A recent UDRP decision illustrates the challenges inherent in basing a UDRP claim on common-law trademark rights.

Complainant was a California-based company that filed for a U.S. federal trademark application for BLENDID, covering automated food and beverage preparation machines. The application was filed on an intent-to-use basis and published for opposition on December 11, 2018. Respondent was a U.K. resident which invested in domain names for development and sale. It registered the <blendid.com> domain on December 18, 2018. Though Complainant’s mark had not yet registered, nor had it even filed its statement of use, it asserted Respondent’s domain registration was in bad faith because: (1) the domain registered only eight days after the BLENDID mark published for opposition; (2) Respondent did not oppose Complainant’s published application; (3) Respondent never used the domain name; and (4) Complainant attempted to contact Respondent, but never received a response.

To prevail in a UDRP proceeding, complainants must establish the following three elements: (1) the disputed domain is identical or confusingly similar to the complainant’s trademark or service mark; (2) the domain name registrant has no rights or legitimate interests in the domain; and (3) the domain was registered and is being used in bad faith.

Here, the UDRP Panelist easily found the <blendid.com> domain was identical to the claimed BLENDID mark but concluded Complainant had only barely established common-law trademark rights in the term. Notably, Complainant’s assertions of trademark use since August 2017 were questionable. Its March 2018 trademark application was filed on an intent-to-use basis, and Complainant had requested an extension to file its statement of use as recently as July 2019. But because Complainant asserted (albeit without supporting evidence) that it had used the mark on kiosks in three California locations, the earliest of which was in April 2018, the Panelist found the first UDRP element satisfied. Complainant also satisfied the second element, that the Registrant had no prior rights in the name.

Respondent, however, credibly rebutted Complainant’s assertions of bad faith. Regarding the timing of the domain registration, Respondent provided exhibits showing that the domain had expired on September 29, 2018 and subsequently appeared on a list of expired domains about to be made available for registration on December 19, 2018—the date Respondent registered it. No other evidence supported Complainant’s assertion that Respondent’s registration was based on its knowledge of Complainant’s BLENDID trademark. For example, when the domain registered, Complainant had only used the trademark at a single California kiosk, and no evidence showed that use had garnered any media attention. Further, though Respondent failed to conduct any investigations to ensure the domain would not infringe any third-party rights, nothing suggested an investigation would have been availing. Complainant’s intent-to-use application and use of the mark at a single California kiosk were not, the Panelist concluded, likely to have been found by a search. The Panelist further opined that, even if they were, Respondent could have reasonably concluded Complainant’s rights were not substantial enough to foreclose all possible uses of the domain name. Nor had Respondent used the domain name in a way that capitalized on Complainant’s mark. Though it had used it in connection with anti-spam services, such use did not compete with Complainant’s services, and so was not in bad faith.

With respect to Complainant’s second bad-faith argument, the Panelist found that Respondent had no obligation to oppose Complainant’s trademark registration, nor could it have done so because Respondent claimed no trademark rights in BLENDID.

The Panelist also dismissed Complainant’s assertion that Respondent never used the domain because Respondent had used it for an anti-spam website. Further, Complainant’s mark was not so famous that non-use could constitute bad faith.

Finally, the Panelist found that Complainant failed to submit evidence of its communications with Respondent, and Respondent credibly argued it had never received any.

This case offers several important lessons to prospective UDRP complainants asserting common-law trademark rights:

  1. Complainants must evaluate the scope of their asserted common-law rights carefully. Here, though the Panelist did not address it, Respondent was located in the United Kingdom, making more credible its claims not to have known about Complainant’s California-based rights;
  2. Complainants must support claims of trademark use, fame, and/or public recognition when alleging the domain registrant knew about the asserted mark;
  3. Complainants who lack evidence of fame or public recognition should have strong evidence of Respondent’s bad faith. Here, Complainant’s argument was based almost entirely on the suspicious timing of the domain registration and the public recognition of its asserted mark. Once Respondent rebutted the timing argument, the rest of Complainant’s case crumbled.

The case is 6d bytes v. Arboris Ltd / Charles Sears, Case No. FA1908001857298 (NAF Sept. 24, 2019).