Trademarks do not offer a sure path to getting a domain.
Apparently, Progressive Specialty Glass Company, Inc. did not research its target well before filing a UDRP for the domain name ProgressiveSpecialty.com.
For starters, the domain was registered in 1999, predating the Complainant’s registration of a similar mark in 2011 by a full 12 years.
Secondly, the mark registration in question was not for “Progressive Specialty” but for “PROGRESSIVE SPECIALTY GLASS COMPANY, INC.” instead.
Lastly, the Respondent incorporated in 1984 under that name, asserting use of the mark as early as in the late 1960’s:
“Respondent asserts that it has been commonly known by the domain name, both as an individual and a business, dating back to as early as 1968/69 when Respondent’s father started and traded as “Progressive Specialty Co.” Respondent claims that the business was incorporated May 1, 1984, and Respondent has conducted active business under the name “Progressive Specialty” for almost 32 years. The Panel notes Respondent has provided some limited evidence of use of the “Progressive Specialty Co., Inc.” name in connection with its business offerings date as far back as the 1970’s. The Panel also notes Respondent’s evidence of Progressive Specialty Inc. as an incorporated business in 1984 and documentation indicating business being done consistently since that time.”
Apparently, there was also an attempt by the Complainant to acquire the domain but negotiations failed; the Complainant denies having acted in a non-professional manner.
However, the Panelist’s discovery was scathing, and noted a finding of Reverse Domain Name Hijacking on top of ordering the domain to remain with the Respondent:
“Respondent contends that Complainant has used scare tactics and bullying to force Respondent to transfer the disputed domain name to Complainant. Complainant disputes that it has operated outside of proper business etiquette in any manner. The Panel notes that Respondent registered the disputed domain name in 1999 and operated its business for many years prior to Complainant’s mark registration and that Complainant’s own domain name <progressiveglass.com> was registered in 2001. Respondent contends that she was unaware of Complainant’s existence until receipt of Complainant’s C&D letter and the threat of filing the present UDRP action. The Panel notes the parties engaged in negotiations over the possible sale and transfer of the disputed domain name but were unable to come to a satisfactory agreement. Complainant argues that its subsequent actions were warranted due to Respondent’s infringement of Complainant’s mark but Complainant provides no evidence of infringement. Complainant’s registration of the mark PROGRESSIVE SPECIALTY GLASS, INC. does not give Complainant exclusive rights to control the use of the individual words that constitute its mark. The marks are not identical and the parties businesses coexisted for more than a decade without any apparent conflict. Complainant did not contact Respondent until after Complainant registered its mark. But registration of a mark does not make prior use of similar marks suddenly infringing uses. The Panel here finds that the evidence supports a conclusion that Complainant’s assertions of Respondent’s bad faith registration or use are unfounded and Complainant has used the UDRP as a Plan “B” option to attempt to secure the domain after commercial negotiations have broken off. The Panel finds that reverse domain name hijacking is present.”
For the full text of the UDRP decision for ProgressiveSpecialty.com click here.
