Trademark applications are insufficient to establish trademark rights under the Uniform Domain Name Dispute Resolution Policy (UDRP), and a failure to provide relevant evidence of trademark usage is fatal to proving common law trademark rights under the policy. Those are two very basic but important reminders in a short but helpful UDRP decision that I discuss in a new video.
The UDRP case involved the domain names <0456.com> and <9527.com>.
According to the UDRP decision, the complainant and the respondent were previously partners in some sort of unidentified business using the domain names.
However, the complainant failed to establish trademark rights under the first element of the UDRP, so the panel denied the complaint and allowed the respondent to keep the domain names.
Although the complainant cited its trademark applications, the panel wrote:
As evidence of such rights, Complainant asserts that it has pending trademark applications for the marks 0456.COM and 9527.COM. However, the Panel notes that the consensus among prior Policy panels is that mere pending trademark filings fail to constitute ownership of a mark for the purposes of Policy ¶ 4(a)(i).
And the complainant failed to convince the panel that it had established common law trademark rights, an argument that the panel ridiculed as nothing more than “brief jottings”:
In evaluating this sparse data, the Panel concludes that the relatively meager revenues and advertising expenditures, together with the about 10 website visits or less per day within the relatively short… periods of operation, do not come close to constituting the substantial body of evidence necessary to sustain a finding that Complainant possesses common law trademark rights in either of the claimed marks.
The lesson for trademark owners – or would-be trademark owners – is made clear by this decision. Don’t file a UDRP complaint unless you have an appropriate trademark registration or can establish common law rights under the UDRP’s criteria. Simply using a domain name or filing a trademark application does not by itself create any trademark rights.
A link to the UDRP decision is in the description with my video.
