By Steve Levy
One element of par. 4(a)(i) of the UDRP requires proof that a complainant own trademark rights that relate to the disputed domain name. This proof usually takes the form of one or more trademark registration certificates that the complainant submits into evidence as part of its UDRP complaint. But what happens when the name of the owner listed on that certificate doesn’t match up with the name of UDRP complainant? This is exactly the situation in a number of recent cases where someone named Lucas Alvarez filed separate complaints against the domains bodytechpharmalab.com, bodytech-lab.com, and btpharmalab.com. In the first case, Mr. Alvarez claims ownership of a Chilean trademark registration for the mark BODYTECH. Sounds good so far, yes? But, when one actually looks up the registration number at the Chile trademark office site (No. 1204725), it turns out that the mark is owned by a company called Nutraline Limitada. In the second and third cases, Mr. Alvarez cites a different Chilean registration (No. 1244325), which has a listed owner of Vitamin Shoppe Industries Inc., a US company. In the first two cases, the UDRP panelists didn’t mention the owners of these trademark registrations and simply granted a transfer of the disputed domain names. But in the third case, the panel issued an order requiring Mr. Alvarez to explain why the listed trademark owner is “an entity that is not a party to these proceedings.” No reply came and so this case was denied.
So, this raises a number of questions: 1) Why did the panelists in the first two cases give Alvarez a pass? Were they just overlooking the name on the trademark registration certificate? 2) Is Mr. Alvarez a “UDRP troll” or is he legitimately related to these companies that own the BODYTECH trademarks and was just careless in not explaining that when he filed his UDRP complaint? 3) Whose job is it to make sure that the named complainant actually owns trademark rights? While a case manager at the dispute provider (FORUM, WIPO, etc.) could easily look at this when a new case comes into the office, my own opinion is that it’s ultimately the panelist’s job to decide if the complaint meets all of the requirements of UDRP par. 4(a). If not, they can either issue an order requiring the complainant to submit further information or documents, or they can deny the case on the ground that the requirements of par. 4(a)(i) have not been met because the named complainant hasn’t proven that it owns trademark rights.
It will be interesting to see if Mr. Alvarez files any further UDRP complaints and whether the panelists are careful enough to avoid letting him skate by and perhaps get transfers of domain names that he may not be entitled to.