homeseal2lgThe decision in blue-mountain-coffee.com is a text book example of a UDRP complaint which lacks basic evidence.

First, I am not a fan of arbitrators finding one missing element in a UDRP Complaint and then saying that as a result there is no reason to discuss or analyze the other elements that may/may not be missing on the basis that it is unnecessary – as the arbitrator in this case did.  It takes away from getting a full view of the case and particularly, as in this case, where there is a claim of reverse domain name hijacking, it becomes tough to see whether or not the arbitrator gauged the claim fairly – i.e., if the other two required UDRP elements were present, then maybe finding that there was no reverse hijacking was the right call (and visa versa).

Second, it seems that the Complainant was a non-exclusive licensee of the Coffee Industry Board of Jamaica (“CIBJ”) (the trademark holder), which granted Complainant permission to use the mark JAMAICA BLUE MOUNTAIN COFFEE, a mark for which the CIBJ owns two federal trademark registrations.  The arbitrator found that the Complainant did not have rights to the mark BLUE MOUNTAIN COFFEE via a non-exclusive license with the CIBJ to use the JAMAICA BLUE MOUNTAIN COFFEE mark.  This would be the equivalent of a finding that a plaintiff in a trademark lawsuit did not have standing to bring the suit in the first place because it did not have enforceable rights in the mark.  This is a pretty egregious error in the context of a lawsuit and one that could lead to an attorney being sanctioned for failing to properly vet the case before filing the complaint.

Further, it does not appear that the Complainant proffered evidence to support its claim that it had common law rights and had spent a great deal of time/money to promote the mark.  The decision notes: “[t]he Complainant also claims that it has expended a large amount of resources promoting its business publicly under the mark, but has not provided any evidence in support of that statement to convince the Panel. […] Complainant’s own submissions appear to reflect that Complainant is a mere licensee of the CIBJ, and has not provided any convincing evidence that the Complainants use can be considered as creating a common law rights in BLUE MOUNTAIN COFFEE as a trademark.” (emphasis added)

Lastly, I am not sure how the Complainant could argue that licensed rights in a certification mark for JAMAICA BLUE MOUNTAIN COFFEE could be the proper basis for asserting that it held common law rights to the different (and non-certification) mark BLUE MOUNTAIN COFFEE, particularly when the trademark registrations which the CIBJ owns are both geographic certification marks (i.e., symbols/words which verify that the coffee with these mark(s) were grown in Jamaica according to certain standards/process, that must carefully monitored by the mark owner).

As a matter of policy the USPTO will not allow a party that uses a geographic certification mark on its goods to try and register a name with that mark without the consent of the owner: “USPTO policy precludes the approval of subsequent applications for the same goods for marks that contain a registered certification mark without the certification mark owner’s consent. Once registered, these geographic certification marks are private property rights – they are no longer just descriptive terms.”  Although not the situation in this case, it does point to the nature of geographic certification marks and the fact that they are subject (by their very nature) to a high level of scrutiny and monitoring because certification marks, unlike a regular trademark, are a set of criteria applied to other people’s products which verify the quality/source of that product.

An interesting decision, and one where I am pretty surprised that the reverse domain hijacking claim was not granted.

 

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