A trademark alone does not suffice in order to get the .com.
If you thought that a geographical domain’s ownership cannot be challenged, think again.
Give it enough time – 18 years, in this case – and someone will come up with a name for a company, brand or service, that matches an existing landmark.
The UDRP against the domain PacificMountain.com was brought at the National Arbitration Forum by Bordan Shoe Company, Inc.
The Complainant claimed that their trademark that was registered in February 2015, should be sufficient to deny any legitimate rights to the Respondent’s use of the matching .com.
The Respondent laid out a well-presented response:
“Respondent asserts that he has continuously used the Domain Name for email services in connection with his meteorological and scientific consultancy business since 1997. As a small/individual business owner, Respondent argues that he did not feel the need to register a trademark or service mark in connection with the Domain Name.
Respondent denies that his fair use of the Domain Name misleadingly diverts consumers or tarnishes the trademark at issue because the use of the Domain Name is not related to the goods and services intended by the trademark at issue, nor is the Domain Name used in connection with any of the goods and services Complainant intends to apply the trademark to in the future.
Respondent contends that the Domain Name was not registered or used in bad faith because he registered the Domain Name in 1997, 18 years before Complainant registered the trademark at issue, and therefore could not have registered the Domain Name in order to prevent Complainant from reflecting the trademark in a corresponding domain name. Further, Respondent states that he was not aware of the existence of Complainant’s business or recently registered trademark prior to this current UDRP action by Complainant.
Respondent points out that the Domain Name is not offered for sale currently and has not been offered for sale at any time since it was registered.”
With all that in mind, the sole panelist, Clive Elliott, ordered the domain PacificMountain.com to remain with the Respondent.
For the full text of this UDRP decision, click here.
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