TM Rights In Domain Name Arbitration – Part II

Comments on the Assertions for “the Prior Application Right” as the Legal Ground during Domain Name Arbitration – Part II

Author:  Sylvia Chen

In the first part of this article, we made a brief introduction to domain name arbitration and the main argument, and we will continue the discussion from the following three aspects: 1. Reviewing the two domain name cases in a bit further; 2. Discussing the paragraph 4 (a) of UDRP; 3. How to better prepare the evidence on the basis of “unregistered trademark right”.

In the Unicareer case, instead of alleging any prior registered trademark rights in any jurisdiction on “UNICAREER”, despite the trademark application in Australia, the Complainant asserts unregistered trademark rights in UNICAREER， and has provided extensive evidence of its provision of services under the UNICAREER mark, including the online courses it is providing via instructors from many different countries; promotion and use of its mark offline in China and the United States, including but not limited to offices operation, recruitment events, corporate partnerships, campus collaborations, etc. The extensive evidence of usage provided by the complainant intends to prove that before the registration of the disputed domain name, its unregistered UNICAREER has been put into use and gained a high reputation, and the complainant enjoys the prior trademark right to UNICAREER.

In the COUGAR LIFE case, the complainant, Avid LIFE Media, Inc., made a claim based on the Canadian registered trademark “COUGAR LIFE” in the name of one of its subsidiaries, and submitted extensive evidence of the trademark being used in the relevant services. However, since the complainant is not the direct owner of the trademark, the panel did not find that the complainant has an exclusive registered trademark right. Based on the evidence of use provided by the complainant, which meets the elements of the above-quoted part of UDRP, the panel found that the complaint was eligible for claiming its common law right to the trademark.

Meanwhile, the decision also pointed out that “Trademark registration applications do not give rise to trademark rights, and it is necessary for the Complainant to put forward evidence proving that, prior to its filing of the Complaint, it has been providing goods or services under the unregistered mark and had thereby acquired a reputation such that the public would associate those goods or services with the Complainant instead of other service providers. ”

Through the above two cases, it is learned that the quote “a trademark or service mark in which the complainant has rights” referred to in UDRP, not only includes the registered trademark right but also includes the prior used while yet registered trademark.

Looking at paragraph 4 (a) of UDRP, the regulation itself does not specify the civil rights or interests enjoyed by the complainant. It originally stated that “your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. The Key Info of the complaint elements is as follows: 1. The complainant has the right to the trademark or service mark; 2. The disputed domain is identical or confusingly similar toa trademark or service mark; 3. That is causing public confusion.

In other words, this element delivers 1. Whether the complainant’s trademark a registered one is not compulsory; 2. The complainant could obtain trademark registration after the disputed domain name registration; 3. It would still help the case despite the jurisdiction of the trademark registration.

From the arbitration decision of those initiated based on the rights of “unregistered trademarks”, the author finds that the panel will mainly considerate whether the evidence provided by the complaint could prove its prior right of use, that is, before the registration of the disputed domain name, the complainant’s use of the trademark for the relevant goods or services, its reputation among the relevant public, and whether the relevant public will associate the trademark with the complainant.

Therefore, when the complainant intends to submit a domain name arbitration based on “unregistered trademark right”, it shall pay close attention to the evidence preparation of the prior use of the trademark. The evidence preparation for arbitration of this type of domain name can be referred to below:

1, Preparation of evidence on “rights basis of the complainant”. The Complainant should prepare the relevant evidence according to the standard of ” use in advance and have some influence ” in Trademark Law, to prove that the trademark of the Complainant has been put into use and has certain influence before the registration date of the disputed domain name.

2, Preparation of evidence on “whether the respondent has rights or legitimate interests in the trademark”, which is the key point for the respondent to defend. For the complainant, it only needs to submit a simple web search evidence that it has not found that the respondent has a legitimate interest in the trademark.

3, Preparation of evidence on “whether the respondent is in bad faith”, which is an essential element of domain name arbitration. Complainants should do their best to investigate and provide sufficient evidence to prove that the respondent registered the disputed domain name in bad faith. The malicious intent mentioned in this paragraph includes counterfeiting, sales, goodwill destruction, passive holding, etc., which will not be discussed in detail in this article.

Conclusion:

In conclusion, the crux to the identification of “unregistered trademark” by the panel is whether the trademark being “used in advance and has certain influence” rather than the date of application and registration, or the country where the trademark is registered.

If the complainant intends to initiate the domain name arbitration on the basis of “the unregistered trademark”, “the trademark which is applied first but registered later”, etc., extensive evidence shall be prepared to prove that the trademark is “being used in advance and has certain influence”.

Anyhow, whether the final Domain Name arbitration can get the support of the panel still depends comprehensively on the complainant’s prior use of the trademark, the popularity and influence of the trademark, whether the respondent has bad faith and whether the respondent has legal rights to the domain name. In short, it is still especially important to have the trademark rights secured by applying for its registration.