Relevant Decisions

Auradine, Inc. v. trre ger, Forum FA2503002146830 <auradine-miner. com>, Denied

It is universally established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003); WIPO Overview ¶ 1.2.1). Complainant’s submission is that the Application should be treated as registered because the USPTO has issued a so-called Notice of Allowance… Having regard to the plain wording of the WIPO Overview, the countless UDRP cases which informed it, the USPTO’s own practice statements and, above all, the foundation tenets of trademark registration systems, the Panel finds that “registered” means just that, registered…

Huge Legal Technology Company, Inc. DBA Trust & Will v. Domain Administrator / Fundacion Privacy Services LTD, Forum FA2501002136242 <trustanswill. com>, et, Denied

The Supplemental Register registrations do not preclude Complainant from demonstrating the acquired distinctiveness required for common law rights. But the evidentiary burden on Complainant is quite high, and the Panel is of the view that Complainant has failed to meet that burden. Complainant has provided evidence of use and media coverage, but has not demonstrated that its claimed mark is recognized by the public solely or even primarily as an identifier for Complainant’s services rather than in its descriptive sense.

SM Contact v. Ehren Schaiberger, WIPO D2024-4075 <smcontact.com>, 3-Member, Denied

The Complainant recently filed a trademark application for a figurative SM CONTACT mark. While the Policy makes no specific reference to the date on which the holder of a trademark or service mark acquired its rights, such rights must be in existence at the time when the complaint is filed… A pending trademark application does not by itself establish trademark rights within the meaning of the first element of paragraph 4(a) of the Policy.

Zelig AI, LLC v. dong xuyan, Forum FA2410002120196 <valusync. com>, Denied, RDNH

Complainant does not own a trademark registration for VALUSYNC; its application is currently pending before the United States Patent & Trademark Office. A pending application does not confer sufficient rights to satisfy paragraph 4(a)(i) of the Policy… Complainant therefore must rely upon a claim of common law trademark rights.

MJPS, LLC (dba “Judiciary Process Servers”) v. Freestate Investigations, Freestate Investigations, LLC, WIPO D2024-3210 <judiciaryprocessserver.com>, Denied, RDNH

The Complainant relies on a United States trademark registration on the USPTO Supplemental Register, which cannot of itself ground a UDRP complaint but requires proof that the mark has acquired secondary meaning, as in the case of unregistered or “common law” marks.

Family Policy Foundation v. John Skinner, WIPO D2024-0098 <familypolicyfoundation.org>, 3-Member, Denied

Both parties recognize that although Complainant has registered its mark on the USPTO’s Supplemental Register, this “does not by itself provide evidence of distinctiveness to support trademark rights,” and Complainant is therefore “expected to show secondary meaning in order to establish trademark rights.”

Julian Engel (The Codeero Group) v. Domain Administrator (Buy this domain on Dan.com), CAC-UDRP-105436 (2022) < ampawssadors.com>, Denied

The Complainant owns the EU trademark application Appl. number 018871222 for the word mark “Ampawssadors” with priority from May 6, 2023 which was published for oppositions on May 15, 2023 and the opposition period ends on August 16, 2023. The Panel shares the view that unless a trademark application has proceeded to grant it does not constitute a trademark in which the Complainant has UDRP-relevant rights…

Paragon Protection Ltd. v. Webhosting Department/ Candev Systems Inc., CIIDRC 20348-UDRP (2023), <paragonsecurity.com>, 3-Member, Denied

The Complainant provided evidence that it applied for a Canadian trademark on November 25, 2022. However, the trademark is not registered. Generally, a pending trademark application does not by itself establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy, unless such application has proceeded to grant. The Panel therefore needs to consider whether the Complainant owns unregistered or common law trademark rights in the term “PARAGON SECURITY”.

Xpress Solutions, Inc. v. Mak Bheem, WIPO D2022-4687 <xpressbillpay.ltd>, Transfer

As explained in section 1.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), complainants relying on trade mark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trade mark rights under the Policy because, under United States law, a supplemental registration does not by itself provide evidence of distinctiveness to support trade mark rights.

Here, the Complainant has indeed established secondary meaning in the term XPRESS BILL PAY deriving from the Complainant’s extensive and longstanding use of that mark.

Digest Commentary

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Digest Vol. 5.1 < sstowing .com>, Denied, RDNH

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Digest Vol.4.22 <legalnowai.com>, Denied

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Digest Vol. 4.19 <dailyworkouts .com>, Denied, RDNH

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Digest Vol.3.49 < glassesshop .com>, Transfer

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Digest Vol.3.40 < iwoman.com>, Denied, RDNH