0.12 Validation of Registered Trademarks
Although Panelist independent research should generally be avoided it is nevertheless generally obligatory for Panelists to verify the trademark registrations relied upon by a Complainant. At its most basic level this required examination of the trademark registrations themselves as furnished by the Complainant. This examination should encompass ensuring that the current owner of the trademark registration corresponds to the Complainant, the date of the registration, whether any portion of the trademark is disclaimed, and in the case of U.S. trademarks whether the trademark is registered on the Principal or the Supplemental Register. It is unsatisfactory for a Complainant to fail to provide proof of the trademark registrations however where a Complainant identifies the trademark registration by registration number for example, a Panelist may check the trademark registry and conduct the same kind of examination. Conducting such an examination of registered trademarks is crucial to avoid the error of allowing a Complaint that is reliant upon a trademark registered to someone else, or reliant upon a registration that contains a disclaimer of a key term, or is on the Supplemental Register.
Additional Information
Relevant Decisions
Knowledge Systems v. Robert Akscyn, Knowledge Systems, WIPO D2025-0756 <ks.com>, Denied, RDNH
Here, both parties claim to be the original registrant of the disputed domain name and the (now cancelled) corresponding relevant trademark registration. It does not appear that either party is represented by legal counsel, and the Panel cites public records as necessary to reconstruct the material facts relating to this decades-old domain name.
[REDACTED] v. Info, CAC-UDRP-107143 (2025) <lemeilleur.com>, et., Denied, RDNH
Given the nature of this proceeding and the contentions of both Parties the Panel conducted limited research under its powers granted to the Panel by Rule 10. In particular, the Panel checked the USPTO website to verify the alleged trademark rights of the Complainant… The Complainant alleges its trademark rights on the basis of a US trademark registration as provided above. The Respondent brought to the Panel’s attention and the Panel verified under its own independent research of the USPTO website that the Complainant actually has a pending US trademark application filed on November 20, 2024.
Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, Forum FA2402002083049, <thegardensavvy.com>, 3-member, Denied
The Complainant claims that it filed a trademark application with USPTO for the mark “Garden Savvy” but the application was rejected. On this basis, the Panel is of the view that the Complainant has failed to prove that it has registered trademark rights on “Garden Savvy”.
Float Pod LLC dba floatpod.com v. Derek Cleveland, Forum FA2304002042283 <floatpod.com>, Denied
Complainant asserts that it has rights in the United States registered trademarks FLOAT POD (86123660) and FLOATPOD.COM (97908128). It makes no claim to have acquired common law rights in either of those marks.
Complainant has provided no evidence to support its claim to have rights in the mark FLOAT POD. A search by the Panel of the USPTO website reveals that the FLOAT POD mark, Serial No. 86123660, was registered on August 5, 2014 (Reg. No. 4582054) in the name Nick Janicki and remains live. Accordingly, the Panel is not satisfied that Complainant has established that it has rights in the FLOAT POD mark.
Revued, LLC v. Andrew Jack, Forum FA2309002061242 <revued.com>, Denied
The Complaint states that “The Revued® Mark is incontestable” while Respondent claims that “[t]he trademark is not valid because the Holder has not applied for a Declaration of Use (or Excusable Non-use) before the 6 year Limit”. The Panel notes that both statements appear to be incorrect as a current inspection of the USPTO database shows that no incontestability filing has yet been made for this Registration but, as the registration date is April 3, 2018, the 6-year window for such filing doesn’t close until April 3, 2024.
Digest Commentary
- Digest Vol. 3.42 <zerocoder.com>, Denied, RDNH