Complaint for cloudprovider.com denied at WIPO while Panelist acknowledges domaining

This was the first UDRP Complaint for a descriptive “cloud” related domain name and of course the Complaint was denied. I am sure a the cloud popularity increases many “cloud” UDRPs will follow.

The Complaint for the domain cloudprovider.com was filed with the WIPO Arbitration and Mediation Center on June 14, 2012. The disputed domain name cloudprovider.com was registered on April 8, 2008.

The Complainant was XXL Webhosting B.V from Leeuwarden Netherlands and the Respondent was J Lapp from Scottsdale Arizona. The Respondent did not reply to the Complainant’s contentions but that didn’t stop the Panel from dismissing the Complaint.

The Complaint failed on the first element of the UDRP: Identical or Confusingly Similar.

The disputed domain name cloudprovider.com was registered on a date (April 8, 2008) prior to the date the Complainant registered their domain names cloudprovider.nl, cloudprovider.eu (both September 18, 2008) and cloudproviderusa.com (October 2, 2011). Therefore the Panel concluded that the registration of the disputed domain name predates the time the Complainant commenced offering its relevant services.

The Complainant had no relevant registered trademarks so Complainant had to establish that it had rights in the unregistered mark. It is not impossible for a Complainant to establish that it has rights in a descriptive or generic term or terms, but it must advance sufficient evidence of secondary meaning acquired by use. The terms must distinguish the Complainant as the source of the particular services or goods offered under the mark. In the present case, the terms “Cloud Provider” are inherently descriptive, as they describe a provider of cloud computing services or on-demand server space. The Complainant itself admitted the terms have “a certain generic character”. The terms are descriptive of the kind of service the Complainant provides. Consumers of computer storage products and services would be familiar with the meaning of these terms in their descriptive primary sense. Neither word is created or invented or fanciful, or combined in a particular or unusual way.

The Complainant did not provide data concerning turnover or sales, client numbers, advertising expenditure or volume, and the like. Nor did it provide consumer survey evidence. It did not provide evidence of cumulative data over a period of time. Further the evidence the Complainant did supply did not provide any historical data going back to 2008.

The Complainant  claimed that it uses as its mark and business name “CloudProviderUSA” and also uses the domain  cloudproviderusa.com, although the Panel noted that in the screenshot it provided of the CEO’s profile, there was a statement that “Cloud Provider” is only active in the Netherlands. 

The totality of this evidence was not, in the Panel’s view, sufficient to establish the secondary meaning or distinctiveness the Complainant contended for. The Panel noted that local reputation might be sufficient for the purpose of establishing rights in a common law mark. However, the evidence before the Panel did not on the balance of probabilities establish that in the Netherlands alone the terms have the necessary secondary meaning.

In conclusion, because: of the inherent descriptiveness of the terms at issue; of the insubstantial nature of the evidence of secondary meaning provided; of the absence of historical data concerning the volume and extent of the service offerings of the Complainant, or of its use of the terms “Cloud Provider”; of the fact that establishing distinctiveness of a particular representation of descriptive terms is not by itself enough to establish distinctiveness of the terms not so represented; the term “CloudProvider” was commonly used by the Complainant in a particular colour and script and in combination with a particular device; and because there was no evidence before the Panel of the volume of advertising, consumption or broad consumer perception of the Complainant’s services even in the Dutch market, the Panel was not persuaded that the Complainant has established sufficient rights in the terms “Cloud Provider” for purposes of satisfying the first element of the Policy in this proceeding.

Moreover, the Panel noted that the disputed domain name was apparently registered before the Complainant started to use the incorporated terms for its own service, and before it registered any domain names incorporating those terms. Therefore it is not apparent that the Respondent registered the disputed domain name in bad faith, nor can it be said on this record that in the absence of competing trade mark rights he has no legitimate interest in a domain name that is descriptive of a class of services. It may be perfectly legitimate for a party, when a new descriptive term such as cloud computing starts to emerge, rapidly to register it with the intent of turning it to account once it has become common currency.

So the Sole Panelist acknowledged the domaining industry by confirming that any person can have legitimate interests in a domain name that comprises from descriptive terms.

So the Panelist concluded that the Complainant did not made out that the disputed domain name was identical or confusingly similar with a trademark in which it had rights and the Complaint was denied.