Oh, if it was so easy to say yes or no…
What in general?
Under the paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), a complainant must prove that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
At the same time, a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i) (see WIPO Overview 3.0, section 1.1.4).
Therefore, at first look, it seems that the lack of the registered trademark deprives the right to file a UDRP complaint.
If we go deeper?
In fact, resolving domain disputes under the UDRP is a complex procedure that constantly encounters the peculiarities of national legal systems.
Some jurisdictions have different registration models (first to use/first to file); similarly, the moment when rights arise is determined differently (as of the date of application/certificate receipt).
If the UDRP required mandatory registration, it would create unequal conditions of access to protection; depending on country-specific features.
As explained in detail in section 1.1.1. of the WIPO Overview 3.0, the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks.
Previous UDRP panels have also consistently recognised that unregistered (common law) trademark rights may satisfy the threshold requirement.
In CADD Centre Training Services Pvt Ltd v. Hola Domains, Hola Dominios Limitada, WIPO Case No. D2017-0924, the complainant has provided evidence of its use of the trade mark which precedes registration of the disputed domain name by about 5 years. The trade mark has developed an extensive reputation in India and internationally, with the complainant’s global network of customers, which included millions of students. The trade mark has acquired distinctiveness, with connotations relating to networking opportunities in various professional fields, being a one-stop shop for job seekers and employers, and excellence in sourcing, managing and presenting high caliber candidates to clients.
In Philip Morris USA Inc. v. Doug Nedwin/SRSPlus Private Registration, WIPO Case No. D2014-0339, the panel noted that the complainant’s trade name has been in use for over 25 years. Complainant used and incorporated its trade name into all of its various websites. Further, the complainant submitted articles referring to its widespread recognition within the United States, demonstrating a close association with the “Philip Morris” trade name and the tobacco products it manufactured and sold.
However, the burden of proof is significantly higher; to establish unregistered rights, the complainant needs to show that consumers recognize the mark as a distinctive identifier for the relevant goods or services.
In contrast to the above cases, in Amsec Enterprises L.C. v. Sharon McCall, WIPO Case No. D2001-0083, the panel found that the complainant had failed to establish that it had any rights in respect of an unregistered mark. Stating that relevant evidence of secondary meaning could include length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys, and media recognition. The panel noted that the only evidence submitted was the assertion that the trade name had been used for a nine year period, a web page that was in use days before the complaint was filed, and that complainant’s gross sales had exceeded seven million dollars. The panel conclude that such evidence alone was not sufficient to establish unregistered trademark rights.
Sums
In our modern world, startups, SMEs, creators, and online businesses often rely on use rather than registration or develop goodwill before formal IP strategy is implemented. Similarly, the UDRP is designed to address abusive domain name registrations, not to privilege formalities alone.
So the answer is next: typically no, but in some circumstances yes, and we can help you turn one into another.
