Evidence of rights in unregistered trademark was insufficient to meet first UDRP element

In Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, a NAF Panel denied the complaint because it found that Complainant had failed to show unregistered rights in the mark SILVER STREAK, which comprised the domain name. Complainant introduced evidence of pending applications for the mark which it claimed to have used since 1978. But the Panel found this evidence unpersuasive, especially for a mark, in the Panel’s view, “by its nature not readily susceptible to monopolization by a single trader.”

Though it did not need to (i.e. it had sufficient grounds already to deny the complaint), the Panel went on to find that Complainant had established a prima facie case that Respondent lacked rights or legitimate interests in the domain name. But on the question of bad faith, the Panel found it more likely than not that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark, and registered the name for a purpose in no way linked with Complainant.

Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing, FA 1510001643236 (Nat. Arb. Forum November 23, 2015)

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases