Blockchain firm’s domain complaint fails: Notice of allowance isn’t enough

Blockchain firm loses UDRP following relying on trademark that isn’t fully registered.

When does a U.S. trademark officially become “registered”?

A recent UDRP case raises this question, and it’s worth taking note.

The case involves blockchain firm Auradine, Inc., which filed a dispute against the registrant of auradine-miner .com.

By all accounts, this appears to be cybersquatting. The domain resolves to a page with the Complainant’s logo and a site that tries to pass off as the Complainant. It sells blockchain mining equipment.

Still, having a good case and making a good case are two separate things.

To win a UDRP, the Complainant must show that the domain is identical or confusingly similar to a mark in which it has rights. This can be a registered trademark or a common law trademark.

In this case, Auradine made claims to both.

Still, its U.S. trademark application has only been issued a notice of allowance. It has not been completely registered.

Panelist Debrett G. Lyons noted that there are some prior UDRP cases in which panelists have accepted that a notice of allowance was sufficient, but these cases also involved other factors.

Lyons wrote that the U.S. Patent and Trademark Office website states:

[a] notice of allowance is an official notification from the USPTO that a specific trademark has made it through the 30-day opposition period following publication in the Trademark Official Gazette, and has consequently been allowed. Receiving a notice of allowance is another step on the way to registration, but it doesn’t mean the trademark has registered yet.

Notices of allowances are only issued for applications filed on an “intent-to-use” basis. This makes it difficult to argue that the trademark has been in use. Auradine hasn’t filed a statement of use and has been afforded an extension to file it.

Lyons concludes:

Having regard to the plain wording of the WIPO Overview, the countless UDRP cases which informed it, the USPTO’s own practice statements and, above all, the foundation tenets of trademark registration systems, the Panel finds that “registered” means just that, registered.

Since Lyons did not find that there was a registered mark, Auradine had to rely on common law rights. It didn’t do a good job convincing Lyons of any common law rights:

In this regard the Complaint makes the following claims:

“Officially founded in 2022, Auradine is a provider of web infrastructure solutions for blockchain, security, and privacy. …  Since its founding, Auradine has established widespread consumer recognition and loyalty in the AURADINE Trademark and Auradine’s associated goods and services through its expenditure of significant resources and marketing efforts. As a result of these efforts, Auradine has developed substantial goodwill, consumer recognition and distinctiveness in the AURADINE name. Auradine has actively promoted its services by using the AURADINE Trademark since at least as early as 2022.”

There is no support for any of those conclusory assertions. As such, the Complaint falls far short of the evidentiary requirements laid out in the WIPO Overview and the Panel is thus unable to find common law trademark rights.

Auradine certainly could have backed up its statements. This is a significant business that has raised $300 million, counting a $153 million Series C round this month.

But it failed to do so, and Lyons denied the transfer.

Goodwin Procter LLP represented Auradine, Inc.