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For good or bad, the UDRP does not really contemplate that arbitrators will question registered trademarks.
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One can, of course, obtain registration of a mark in any of quite a few non-examination countries.
What infuriates me on that point is that the UDRP was not intended to extend additional rights to TM owners.
The question for the Panel is not "is the registration valid or not".
This is a summary proceeding. Hence the question should be "is there a substantial issue in dispute".
All of the formative documents and deliberations that went into the UDRP was that it was intended as a "lightweight" procedure and was not intended to decide where there was a "genuine issue" before the panel. After a few months of the UDRP, quite a few panelists get carried away. You've seen yourself how the decisions frequently mis-characterize the arguments. In quite a few instances, although prevailing on other grounds, I have highlighted the point that I am not asking a panel to deem a registration invalid, but merely to recognize that there is a non-frivolous question as to its validity.
So, how does this relate to "rights expansion". Simple. By taking that simplistic position, the TM owner's right in a registration is converted from a
rebuttable presumption to a
conclusive presumption. That conversion is an expansion of rights under the UDRP that goes beyond what the registration legally affords to the TM claimant.
The real kick in the pants is that panels do this while saying "since it is a lightweight procedure, we are not going to consider validity arguments", when in fact what they are actually doing in a "lightweight" procedure is
deciding validity arguments - in the TM claimant's favor. What they should be doing is simply recognizing where there is a substantial non-frivolous argument, and deciding not to decide it one way or the other.
Believe it or not, there have been instances in which a TM registrant, when the registration has been challenged in another forum, has presented a UDRP decision as
evidence of the validity of the mark. That's simply bootstrapping.