The Uniform Domain Name Dispute Resolution Policy (UDRP) has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are inadequate.

The issue relates to the first element of every UDRP complaint, which requires the party seeking relief to prove that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis added). The UDRP doesn’t specify what kind of “rights” are necessary.

Through the years, and in the two recent decisions, UDRP panels have been presented with trademarks registered on the “Supplemental Register” at the U.S. Patent and Trademark Office (USPTO). The Supplemental Register is by definition reserved for trademarks that are “capable of distinguishing applicant’s goods or services” but are “not registrable on the principal register.” An application to register a trademark on the Supplemental Register “shall not be published for or be subject to opposition” and are always subject to cancellation.

What is the Supplemental Register?

The Supplemental Register offers some protections for trademark owners, such as the ability to use the circle-R symbol and the right to bring an infringement action in federal court.

But, trademarks on the Supplemental Register do not attain the same status as those on the Principal Register.

As the International Trademark Association (INTA) has summarized:

[A] Supplemental Registration does not convey the presumptions of validity, ownership and exclusive rights to use the mark that arise with a registration on the Principal Register. In addition, a Supplemental Registration cannot be used to prevent the importation of infringing or counterfeit products. Finally, a Supplemental Registration can never become incontestable.

UDRP panels have traditionally looked upon trademarks on the Supplemental Register with great skepticism.

Here’s what WIPO’s Overview of UDRP decisions says about these registrations:

Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.

And yet, some complainants in UDRP proceedings still try to rely on trademarks that exist only on the Supplemental Register.

UDRP Panel: Supplemental Registrations ‘Insufficient’

The most recent decisions are from a pair of cases filed by the same complainant, Corporate Image Marketing, Inc., which filed complaints for the domain names <1-800-cleaning.com> and <1800cleaning.com> (in one case) and <1-800-janitor.com> and <1800janitor.com> (in a second case).

In both of those cases, Corporate Image Marketing alleged that it had common law trademark rights in the relevant marks, as well as rights based on registrations on the Supplemental Register.

But in both cases, citing the WIPO Overview quoted above, the panel found that the Supplemental Register registrations were inadequate for purposes of the UDRP. Those registrations, the panel wrote in both decisions, are “insufficient to establish Complainant’s trademark rights.”

Further, the panel said that Corporate Image Marketing had failed to establish any common law trademark rights, offering “nothing more than a bare allegation, devoid of supporting evidence.”

As a result, the panel denied both complaints, allowing the domain names to stay with the current registrant.

A Lesson for Trademark Owners

The lesson is clear: Trademark owners in UDRP cases cannot rely solely on registrations on the USPTO’s Supplemental Register and must be prepared to establish common law trademark rights (or registration in another, appropriate jurisdiction) to avoid having their complaints denied.