Another UDRP panel has found that a complainant made a material misrepresentation in a UDRP.

In this case the complainant FileSense, Inc. was found by the panel to misrepresent that it had a federally registered US trademark on the term File Sense which it did not and that the trademark was use by the complainant back in 2011 and the complainant was incorporated until 2012.

The Honourable Neil Anthony Brown QC which comprised the one member panel,  noted the complainant simply filed for a trademark in November 2012 which is not the same as having a trademark.

“The first question that arises is whether Complainant has a trademark or service mark on which it may rely”

“Complainant claims that it has a registered trademark, i.e. a trademark registered with the USPTO, namely trademark No. 85, 779,926, registered on November 15, 2012.”

“That statement is incorrect”

“Complainant has in fact only filed an application, which is now pending, for the FILESENSE mark<

It is of course well established that a pending trademark application is insufficient to establish rights in a mark for the purposes of the Policy and, accordingly,

Complainant’s application does not establish rights in the FILESENSE mark”

“It is also well established that common law or unregistered trademark rights are sufficient to show rights in a mark for the purposes of the Policy. However, Complainant did not submit that it relied on or had any common law or unregistered trademark rights in FILESENSE and did not initially submit any evidence from which the conclusion could be drawn that it had any such rights.”

“It would therefore have been possible for the Panel to dismiss the Complaint on that ground alone.

“However, Panels have an overriding obligation under paragraph 10 (b) to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.

“Complainant appears to have been incorporated in Delaware on November 2, 2012. The Domain Name was registered on December 9, 2010 and acquired by Respondent on January 16, 2013.”

“Complainant filed its application for a trademark on FILESENSE on November 15, 2012.

At that time, it claimed a first use in commerce from November 16, 2011.

It has not yet been registered.

Accordingly, on January 16, 2013, when Respondent acquired the domain name, Complainant did not have rights in a registered trademark and apparently does not have such rights today.

If Complainant was incorporated in Delaware on November 2, 2012, by whom was the trademark FILESENSE used in commerce from November 16, 2011 until November 2, 2012?

The panel went on to find the complainant  did not establish any common law trademark rights.