Grabtaxi Holdings Pte. Ltd. v. Sam Lim WIPO Case No. D2019-1585 September 2, 2019
Proving a trademark is essential in a UDRP case to give the Complainant standing in the proceeding.[1]
Complainants that focus on the specifics of a party’s trademark rights are often significantly more complex and drawn-out than clear instances of cybersquatting. The above case demonstrates the issues that a panel must deal with in determining whether a Respondent, who has a sustained commercial presence at the disputed domain name, actually holds a right or legitimate interest in that domain name, subject to the trademark rights of the Complainant.
As part of such a case, proving the trademarks relied on is important. It must be done by evidence.
In this case, the trademarks were important, as there were a lot of them and they were the basis not only for the Complainant’s standing but because they were supposed to show its “brand architecture” which the Respondent allegedly transgressed in registering and using its domain name.
Some practitioners do not seem to realise that trademarks have to be proved.
Some practitioners may realise that trademarks have to be proved, but think that this can be done simply by exhibiting a spread sheet with names and dates when they were allegedly registered.
That is not really good enough and its is risky to try to get away with such inadequate evidence. You may be rejected by a panellist who is not so helpful as to let you rely on inadequate evidence.
Despite the chronology of the trademark registrations in this case being absolutely vital for the Complainant’s case, it did not provide registration dates in their evidence, nor any public record of the registrations. It could easily have produced a series of copies of registration certificates, but did not. Given the burden of proof rests on the Complainant in UDRP proceedings, this was a dangerous move and the Complainant was in effect reprimanded for this oversight. The Complainant was told that it was not the Panel’s job to patch up the Complainant’s case for it.
Nevertheless the Panel went the extra mile and checked the records itself and found the trademarks to be in order. Note also that the panel in this case was exercising its right to look at the public record.
Why, then, do we raise the point? Because next time, you may not have a panellist so obliging. Also, you get marks for doing your job.
[1] Although not under all Policies. Under the Australian policy, for instance, instead of proving a trademark, the complainant need only prove a name, such as a registered company name to establish its standing.