Laws are not as compact as most people might think. There are lots of pores in it, visible only to the ones familiar with it. These pores are the gray areas mentioned in the law. This gives the stakeholders and judicial authorities a room to stretch their legs. A similar gray area is the notion of common law rights and descriptiveness of a brand name.
Forum witnessed a case related to the domain name WeatherUSA.com. The Complainant is weatherUSA, LLC. The Complainant operates on the domain name weatherUSA.net. The Complainant claims common law trademarks over WEATHERUSA mark since 2001. The Company also obtained the USPTO mark over the term in November 2019.
The Respondent had acquired the domain name in 2013. The Respondent is currently using the platform to publish weather related information and advertisements. The Respondent claims that the Complainant does not have sufficient evidence to support its common law rights claims over the terms concerned. The Respondent also pointed out the fact that they had registered the domain names before the Complainant filed for trademark rights.
The panel found that although the Complainant has been operating a business over the mark for a long time, the terms involved are too generic in nature and a claim that these terms have acquired secondary meaning since the Complainant’s use of it, would be a farce.
The Panel denied the Complaint.
You can read the full case here.