One of the provisions for securing a mark is acquiring notoriety. Notoriety here does not mean in a negative connotation but should be read in a positive concept of popularity. However, what does notoriety mean for non-profit organizations and how can it be established?
The International Truth and Justice Project is a NGO based in the UK. The NGO talks about and advocates Human Rights in Sri Lanka. The organization claimed common law rights over the name, its combined form and logo on the merit of continuous usage since 2015. The NGO also mentioned pending UK Trademarks applications related to the same.
The organization was troubled by the existence of the registration and use of the domain name ITJPSL.org. The Company thus filed a Complaint at the Arbitration Center for Internet Disputes. The Complainant claims that the website deployed at the domain name presents information about the activists. The website uses a logo that appears similar or identical to the Complainant’s mark.
The Respondent made procedural submissions regarding the case. The panel discussed the first criteria for a UDRP complaint to succeed.
The panel discussed whether the domain name in concern was confusingly similar or identical to a mark in which the Complainant has established rights. To that, the panel found that the Complainant has no such rights. Regarding the establishment of common law rights, the panel noted that this was decided by the popularity.
The panel also considered that the bar of such popularity should be lowered for a non profit entity such as the Complainant. But even on the lowering of that bar the Complainant has failed to acquire such popularity in the observation of the panel.
On this ground the panel didn’t investigate other provisions of the UDRP as failing of any criteria leads to the cancellation of Complaint. The Complaint here was thus denied.
You can read the case in detail here.