More often than expected complainants (even those represented by eminent counsel) commence proceedings without fully understanding the requirements of the UDRP or their burdens of proof. Having rights as a condition for maintaining a UDRP proceedings means present rights, whether registered or unregistered, but it does not include applications to register an intent to use mark or a mark on the Supplemental Register (unless there is market history that will support a claim under common law principles). There is precedent for complainants refiling complaints following receipt of their certificates of registration.
However, simply having a registration on the Supplemental Register carries no presumption that the trademark is other than generic, which is the reason it was put there in the first place. It implies that the applicant could not when it filed the application demonstrate distinctiveness for the claimed term, National Association of Competitive Soccer Clubs v. Bruce Binler, D2009-0957 (WIPO September 7, 2009), Panel citing himself from an earlier decision Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, D2007-0875 (WIPO December 4, 2007) . The Complainant’s application to register US CLUB SOCCER on the Principal Register was rejected in 2005; the Respondent registered in 2007 and uses the website for the purposes denoted by the name. There is no issue that on a side by side comparison the domain name and the alleged trademark are identical. However, the Panel properly focuses onwhether Complainant has a trademark right. If there is no trademark, there can be no jurisdiction.
The case was further complicated by Complainant claiming a trademark but withholding the fact that the mark was registered on the Supplemental Register: “[N]or does it disclose that Complainant’s initial application to the USPTO for registration on the Principal Register was rejected.” Shaving the truth has consequences. If an applicant is unable to persuade the PTO Examining Attorney that a proposed mark is distinctive it cannot succeed with the Panel unless it is able to establish that in the interim between the application and commencing the proceedings the term has accrud secondary meaning. While the Complainant “had the opportunity to address the concerns of the USPTO and shared by this Panel” it failed to do so.
If the basis for a complainant’s contention that its trademark right rests on the registration on the Supplemental Register alone then it cannot succeed without adding to the record proof of its common law credentials, which is precisely what it failed to do in its USPTO application. “Had Complainant (who is represented by U.S. counsel) wished to address the importance of the rejection by the USPTO, and the terms of that rejection, it is reasonable to assume it would have done so in the Complaint. It did not do so, and the Panel draws the appropriate inference from such omission.”The takeaway lesson is understanding what is expected of the complainant:
The complaining party in a proceeding under the Policy is expected to present its case in its initial pleading. This sole panelist is reasonably flexible in terms of seeking supplemental information from parties that might not reasonably have been understood to be necessary to reaching an informed decision. In the present circumstances, the Panel finds no compelling basis for seeking additional information from Complainant on the issue of the claimed service mark and distinctiveness thereof.
Proof of secondary meaning is within the complainant’s knowledge. If it does not offer it, the inference is that it does not exist.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.