Subway doesn’t meet low burden of proof and loses domain dispute.
When you see a UDRP case for the domain name MySubwayRewards.com, you assume that the sandwich chain will get a slam dunk. It should be an easy case, especially when the respondent uses the domain name to promote free gift cards to Subway. But that doesn’t mean the complainant gets away without making a basic case.
That’s exactly what happened in the case of Doctor’s Associates Inc. v. Atomix. Doctor’s Associates, which operates and franchises the Subway chain of sandwich restaurants, failed to submit enough evidence to show that MySubwayRewards.com was confusingly similar to the company’s Subway marks. After all, on the surface the domain name could be used to reward people for riding the New York City Metro.
The panelist wrote:
Complainant, however, offers no evidence that it has rights in the mark MY SUBWAY REWARDS, or SUBWAY REWARDS, or MY SUBWAY, nor any explanation or argument as to why the phrase “mysubwayrewards†in the domain name is identical or confusingly similar to the mark SUBWAY.
In other words, give me something — anything — that shows you’re making an effort here rather than counting this case as a done deal.
In this Panel’s view, it is insufficient simply to demonstrate rights in a word that forms a part of a domain name particularly where, as here, the mark itself, SUBWAY, is bracketed between other words which could quite conceivably be used in combination to convey meaning unassociated with the SUBWAY mark per se. It becomes necessary, especially in such cases, for a complainant to advance arguments sufficient to demonstrate identity or confusing similarity of the domain name to the mark at issue. A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word.”…
…Although the burden of proof under the first element is not a high one (Research in Motion Limited, supra) the Panel considers that it is nevertheless incumbent on a complainant to make its case as to identity or confusing similarity. To conclude that the domain name mysubwayrewards.com has been shown on the limited pleadings submitted to be identical or confusingly similar to the mark SUBWAY requires a leap that this Panel is not comfortable making.
Ouch.
BidNo says
What a refreshing change! A panelist requiring a case be proven versus accepting any filing as sufficient and surmising the evidence.
Bravo!
John Berryhill says
This is the flipside of badly-based transfer decisions. Some attorneys get the impression that UDRP panels are handing out domain names like candy, and believe they only have to show up in order to win.
This is particularly a problem at WIPO because what you might think is a “household term” of a trademark may be utterly unknown to the panelist. That does not mean you need a forklift palette’s worth of evidence, but complainants should not assume they are well known to whatever panelist is appointed.
Here, something in the way of showing that Subway has a reward program of some kind (I don’t know if they do), would have cinched it. That would be worth a single page of evidence.
Mansour says
I am glad it is just a sandwich not the New York subway %80 of New Yorkers want know how to get home. by the way anyone want to buy NewYorkers.org I like to sell it, sorry Andrew you get some one and a while I get some.
page howe says
this is noice to see in a decision.. almost too much common sense i had to read it twcie..
A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word.”…
Sander Morehead says
Indefensible decision. It is clear that panels are trying to purge their reputations for rubber stamping requests for transfers by going to the other extreme and rejecting claims like this one.