UDRP panel declines to hear refiled UDRP.
A World Intellectual Property Organization panel has denied Steven Samblis’ second attempt to take down gripes sites.
Samblis is a television personality and businessman who runs a media company.
Apparently his actions have rubbed at least one person the wrong way. That person set up sites using the domains samblis.com, stevensamblis.com, stevensamblis.net, and stevesamblis.com.
Samblis filed a UDRP against the domain names in 2014, claiming common law rights in his name. The case was filed at National Arbitration Forum by attorney Steven L. Rinehart.
The panel ruled that he did not prove common law rights, so the case fell apart.
Samblis subsequently registered a trademark for his name, citing first use in 2005. So he filed another case with the help of Rinehart, this time with World Intellectual Property Organization.
The panel rightfully declined to hear the case. This paragraph sums up why:
The subsequent registration of STEVEN SAMBLIS as a trademark – even with the USPTO registration showing a date of first use in commerce going back to February 8, 2005, is “new information” in a strict sense, but it is not “new information” in the sense that the asserted trademark rights were unavailable to Complainant at the time he filed his complaint in the Prior Case. Presumably, when filing his trademark application with the USPTO, Complainant had to provide some type of evidence of use of STEVEN SAMBLIS as a trademark going back to February 2005. Why, one asks, was that same evidence – to show that STEVEN SAMBLIS was being used as a trademark – not provided to the panel in the Prior Case? In the Panel’s view, and based on this record, the fact of trademark registration since the decision in the Prior Case does not constitute significant fresh evidence of trademark rights that was simply unavailable back at the time of the Prior Case. Parties to streamlined proceedings like those under the Policy should strive to get it right the first time.
The refiled dispute had a couple additional silly claims, such as that the addition of whois privacy and the respondent’s continued blogging about Samblis were new evidence against the domain name owner.
>>> when filing his trademark application with the
>>> USPTO, Complainant had to provide some type
>>> of evidence of use of STEVEN SAMBLIS as a
>>> trademark going back to February 2005
This is a false assumption. You only have to state a first use in commerce date, you do not have to submit evidence of using it in the past. I typically hold Nathalie Dreyfus in high regard. And she made the overall right call in this case. However that statement about providing evidence of your first use in commerce date is not true.