activity on the site, no attempt to impersonate the Complainant, and no evidence that the site was a pretext for some other purpose such as fraud, impersonation, or any other type of cybersquatting. Instead, it appeared to be a straightforward criticism site. Under par. 4(c)(iii) of the Policy, a Respondent may make a legitimate noncommercial or fair use of a domain name when the purpose is commentary or criticism and there is no intent to mislead users for commercial gain. Here, this standard was met.
The decision reinforces two important points. A Complainant relying on common law rights must present real evidence, not broad and unsupported claims about reputation. And the UDRP is not a mechanism for suppressing critical speech when a Respondent uses a domain name for genuine commentary. This case stands as a reminder of the limits of the UDRP and that it draws a clear line between trademark enforcement and attempts to silence criticism.