UDRP is not centric to any particular national law, but where the parties are “domiciled in the United States and United States courts have recent experience with similar disputes … the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 24, 2000). The dispute in Live Link, Inc. v. R Schwartz and Virtual Dates, Inc., FA1007001333180 (Nat. Arb. Forum August 26, 2010) concerned accrual of right where the Complainant relies on a trademark registered on the Supplemental Register. While a trademark registered on the Principal Register is presumptively valid and unassailably satisfies the threshold requirement for UDRP standing – once “the USPTO has made a determination that a mark is registrable, by so issuing a registration … an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003) – the result is otherwise with the Supplemental Register.
Registration on the Supplemental Register “provides the Complainant with no protectable rights” in the alleged mark, CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Octobrt 30, 2001). Indeed, it is “evidence that there are no common law rights at the time of application,” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, D2002-1103 (WIPO January 20, 2003). It signifies that the generic or descriptive mark is incapable of crossing the threshold of distinctiveness accorded to marks enrolled on the Principal Register. Nevertheless, having a registration on the Supplemental Register “shall not constitute an admission that the mark has not acquired distinctiveness,” 15 U.S.C. §1095.
Although not an admission, registration on the Supplemental Register certainly challenges the complainant to prove secondary meaning. In Live Link the Complainant argued that it had been “using the Mark variably as ‘Gay Live,’ ‘Gay Live Network,’ ‘Gay Live [with City Name]’ and ‘1800gaylive’.” However, since the Complainant submitted no evidence of trademark rights in marks other than GAY LIVE NETWORK and GAY LIVE, the Panel limited its analysis to those two marks. The former trademark was originally registered on the Supplemental Register and subsequently abandoned. The latter trademark was registered on the Principal Register 10 years after the registration of the domain name. The Complainant was challenged to prove that it acquired its common law trademark prior to the Respondent’s registration of <gaylive.com>.
The difficulty, of course, begins with the documentary evidence. Although the Complainant had represented first use in commerce on its original application that resulted in registration on the Supplemental Register earlier than the domain name, it offered no evidence to support the claim. At best, the “effective date of Complainant’s federal rights is . . . the filing date of its issued registration,” Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), which in Live Link post-dated the domain name.
“Prior UDRP panels have expressed skepticism that a supplemental trademark confers rights to the owner until it is converted into a principal registration,” citing Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc., FA 1292233 (Nat. Arb. Forum November 5, 2009). Registration on the Supplemental Register carries little, if any, weight under United States law. “Even setting aside the contrary statements about the date of Complainant’s first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness,” Phoenix, supra., citing T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372 (Fed. Cir. 1996); Lucent Information Management, Inc. v. Lucent Technologies, Inc., 186 F.3d 311 (3rd. Cir. 1999).
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com