Pending trademark application insufficient to win UDRP action

In Mk-Net-Work v IVE Technologies, a World Intellectual Property Organization (WIPO) panellist has confirmed that, where no common law trademark rights can be established, a pending application for a mark identical to a domain name is not sufficient to obtain the transfer of the domain name under the Uniform Domain Name Dispute Resolution Policy.

Mk-Net-Work (MNW) sells ZipMail, software designed to compress messages sent with IBM's Lotus Notes email software. MNW registered the domain name 'notes-compression.com' in March 2003 to host a website selling its software and associated services. In April 2004 MNW filed an application to register the trademark NOTES-COMPRESSION.COM with the French Trademark Office.

Upon learning that IVE Technologies, which sells a compression product for Lotus Notes similar to ZipMail, had registered the domain name 'notescompression.com' in August 2003, MNW wrote to IVE requesting that IVE (i) immediately cease using the domain name, and (ii) transfer the registration to MNW at MNW's expense. IVE refused and MNW filed a complaint with WIPO.

WIPO panellist Wolter Wefers Bettink rejected the complaint, even though evidence indicated that at the time IVE registered its domain name, it knew that MNW had already registered 'notes-compression.com' to sell competing products. Bettink found that MNW's trademark application was still pending at the time he rendered his decision. He noted that WIPO panels had consistently held that a trademark application itself is not enough to create rights in a mark. MNW's evidence only showed that the domain name 'notes-compression.com' was mentioned in advertisements for ZipMail, which was not enough to prove that the domain name was used as a trademark distinguishing ZipMail from other products. Therefore, MNW did not have unregistered trademark rights in NOTES-COMPRESSION.COM.

Bettink concluded that, as MNW had not proven its rights in the NOTES-COMPRESSION.COM trademark, it was unnecessary to consider whether IVE (i) had any rights or legitimate interests in the domain name, or (ii) was using the domain name in bad faith.

Jennifer Roper and David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver