When you attempt to roll a generic word or phrase into a trademark, you’d better be using it actively.
In a UDRP at the WIPO over the domain name FinancialServicesRoundtable.com the Complainant, Financial Services Roundtable of Washington, DC attempted to indicate the Respondent has no legitimate rights to the domain.
The Complainant portrayed themselves as an expert in financial services, while downplaying the background and education of the Respondent and their rights to own the domain, stating:
“The Respondent Mr. Arnoldi characterizes himself as “a young entrepreneur with a background in finance who has acquired domain names related to his background in finance.” It is undisputed that Mr. Arnoldi attended business school and that the domain names he has registered include several that, like the Domain Name, appear to consist of financial terms or phrases, such as <frontiercapitalgrp.com>, <stockcallers.com>, <tradeallmarkets.com>, <tradingallmarkets.com>, <wallstreetcircle.com>, and <tradewithpros.com> (Mr. Arnoldi also established a limited liability company with the latter name). Mr. Arnoldi established the Respondent Uhsome.com LLC, a website design and advertising company, in 2010. The Response indicates that Mr. Arnoldi has been involved in a variety of other commercial ventures and serves as president of Royal Road Group (a firm that offers a “portfolio” of consulting, Internet marketing, and “new media” services) as well as serving as marketing and communications director for the nonprofit United Nations Association Tampa Bay.”
In other words, the Complainant tried to dig up some dirt about the Respondent’s use of other domain names, just to get the domain name, an attempt that was rebutted thus by the Respondent:
“The Respondent argues that the Complainant has effectively abandoned the mark on which it relies, using the “FSR” logo instead, and that there is therefore no “confusing similarity” between the Domain Name and a mark to which the Complainant has rights. The Respondent claims a legitimate interest in registering a Domain Name consisting of a generic phrase for the possibility of developing a relevant website.”
The sole panelist, W. Scott Blackmer, found that 2 out of 3 conditions that establish a case for the Complainant were not met, and ordered the domain FinancialServicesRoundtable.com to remain with its owner. He declined to find a case of Reverse Domain Name Hijacking, however.
For the full text of the case for the UDRP on the domain name, FinancialServicesRoundtable.com, click here.
THIS IS AWESOME. LOOKS LIKE THE RESPONDENT HAS BETTER LEGAL COUNSEL THAN THE COMPLAINANT LOL