Sold for $1,938 at Auction, BerrySweet.com is Subject of UDRP (Updated)

Yeah, I do not think this is a cut and dry proceeding.

As an investor, it seems defensibly generic, but I do not have a legal background and do not know if/how the domain name was previously used.

Dear Spike,

I believe there it can be done via ZFbot or DomainTools, however, I am maintaining an internal DB with nearly 400 TLD zones.

To flesh this out a little more, it would be a good idea for domainers to stop assigning meaning to the terms “live” or “dead” in relation to things in the USPTO database. A “LIVE” record may be a finally refused application which just happens to be within the six month response period before abandonment. Likewise, a “DEAD” record may be an inadvertently lapsed registration of a still very-much alive trademark. The notations “LIVE” and “DEAD” in the USPTO database, by themselves, don’t tell you very much.

Among the things one can find in the USPTO database, in addition to marks registered on the Principal Register, which are entitled to presumptions of validity and ownership, are a second class of proposed marks which have been refused registration and deemed descriptive. This second class is called the “Supplemental Register”. Marks on the Supplemental Register – like the one mentioned by Elliot in the article – are NOT entitled to a presumption of validity. Since they are descriptive terms, they might someday reach a point of acquired distinctiveness as marks, but that will require evidence of longstanding substantially exclusive use.

Absent other evidence, marks registered on the Supplemental Register are insufficient on their own to demonstrate rights for the purpose of the UDRP. This is pointed out in the WIPO UDRP Overview, which amounts to WIPO’s own FAQ:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item12

—–
1.2 Do registered trademarks automatically confer standing to file a UDRP case?

1.2.1 Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

1.2.2 Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.
—–

Wow, so they are doing this based on a “Supplemental” TM?

Wow…