The National Arbitration Forum recently rejected a domain arbitration complaint filed by Helix Innovations (“Complainant”), represented by Corsearch, on the basis that the Complainant failed to show it had a legitimate right/interest in a trademark that was confusingly similar to the registered domain name.
The reason this is interesting and worth noting is that rarely does an arbitration get rejected on this basis. Having a mark that looks/sounds like a registered domain is not usually where an arbitration complaint gets rejected – its a threshold issue that is usually overcome with basic evidence. Where complaints usually have trouble is with the Bad Faith element and showing that the domain name is being used to disrupt the trademark holders business, garner a profit from the domain by selling it back to the trademark holder, and the like.
Here, the Complainant alleged that its rights to the trademark ON! were sufficient for filing against the domain name www.carryonniconepouches.com – but there was nothing in the record about that name or a similar name that complainant had rights to.
Complainant has not adduced any evidence of any trademark use of the phrase CARRY ON! NICOTINE POUCHES, which might have resulted in the establishment common law rights in an unregistered mark.
The panel in this case actually seemed to reprimand the Complainant for submitting evidence that was supposedly representative of its trademark rights, but actually was just
In the applications, Complainant lists its abovementioned prior registrations of the ON! marks as being the relevant “Prior Registrations” for the purposes of the applications, but there is no reference to any prior registrations that might contain the phrase: “CARRY ON! NICOTINE POUCHES”.
This decision is a good example of why it is important to vet a UDRP claim before making it and also how submitting just any old evidence is not going to fly, even if the Respondent does not file a response to the complaint.