Internet Commerce Association Events at Namescon

By Zak Muscovitch

The Internet Commerce Association has two great events planned for Namescon, and will also be busy there meeting with members and conducting its Working Groups.

The annual ICA Dinner, which is now sold out (but we are reserving a few tickets for new ICA members who join between now and the dinner), is being held on the Monday at the Foundation Room, Mandalay Bay. This is a great opportunity to meet many of the major players in the Domain Name industry. If you were unable to get tickets this year, make sure you join the ICA as a member so that you get the first opportunity to get a ticket for next year. The ICA plays an important role for the Domain Name investing community, by monitoring all regulatory and legal developments and issues, and advocating on behalf of Domain Name investors. Phil Corwin, as ICA's General Counsel, has tirelessly spearheaded these efforts.

The ICA is also conducting a great session called, "The Most Shocking UDRP Decisions of 2016". This will be held 12 noon on the Monday. Moderated by domain name community stalwart Bill Sweetman, attorney Jason Schaeffer, honorary attorney, Nat Cohen, and myself will be participating in the Panel. Each of us will be advocating for a particular case, which we have nominated as the "most shocking of 2016". At the end, a vote will be taken, and the "winning" case will be selected.

In addition to the Panel presentation, there will also be an awards ceremony where the Lonnie Borck Memorial Award will be given to honor an individual who has gone above and beyond to assist Domain Name owners. Elliot Silver and Nat Cohen will be making the presentation to the recipient.

Lastly, the ICA's working groups will be meeting to discuss important issues such as UDRP Reform and Domain Name theft. The Working Group Meetings will be held at 4 pm on the Monday. If you are interesting in helping to work on these issues and advocating for the ICA, please join the ICA and get in touch with us.

Namescon® 2016 Session: 2015 Domain Legal Developments

By Zak Muscovitch.

2015 saw some very interesting cases in domain name law. On Monday, January 11, 2016, at 1 pm, there will be a short session highlighting some of the most important cases both under the UDRP and the ACPA. In addition, copies of Gerald Levine's new UDRP book will be raffled off to the session attendees.

You will hear how some UDRP panelists have taken it upon themselves to radically re-interpret the UDRP to help trademark owners and harm domain name owners. You will also hear about the new UDRP procedural rules that went into effect this past summer and how the UDRP might be changed in the future. You will also hear how different judges from different districts have come to different conclusions in ACPA cases.

Renowned ACPA attorney David Weslow will be speaking on ACPA cases, and I will be speaking on UDRP cases. Successful domain name investor, Nat Cohen, will be bringing his perspective to the discussion as well. As I have said previously, Nat Cohen is amongst the most knowledgeable non-lawyers one could ever meet when it comes to the UDRP. Moderating the discussion will be renowned Internet litigator, Derek Newman. I encourage you all to attend and look forward to seeing you there.

As mentioned above, as an added bonus to this exciting session, lawyer and author, Gerald Levine, has graciously donated several copies of his book, "Domain Name Arbitration - A Practical Guide to Asserting and Defending Claims of Cybersquatting" to be raffled off to the session attendees.

https://www.amazon.com/Gerald-M.-Levine/e/B01417BZNI/ref=dp_byline_cont_book_1

Gerald Levine is a New York City attorney, who has spent a considerable amount of time and effort in analyzing and reporting on UDRP decisions, which he has compiled into his new book.

I have long admired Gerald's work from afar, reading his commentaries on his website, IPLegalCorner.com, and recently I had the opportunity to ask him a few questions:

Gerald, how did you first become interested in domain name law?

I’m a litigator by trade. About ten to twelve years ago I assisted an attorney friend on a domain name issue. This was a new area of practice. I started by researching and writing a memorandum for his client that began growing as I added and reorganized material. I didn’t stay with the original matter although I continued researching and collecting material.

What led to your writing of the book?

Somewhere around 2006 or 2007 I began writing blogs on domain name disputes that got some attention. Those blogs functioned as a kind of laboratory in which I tested out ideas and modes of expressing my findings and conclusions. That the accumulated material could form a book didn’t come into focus until around 2012. The acorn ultimately developed into a study of domain name arbitration.

Do you handle domain name disputes?

I don’t actually handle disputes, although I would if they came my way. I field calls from attorneys and parties involved in domain name disputes and give advice as to likelihood of success and risk, and why I think so.

What are the most interesting cases / most important issues from 2015 in your opinion?

The most contentious issue in UDRP jurisprudence, which started in a duo of cases in 2009, has been the attempt by a few influential panelists to change its construction to allow for forfeiture regardless of good faith registration if domain names are subsequently being used in bad faith. A number of panelists restart the time on renewal of registration when there’s been bad faith use preceding it. This view, which hasn’t really gotten anywhere and to my mind is a dead end, attempts to bring the UDRP into alignment with the ACPA. Nevertheless, there continue to be some anomalous decisions sometimes by dissenting panelists that go to great lengths to explain the reasoning behind the view.

2015 has further consolidated the jurisprudence. Complainants still try their luck for 2 and 3-character domain names when it’s obvious they cannot mount an affirmative argument. There’s also a good number of cases by complainants whose rights postdate the domain name that should never have been brought. There’s a lot of chatter when Panels fail to declare RDNH for what appear to be obvious abusive process, but it’s understood that the sanction is discretionary. I find interesting that there are panelists who will declare RDNH without being asked, most recently in 3-member Panels. I think that’s correct. There’s been some interesting decisions under the Anticybersquatting Consumer Protect Act particularly in the area of fraudulent transfers (unreported).

“Tough Luck” in UDRP Complaints: How Armani and Sony Lost UDRP Complaints

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By Zak Muscovitch.

Sometimes even a famous brand owner just runs up against the wrong domain name owner. Take for example, the cases of Armani and Sony. Armani lost a UDRP complaint for Armani.com and Sony lost a complaint for SonyHolland.com. How? That's where the "tough luck" comes in. Both names were registered to individuals whose actual names corresponded to the respective domain names.

Armani.com
The Armani.com case goes back to 2001. The famous Italian fashion house, G.A. Modefine owned the world famous trademark, ARMANI. They commenced a UDRP Complaint against....Mr. A.R. Mani, of Vancouver, British Columbia. I think you know where this is headed now...The Respondent filed evidence showing that his full name was Anand Ramnath Mani, including even his baptismal certificate as proof. He also showed that he registered the Armani.com domain name in 1995, used the domain name for email, and that he registered the domain name because his initials were A.R. and his last name was Mani, adding up to, "ARmani.com".

The Respondent also showed that it was the Complainant who contacted him first, and not the other way around. In fact, the Complainant, through its intellectual property attorney, offered the Respondent the sum of $1,240 Canadian dollars to purchase the domain name. The Respondent refused, and demanded only $1,935 US dollars, which worked out to about $2,437 Canadian dollars - in other words just over $500 more than what the Respondent had demanded, which was a very "modest" and "reasonable" sum as the Panelist, Nick Gardener, pointed out in the decision. Moreover, the Complainant failed to disclose to the Panel that lengthy history including the offers, which resulted in a finding that the Complainant had abused the UDRP. The Panel eloquently pointed out as well, that it is "simply wrong" for the Complainant to think that just because it has a famous brand that it can use the ICANN UDRP procedure to "dis-posses summarily" the Respondent's domain name which consists of his initials and surname. According to historical Whois data, it appears that Mr. Mani ultimately transferred the domain name to the Complainant in 2004.

SonyHolland.com
More recently, a similar situation arose with Sony. Sony of course is also a world famous brand. In 2008, Sony Kabushiki Kaisha, otherwise known as Sony Corporation commenced UDRP Complaint against Sony Holland. The Complainant had trademarks all over the world and operated its website at Sony.com and and also in Holland, at Sony.nl. Unfortunately for Sony however, it ran into Sony Holland. Sony Holland was an individual who was born, "Sonia Einerson" and later took the name of "Sonia Peterson" when she was first married, and went by the name of Sony Peterson, even showing a hotel receipt from a Marriott in 1998 where her name was listed as Sony Peterson. She later maried Gerald Holland and became Sony Holland. She was a singer and had been using her name, Sony Holland for years before any notice of the UDRP dispute. She even showed copies of articles from Jazz Review and other publications, which all referred to her as Sony Holland.

The Panelists, Warwick A. Smith, Sandra A. Sellers, and William R. Towns, decided that that there was no evidence whatsoever of bad faith registration or use, and that the Respondent had an entirely plausible explanation of why she registered the domain name, and accordingly, the Respondent got to keep the domain name, although Reverse Domain Name Hijacking was not found. Today, you can visit SonyHolland.com, and read about Sony's latest performances, as she still owns the domain name.

That’s Hilarious! UDRP Complainant Says That Respondent “Isn’t Known” By his OWN First Name!

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By Zak Muscovitch.

From the 'now I have heard it all file', Complainant corporation, Allesandro International of Germany actually claimed that Respondent, Allessandro Gualandi, an individual from New York, wasn't "commonly known" by his own first name - Allesandro! The UDRP dispute about >>allessandro.com<< was denied by the Panelist, Pablo A. Palazzi on February 16, 2015, but not before hearing the Complainant's desperate argument:

"Complainant states that the fact that Respondent given name is Alessandro does not constitute a right or legitimate interest in respect of the disputed domain name. Complainant states that the name Alessandro is a very popular and widespread Italian name. In that sense Complainant mention statistics of the use of the name Alessandro in Italy. Due to the high number of people named Alessandro it has to be concluded that Respondent is not commonly known by the name Alessandro because hundred of thousands of individuals have the same name as well. Therefore Respondent cannot claim any right or legitimate interest in respect of the disputed domain name because the name is not associated with Respondent in particular."

Do you get it? Since there are so many people named, Allesandro in Italy, Allesandro has no right to register a domain name corresponding to his own name. And instead, a German nail polish company should own it instead. Why? According to the Complainant, because "the trademark right of a company should prevail over the fact that a non famous individual happens to have the same name as the company and its trademarks."

But there's more hilarity. The Complainant also remarkably claimed that, Respondent has registered 39 domain names which according to Complainant "is very uncommon for a natural person". Very suspicious indeed! Some of these suspicious names were <freshmozzarella.com> and <newpizza.com>. I am not kidding!

UDRP Logic PART II: Trademark Rights Do Not Magically Relate Back

By Zak Muscovitch.

Again turning to the insightful and compelling Riveron decision which I wrote about yesterday, you will be comforted to know that as far as the panelist in that case was concerned, magic doesn't work in UDRP proceedings. The panelist, Paul M. DeCicco, clearly and eloquently stated that, "While Complainant currently has trademark rights...such rights do not magically relate back to the time that Respondent first registered the domain name, a time well prior to Complainant’s first use of its mark".

The Panelist pointed out that, where a trademark right arose after the disputed domain name was registered, the facts "foreclose a finding of bad faith registration and use under [the UDRP]". In support of this position, the Panelist referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, wherein the WIPO Consensus View is set out:

"Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."

The panelist, Paul M. DeCicco, went on to further make the point, as follows:

"As noted above, it is axiomatic that if a complainant lacks trademark rights at the time the respondent registered the disputed domain name, there can be no finding of bad faith registration. Numerous decisions support this very logical proposition."

The compelling logical reasoning submitted by the Panelist in the Riveron case is sometimes not shared by all UDRP panelists. Some Panelists, although a minority, subscribe to a notion of "retroactive bad faith", wherein a domain name can magically be registered in bad faith, when it was registered before the complainant's trademark was even a twinkle in its eye. Some of these panelists believe that merely renewing a domain name that was obviously registered in good faith (for example, before the trademark arose), can be magically treated as a "new registration" for the purposes of gauging bad faith registration and use.

UDRP Logic: Trademark Must Come Before Domain Name To Find ‘No Right or Legitimate Interest’

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By Zak Muscovitch.

Recently I reviewed a UDRP decision that deserves additional attention and respect. The case was Riveron Consulting, L.P. v. Stanley Pace, and it was decided by Paul M. DeCicco in 2010. It concerned the domain name, RIVERON.COM. Of particular interest however, was how the Panelist approached the issue of “Legitimate Interest” in a logical fashion.

For a complainant to succeed in a UDRP case, the complainant must of course meet each part of the three-party UDRP test. The second part of the UDRP requires the complainant to prove that the respondent (the domain name registrant) has no rights or legitimate interest in the disputed domain name.

In examining this part of the UDRP test, the Panelist noted the well-established and widely accepted general approach to the burden of proof to be employed when determining if a respondent has no rights or legitimate interest:

“Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy. The threshold for such prima facie showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name.”

Accordingly, the Panelist noted that it first falls to the complainant to make out the appearance of a case that the respondent has no rights or legitimate interest. It is only once the complainant accomplishes this first task, that the respondent must then answer the case by proving its rights or legitimate interest. So, for example, typically a complainant will make a variety of basic allegations that constitute a “prima facie case” that the respondent has no legitimate interest (such as the respondent is not known by the domain name, has not used the domain name, or has no license to use the mark corresponding to the domain name, etc.). Then, typically, the respondent will have to rebut this prima facie case, by showing that it does indeed have a legitimate interest, such as for example, by having used the domain name in a bona fide fashion for business, email, etc.

But it is the next part of the Panelist’s analysis that really stands out and is quite compelling:

“Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the RIVERON mark… Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration…

Without evidence of either Complainant’s trademark rights at the time of the at-issue domain name’s registration, or a showing that Respondent somehow lost any rights and interests in the domain name, there is no foundation from which to conclude that Respondent is, or was, legally bound to license the mark from the Respondent.

If Respondent had no duty to license the domain name before registering it, then the fact that there was no license from Complainant and the fact that Respondent did not commonly go by the domain name, are each ultimately immaterial regarding paragraph 4(a)ii.”

The Panelist is essentially saying, that logically, a complainant simply cannot make out a prima facie case against a respondent, i.e. cannot claim that the respondent has no rights or legitimate interest in a domain name, when at the time of registration, the complainant itself had no rights or interest in a trademark corresponding to the domain name. In other words, it is preposterous to claim that a respondent has no right or legitimate interest in a domain name, when at the time that he registered it, the complainant was not even in existence, and accordingly, such a preposterous claim surely cannot constitute a “prima facie case”. Who is the complainant to say that the respondent has no rights or legitimate interest in a domain name that was created before the complainant was even incorporated or used a corresponding trademark, for example?

Usually, panels will just take a look at how the domain name was used by the respondent since it was registered. If it was not used at all, or if it was used for PPC advertising alone, often a panel will find no legitimate interest, despite plenty of cases to the contrary. But what this Riveron case shows, is that logically, a panel should first determine if the complainant can even meet the prima facie test by showing its own rights at the time of domain name registration, before even looking at how the respondent has used the domain name. If it was any other way, it would be illogical, as in the case of a domain name which precedes a trademark, as between the respondent and the complainant, there is only one party that could conceivably have any rights or interest at all; and that of course must be the respondent, since the complainant had no rights at all at that time.

Proving Common Law Trademark Rights in a UDRP Complaint

By Zak Muscovitch.

UDRP Complainants often fail to adequately demonstrate common law trademark rights. Sometimes the Panelists catch this and refuse to transfer the disputed domain name. At other times, the Complainant gets away with it.

It is well established that in order to succeed in a UDRP Complaint, a Complainant must establish either registered or common law trademark rights, in a mark that is identical or confusingly similar to the disputed domain name.

Accordingly, it is open to a Complainant to attempt to establish that its purported common law mark has, through extensive use and reputation, become "distinctive" of the Complainant, and that it has thereby acquired a "secondary meaning" apart from its ordinary and obvious meaning.

As the Panel found in Glasgow Signs v.1st Signs Limited, WIPO D2010-0409:

It is well established that the more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning: see, for example, Cellular Clothing v. Maxton & Murray [1899] AC 326.

Sometimes, a purported mark is so descriptive, that it would seem impossible to prove "acquired distinctiveness" or "secondary meaning", as was the case in RE HOTELS.COM, L.P., 2008-1429 (Serial No. 78/277,681), where the United States Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office Trademark Trial and Appeal Board’s decision that HOTELS.COM was merely descriptive. Despite evidence submitted by the trademark applicant, including sixty-four declarations and consumer survey evidence, the Court held that a secondary meaning was not established and that the common meaning of the term prevailed.

This was also the case in Monticello Country Realtors, Inc. v. Patsy Strong, NAF Claim Number: FA0506000499246 concerning the domain name, <monticellocountryrealtors.com>. Here, the Complainant failed to satisfy its burden of providing proof upon which a finding of secondary meaning could be based. The Panel found that in the absence of a registered trademark, a mere corporate name was insufficient to prove that the name “Monticello Country Realtors” was sufficiently identified with the Complainant so as to constitute common law trademark rights.

Similarly, in the case in Keystone Publishing, Inc. v. UtahBrides.com, WIPO Case No. D2004-0725, the Complainant was unable to prove common law trademark rights in UtahWeddings.com. The Complainant in that case had sought the transfer of the domain name, UtahWedding.com (the singular). The Panelist correctly pointed out, as follows:

“In selecting the quintessentially descriptive name UtahWeddings.com for its wedding business in the State of Utah, the Complainant apparently was more interested in attracting Internet traffic than in coming up with a distinctive name. Thus, while the Complainant has a descriptive mark that attracts a large volume of casual search engine inquiries, the amount of time and effort it would take to endow this mark with secondary meaning is problematic.”

An allegation of common law trademark rights must not be taken lightly. As per the Panel in Chandler Horsley v. Fundacion Private Whois, “common law rights must be proven by strong and serious evidence of constant use and recognition from the objective customers of the goods or services…Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust…”.

So what kind of evidence of common law rights should be used? As the Panel also stated in Chandler Horsley, “to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the trademark owner. The Panel considers relevant evidence of secondary meaning include the income produced by the trademark (sales), the advertisement, and media recognition".

As held in Molecular Nutrition, Inc. v. Network News, FA 156715 (NAF June 24, 2003) a Complainant will fail to establish common law rights in its mark by making mere assertions of such rights, as such mere assertions are insufficient without accompanying evidence to demonstrate that the public actually identifies Complainant’s mark exclusively or primarily with the Complainant’s products.

Accordingly, in the absence of registered trademark rights, a Complainant should always lead with strong evidence of common law trademark rights, including sales figures, advertising budget and scope, media reports, website traffic, affidavits, and whatever other evidence will assist the Panel in concluding that the purported mark is actually identified with the Complainant to a sufficient degree to be considered an actual common law trademark.

You Registered Coca-Cola.WTH? C’mon.

By Zak Muscovitch.

One of the great things about registering new gTLD's is that you sometimes can find out what happened to the last guy who tried the same thing with the .com version. I am usually in a good enough mood to happily answer general domain name law questions, but my mood can change when someone spends all of $10 or whatever on a new gTLD which is clearly a trademark-infringing cybersquat, and then turns to me for advice on 'what they should do', or even, to 'help them sell it'.

The explanations and rationalizations provided by such registrants of clearly infringing new gTLD domain names are sometimes amazing:

1. It was available so I registered it.

2. I registered it because Coca-Cola's marketing department failed to come up with the brilliant idea, so I thought I would sell it to them for a million dollars.

3. I wasn't going to use it to compete with Coca-Cola.

4. I heard that someone sold another Coca-Cola domain name to Coca-Cola for a million dollars.

5. If I wasn't supposed to register it, why did GoDaddy let me do it?

6. Shoot, if I have to give up this Coca-Cola domain name, then what am I supposed to do with the other 487 Coca-Cola domain names I registered?

7. So Pepsi.club is OK?

8. Who is going to reimburse me for this error?

9. Coca-cola doesn't just mean the soft drink.

10. All I am asking for is to be reimbursed for my time and ingenuity; $150,000.00.

Now, I agree that one of the great things about domain name speculation is that for $10 it is indeed possible to buy a domain name that can be flipped one day for a lot of money. It happens. Of course, it happens more often to people who paid the $10 back in 1997 and have held on to the domain name ever since. And it happens almost never to people who register clearly cybersquatted domain names. The point is that domain name speculators who are new to the industry and who are interested in investing in new gTLD's, should do a little homework before spending even $10 on a domain name, particularly if they don't know what to do the next day when Coca-Cola sends them a C&D and demands the transfer. It's not right to need $400 worth of legal work to deal with a $10 problem, especially when it is avoidable.

One thing that they can do, is check out UDRPSearch.com and enter in the key word or brand, and see what happened to the last guy that tried registering a similar domain name in one of the "legacy" TLD's or ccTLD's, such as .com or .eu. For example, this fellow registered Coca-cola.eu.com, despite his valiant arguments which were that;

a) the disputed domain name was available without restrictions and that it was bought legally and in good faith; and

b) the Complainant had been asked only to reimburse the cost of the disputed domain name and costs incurred, thereby making a small donation to the first Respondent's new political party in the U.K.

Same thing happened in this case regarding coca-colalife.com, but the registrant's arguments were even more incredible! The registrant contended that:

a) The words "coca", "cola" and "life" predate the Complainant. The Complainant merely joined three descriptive words together. The fact that the Complainant's mark is old and famous does not change history or the reality of the mark's origin;

b) The Domain Names are being used in connection with a bona fide offering of design and consultancy services with no relation to the COCA-COLA mark. Almost all of the Complainant's COCA-COLA LIFE domain names were registered after the Domain Names; and

c) Respondent has never contacted the Complainant to attempt a sale or demonstrate any intention to profit from the Domain Names.

As you can see, one of the great things about registering new gTLD's, is that many, many .com registrants came before you, and were the guinea pigs trying out "innovative" defence arguments. Accordingly, check to see what happened to the last guy that tried registering a similar domain name.

Domain Name Research Tools: Using the Global Brand Database

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By Zak Muscovitch.

Did you know there is a helpful and free online tool to search across multiple national trademark office databases? The World Intellectual Property Organization (WIPO) provides a free online search tool called the Global Brand Database, that searches across 12 national databases, including the entire USPTO collection, CIPO (Canada), Algeria, Australia, Israel, Oman, New Zealand, Philippines, Singapore, Egypt, Estonia, Morocco, Switzerland, and the United Arab Emirates, in addition to WIPO's own collection of international trademarks registered under the Madrid System.

In total, the Global Brand Database has over 15.7 million trademark and related records, making it the largest, free public resource for searching trademarks. Accordingly, this is a key resource to use when researching a domain name to see if there are any trademarks already registered which correspond to the domain name.

Although not entirely comprehensive - i.e. it does not search all registered trademarks all over the world - and also does not search for common law trademarks, it is nevertheless a great first step when looking into a domain name and potential trademark issues. In fact, some UDRP panelists may even expect a domain name registrant to have checked the Global Brand Database prior to registering a particular domain name, as was the case with one of the Panelists in the Bespoke.com case.

You can read more about the Global Brand Database, here.

When a Trademark is Not a Trademark

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By Zak Muscovitch.

It happens. A lawyer sends a C&D letter, or serves a UDRP that relies on a "Registered Trademark". It shows up in the USPTO database, but it may not really be a trademark. How is that possible? When the "trademark" is registered on the "Supplemental Register".

The United States Trademark Act provides for the registration of trademarks on either the "Principal" or "Supplemental Register". Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark.

When the USPTO examiner indicates that the applied-for mark is clearly descriptive and as such does not qualify to be registered on the Principal Register, an applicant may choose to have its mark recorded on the Supplemental Register.

As held in First American Real Estate Solutions L.P. v. Manila Industries, Inc., NAF Claim Number: FA0607000758614¸ “Under United States trademark law, “[r]egistration of a mark on the Supplemental Register does nothing to enlarge the substantive rights of the registrant. Clairol, Inc. v. Gillette Co., 389 F.2d 264 (2d Cir. 1968). To the contrary, registration on the Supplemental register shows that at the time of registration the mark was descriptive and had not acquired secondary meaning. CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001)”. Registration of a mark on the Supplemental Register is an admission that the mark is “merely descriptive” (See for example; America’s Community v. Charles R. Wing , WIPO Case No. D2000-1780; and Quester Group, Inc. v. DI S.A.,WIPO Case No. D2010-1950).

As held in, Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, “it is well settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy”[1]. Registration of a mark on the Supplemental Register is not evidence that a complainant owns rights that come within the meaning of “rights” in Para. 4(a)(i) of the Policy (See; Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc.,NAF Claim Number: FA0910001292233).

Accordingly, just because a party has a "registered" trademark does not mean that it is an actual distinctive mark if it is only on the Supplemental Register, absent any proven common law trademark rights. Moreover, if a Complainant has no registered trademark rights whatsoever as far as the UDRP is concerned, it cannot rely upon its Supplementary trademark registration in order to try to meet the first part of the three-part UDRP test.

Always check to see if the trademark that is being relied upon is on the Principal or Supplemental Register.

[1] See also, Advance News Service Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-1475 (holding that a Supplemental Registration for RELIGION NEWS SERVICE did not provide sufficient rights under the Policy to confer standing); PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437 (holding that a Supplemental Registration for MOBILE MALL did not provide sufficient rights under the Policy to confer standing); Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (holding that a Supplemental Registration for SCUBADIVING.COM did not provide sufficient rights under the Policy to confer standing); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) section 1.1.