If you ever ended up using the services of a plumbing company, you might be familiar with Roto-Rooter.
The company has been around since the first half of the 20th century, providing plumbing services in America under the Roto-Rooter brand.
Roto-Rooter is also a trademark, having been registered in 1954, or over 60 years ago, and operate the web site RotoRooter.com.
It came as no surprise that a UDRP was filed against the Registrant of RooterRooter.com, alleging infringement of the ROTO-ROOTER mark.
RooterRooter.com is not related to RotoRooter.
The Complainant stated:
“Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not granted Respondent permission to use the ROTO-ROOTER mark in connection with any domain name registrations or any other context. Additionally, Respondent has not made any bona fide offering of goods or services through the <rooterrooter.com> domain name, or for any legitimate noncommercial or fair use. Instead, Respondent has intended to use the confusion associated with the confusingly similar domain name to draw customers to its website, which is in direct competition with Complainant’s business.”
In its response, the Respondent stated:
“The <rooterrooter.com> domain name is comprised of the common term “rooter”, displayed twice, which is a generic name for a drain cleaning machine. Additionally, Complainant cannot claim any level of rights to the term in the plumbing industry as the term merely designates and classifies services performed by those in Complainant’s and Respondent’s industry. The U.S. federal trademark registry shows ~118 marks which incorporate the term “rooter” used in connection with various plumbing products and services. See Resp., at Attached Ex. C (search results from USPTO TESS database). 76 of which have been required to disclaim any exclusive right to that term in connection with plumbing products and services. Id. Further, many such references include the same alliterative qualities as does Complainant’s mark.”
A three member panel at the National Arbitration Forum delivered a decision that there’s nothing wrong with RooterRooter.com providing an index of plumbing services.
However, only two of the three panelists agreed, and one dissented thus:
“With the utmost respect to my fellow panelists, I must dissent to their expressed conclusion that it has not been established by Complainant that Respondent registered and is using the domain name in question for the purpose of confusing the general public into thinking this is a website for Roto-Rooter plumbing services. There is simply no other rational conclusion when one looks at the actual facts here. The name is in fact very confusing, which is why it is being used. The fact that Roto-Rooter is a long standing trademark makes it even clearer.
Roto-Rooter is so well established in the plumbing and sewer line clean out business all over the US and in other locations that virtually any viewer of this offending domain instantly identifies it with the Roto-Rooter business activity. It is not just some guy who thought it would be fun to emphasize the word Rooter by using it twice in a row because he cleans out sewer lines clogged by roots. It is the equivalent of an electrical company using the domain name of GeneralGeneralElectric.com, hoping it would confuse the public into thinking this was just another website for General Electric which has been known world-wide for nearly a hundred years.”
Regardless, a decision was delivered to deny the transfer of RooterRooter.com to the Complainant, and the entire text of the UDRP decision can be found here.
