Domain Name Dispute Update: Should Complainants in UDRP Proceedings be required to Provide Certified Notice of Other Legal Proceedings Related to Their Trademark Claims

The recent Chillibeans.com panel decision raises some interesting questions.  Not apparent in the decision is the fact that the trademark alleged by the complainant is the subject of a cancellation proceeding at the OAIM, Trademark and Design Registration Office of the European Union. This fact was not disclosed by complainant as part of their filing, and not discovered by respondent until after an adverse panel decision had been rendered. 

The cancellation proceeding was filed by a company called Chili Jewels. Cancellation proceeding number is 000003092.  Because UDRP proceedings are so heavily tied to complainant’s trademark rights, and the review of those trademark rights is relatively lax compared to a federal court proceeding, one is left to wonder whether the UDRP should be amended to require disclosure of any adverse proceedings concerning those trademark rights.  This would be an easy amendment to the proceeding. Further, it is hard to imagine how the amendment would spark much controversy.  While such information would provide a more complete picture of the trademark rights of complainant, not much additional work would be required of the arbitrators.  While is it unknown whether or not such disclosure would have impacted the panel’s decision in this particular matter, the important point is this. The panelist deserve to have as complete a picture of complainant’s trademark rights as possible.  The fact that a trademark is subject to a cancellation proceeding, or has otherwise been challenged, is a key component of that complete picture.  In instances where it is clear that the cancellation proceeding  will likely prevail, for instance because of a preexisting trademark which clearly overlaps with the complainant’s mark, then this factor should be accounted for in the decision. 

Comments

[Enrico Schaefer]

Does Not:

Actually. It would not affect most proceedings or trademark holders. What it would do is preclude people and companies with questionable trademarks from making de fact misrepresentations to the panel about their marks. Most of the big companies have solid marks....

[KD]

I got a question.I have 2 call to action domain names I have owned for a couple months now and I see that a VH1 reality show due to air in April 09 has the exact name and I checked for trademarks and there is none to be found.What should I do,Thanks K

[Does Not Matter]

QUOTE: "Further, it is hard to imagine how the amendment would spark much controversy."

Are you crazy?

It would mean they MIGHT not win so many bullshit cases.

Please, I like reading your blog but be real.