[nc-udrp] what is the value of a pending trademark application under UDRP?

[Dan Steinberg <synthesis@videotron.ca>]

Another from Michael Geist's fine list. I'd say the headline makes a
fine addition to our questionnaire. Thoughts?
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WHAT IS THE VALUE OF A PENDING TRADEMARK APPLICATION UNDER
THE UDRP?
Apparently it depends on whether you are a complainant or
respondent.  In a just-released NAF decision involving
"channel5.com", a three-member panel, which included Carolyn
Marks Johnson, ruled that the respondent's pending trademark
application did not establish a legitimate interest in the
name, noting that "a trademark filing, in and of itself,
does not constitute sufficient demonstrable preparations to
use a domain name in connection with a bona fide offering of
goods and services."  Interestingly, the same panelist, the
NAF's second busiest, has consistently ruled that a
complainant's pending trademark application does offer
evidence of a right in the name ("Complainant's rights are
evidenced by its pending trademark application with the
United States Patent and Trademark Office for TELEPLACE.";
"Complainant also has rights in the mark, given
Complainant's pending trademark application.").
Channel 5 decision at
http://www.arbforum.com/domains/decisions/98415.htm
Other decisions cited at
http://www.arbforum.com/domains/decisions/95639.htm
http://www.arbforum.com/domains/decisions/95835.htm



--
Dan Steinberg

SYNTHESIS:Law & Technology
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