Ordinarily, a complainant proves ownership of a trademark by displaying a certificate of registration from a national registrar; or, if unregistered by proving use in commerce for a qualified period of time. Having documentation and attaching it to the complaint is easier than having to prove a right which entails proving a reputation reaching back to a time prior to the registration of the domain name. Current reputation for an undocumented right is not sufficient to establish standing, although an applicant whose goods and services are already offered in the marketplace has more credibility and a greater likelihood of a having a paper trail to prove reputation than one applying on an “intent to use” basis. The UDRP database is littered with decisions denying standing for undocumented rights, particularly for marks on the lower end of the classification scale.
A successor in interest to a trademark is in a position similar to a party claiming a common law right in that the right has to be documented, which under ordinary circumstances should not be challenging since the party claiming the right controls the documentation. It is therefore unusual to encounter a case in which the complainant, alleged successor to a mark has failed to document its right, but such was the case in Commercial Vehicle Group, Inc. v. Worldwide Media, Inc., FA1309001518310 (Nat. Arb. Forum October 18, 2013). The Panel noted that
Complainant’s name is Commercial Vehicle Group, Inc., located at 7800 Walton Parkway, New Albany, OH 43054. However, in the evidence, the ROADWATCH mark was assigned to Commercial Vehicle Systems, Inc. located at 171 Great Oak Drive Canton NC/USA 28716. Moreover, according to the Complainant’s evidence, Commercial Vehicle Systems, Inc. changed its name to Sprague Devices, Inc. in May 2005. Sprague Devices, Inc. is the last registered owner of the ROADWATCH trademark. Therefore, Commercial Vehicle Group Inc. does not appear anywhere in the evidence.”).
All of this could have been resolved with documentation showing step-by-step the mark’s ownership journey from the original to complainant. The Panel preferred not to decide the matter “solely on a technical issue” – he would (he stated) “consider the matter as though the Complainant provided proper evidence of the registration and related assignment for the ROADWATCH mark with the United States Patent and Trademark Office (Reg. No. 2,159,429 registered on May 19, 1998). Nevertheless, it was clear that Complainant failed to prove either Respondent lacked any rights or legitimate interests or registered or was using the domain name in bad faith.
The problem here (the Complainant was represented by counsel) is a failure to understand the evidentiary demands of the Policy and its procedures. Initiating a UDRP complaint is equivalent to filing a motion for summary judgment in a court of law. It is very unlike a complaint in a court of law, which is sufficient by giving notice of the cause of action. The UDRP complaint together with attachments has to be cogent and complete on delivery to support an award. Similarly with the response. There’s only one chance to persuade the Panel. If the complainant is an assignee of the trademark, not the original registrant it has to prove, not just allege its case. Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Form Feb 21, 2008) (whose right was based on an assignment of a federally registered mark).