Descriptive Trademark Registered On US Supplemental Register Insufficient To Satisfy UDRP's First Element

Author:Mr David Taylor and Thomas Raudkivi
Profession:Hogan Lovells
 
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International - Hogan Lovells International LLP

Efling LLC, which asserted trademark rights in ONLINE VITALS, sought transfer of 'onlinevitalus.com' under UDRP Panel stated that mark registered on US Supplemental Register does not by itself provide evidence of distinctiveness to support trademark rights Complainant had not presented suffcient evidence to prove that its asserted mark had acquired suffcient secondary meaning to confer unregistered trademark rights In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a UDRP panel has refused to transfer the domain name 'onlinevitalus.com', fnding that the complainant had failed to establish the frst element of the UDRP and further fnding that the respondent had established rights or legitimate interests in the domain name.

Background

The complainant, Efling LLC, was a US corporation providing services related to the preparation, acquisition and fling of so-called 'vital records' in the United States (ie, records of life events subject to governmental authority, such as birth and death certifcates). The complainant had operated its business via the website 'www.onlinevitals.com' since August 2016. The complainant asserted trademark rights in the mark ONLINE VITALS, for which it had obtained a US trademark, registered on the US Patent and Trademark Offce Supplemental Register on 2 October 2018 (applied for on 13 April 2018 and with a date of frst use in commerce of 15 August 2016). In addition to its registered trademark, the complainant asserted common law trademark rights in the ONLINE VITALS mark, claiming that the mark was well known in the United States such that it had acquired secondary meaning.

The respondent, Vital Records Direct SL, was a Spanish company that also provides services related to the preparation, acquisition and fling of vital records in the United States. The respondent provided such services via its website at the disputed domain name. For use in connection with its vital records services, the respondent had registered a US fgurative trademark, O.V.U.S. ONLINE VITAL US, registered on the US Patent and Trademark Offce Principal Register on 11 June 2019 (applied for on 8 August 2018 and with a date of frst use in commerce of 30 July 2018).

Prior to fling the UDRP complaint, the complainant sent a cease-and-desist letter to the respondent alleging infringement of the complainant's copyrighted website content, requesting that the...

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