Having trademarks (registered or unregistered) is the prerequisite for maintaining a UDRP, but having one is not conclusive of either rights or legitimate interests or registration and use in bad faith. The cautionary tale in many of these cases, especially for the Complainant who has the burden of proof, is that it has to satisfy each of the elements in the three subsections of ¶4(a) of the Policy. For the avoidance of doubt, this means that contentions are fine as long as there's also evidence, preferably concrete, but circumstantial will do if the proffer is sufficiently high in quality to draw an inference of abusive registration. The Panel in Phumelela Gaming & Leisure Limited v. Danny Sullivan, D2020-0245 (WIPO June 19, 2020) is fulsome in giving advice to both parties. For Complainant, surmise is never sufficient to make a case. It asserted that "Respondent's purpose was to confuse members of the public who know the SOCCER 10 brand, or to interfere with the business of the Complainant" but the three-member Panel pointed out that this assertion "rest[s] on the assumption that Respondent was aware of Complainant's business and deliberately targeted that business. [But] Complainant offers no tangible evidence on these points."
The Respondent had its own problem, and raises an entirely different issue, in that it responded in an email without certifying to the truth of the statements he was making, even failing to respond to a Procedural Order that request he do so. For this reason, as it must, the Panel set the response aside, which it had warned could have been fatal. Nevertheless, the Panel still found the Complainant had failed to prove bad faith. In doing so, it makes the following critical points: 1) "Complainant bears the onus of establishing its case on a balance of probabilities," and 2) the Panel "does not have additional powers to exercise discretion or apply a lesser test if a complainant fails to discharge that onus." So, Respondent wins not because it rebutted Complainant's contentions, but because Complainant failed to prove its case.
It is useful to take a quick look at some other recent cases because they are enlightening about both procedure and substance of UDRP jurisprudence. What the Panel has to tell us in Phumelela Gaming is the consensus view. This is also true of the next two cases involving the first element in the UDRP, whether the challenged domain name is "identical or confusingly similar to a mark in which the complainant has rights."
Proving a "Right"
The UDRP forum is available to all owners who believe their trademarks or service marks are being infringed by domain names identical or confusingly similar to marks in which they allegedly have rights. The "have rights" element, the first of three legs in proving bad faith registration and bad faith use, is a critical factor. It's not sufficient that the challenged domain name corresponds to the mark if the mark owner has no actionable rights. So, for instance, a mark owner may allege a common law right, but that is only a right if there's proof that it was distinctive before the registration of the domain name. Another such "right" arises where the mark is allegedly present in commerce but is registered on the supplemental register. The complaint must be dismissed. But there are also circumstances where there are rights but no proof of the elements of the other two legs. With these thoughts in mind:
- In Nicolas Karl Reep v. Ali Bazzi, FA2004001891242 (Forum May 19, 2020) (
the Panel holds that "[r]egistration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) but not if the trademark is on the Supplemental Register. If all that a complainant has is a registration on the Supplemental Register then that Complainant does not have standing to file a Complaint under the Policy since by definition it will not have acquired distinctiveness. That proposition has been clearly established for many years." It is possible, although Complainant in this case evidently did not pursue the issue, to have established (assuming supporting evidence) that notwithstanding its continued registration on the Supplemental Register it had had nevertheless achieved common law rights, that the mark had "acquired" distinctiveness. - In contrast, it is sometimes necessary to establish common law rights if, as in Bitrise Limited v. Dalton Kline, Bitrise Trade Ltd., D2020-0835 (WIPO May 29, 2020) the domain name, here
, was registered after Complainant applied for trademark registration but before registration issues. The Panel makes two salient points critical to understanding the law in this area. First, common law rights: "The Complainant asserts that it has built substantial goodwill in the "Bitrise" name since 2015 and points to its client base, press coverage, substantial fundraising, and number of monthly average users in support of this contention." Second, the issue of a respondent's actual knowledge of Complainant or its mark: "In some circumstances, this might have suggested that the Respondent may not have had knowledge of the Complainant or its rights at the time when it registered the disputed domain name and that it had coincidentally combined the ordinary English words 'bit' and 'rise' independently of the Complainant's rights. However, the Panel views this as unlikely on the facts of the present case. First, without evidence to the contrary, these words appear to be a relatively unusual and distinctive combination. Secondly, the Complainant's BITRISE mark had attracted substantial notoriety in the field of online platforms over several years prior to the registration of the disputed domain name, as demonstrated by the above-described press coverage produced by the Complainant."
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP