Recent Case Notes & Commentary

DON’T LET THIS HAPPEN TO YOU

Nicolas Karl Reep v. Ali Bazzi

FORUM Claim Number: FA2004001891242

Holding a registered trademark is a threshold requirement of UDRP success

As we showed in our recent note on Haas Outdoors, Inc. v. Lewis Arch / Mossy Oak Fence, having a registered trademark will not guarantee that a Complainant will win a UDRP case; it must go further and prove all 3 elements specified in the Policy. But having a registered trademark is an essential requirement to have standing to bring the claim at all. So, it is important to understand that if the Complainant is relying on a registered trademark, it must be a real one that is registered with a national trademark authority such as the United States Patent and Trademark Office (USPTO) or an international one such as WIPO. In the former case, the trademark must be registered on the Principal Register of the USPTO. If it is registered on the Supplemental Register, it is not adequate for purposes of the UDRP. In other words, it does not count as a trademark for UDRP purposes and will not give the Complainant the foundation on which to proceed with its claim.


This was the problem that faced the Complainant in Nicolas Karl Reep v. Ali Bazzi and led to the defeat of its claim. It submitted in its complaint that it had “rights in the EMPLOYEE-FAX mark through its registration of the mark“ with the USPTO. On closer examination it transpired that the mark was registered only on the Supplemental Register and not on the Principal Register.


Marks registered on the Supplemental Register in the US have not yet acquired the distinctiveness necessary to indicate the source of the goods or services. They do not function to distinguish goods and services and do not show distinctiveness. They are therefore not eligible to be registered on the main register, although over time, they may become so.


As a panelist put it in an early case, registration on the Supplemental Register “provides the Complainant with no protectable rights” : see CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO October 30, 2001).

The limited nature of trademarks on the Supplemental Register is recognised by statute in the United States and in the Trademark Manual of Examining Procedure of the USPTO. As a result, registration on the Supplemental Register is not a trademark for the purpose of the UDRP. See Levine, Gerald R. (December 29, 2009). "Trademark on the Supplemental Register (By Itself) Does Not Satisfy Jurisdiction Requirement". Iplegalcorner and Muscovitch, Zak (January 26, 2015). "When a Trademark is Not a Trademark". Domain Name Lawyer Blog.


The panelist[1] therefore found that the Complainant could not rely on the trademark it had put forward and cited several UDRP decisions that had reached the same result.


Moreover, the Complainant had not relied on a common law or unregistered trademark and had offered no evidence to that effect.


Hence, the Complainant had reached the unfortunate situation that it could not get to first base in its claim. Moreover, the panelist went on to say that, on the evidence, the Complainant would not have been able to show even a prima face case that the Respondent had no rights and legitimate interests in the domain name and could not have shown registration and use in bad faith.


So, not a successful day out for the Complainant. The message is clear enough: in a United States case, check that the trademark is registered on the Principal Register or, failing that, make a thorough search for evidence to show a common law or unregistered trademark.


We are making a search as to whether any other national systems have the equivalent of a Supplemental Register and hope to provide some information on this in due course.

[1] The Hon Neil Brown QC