A registered trademark does not give automatic rights to a domain.
When you operate a company that utilizes distributor contracts, using the UDRP process to reclaim a domain might not get you any results.
In the case of the domain EngelCoolers.com, the UDRP was filed by Innovative Marketing and Distribution, Inc. doing business as “Engel Coolers.”
According to the UDRP filing, the Complainant argued the following:
“Complainant has made use of the ENGEL mark in interstate and international commerce since at least as early as May, 1962 for fridge-freezers, and at least as early as August, 2002 for portable coolers. Complainant has registered the ENGEL COOLERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,721,792, registered Apr. 14, 2015). The disputed domain name is confusingly similar to Complainant’s ENGEL COOLERS mark. The disputed domain name incorporates the entire mark, while removing the space between the words, and adds the generic term “buy” and the generic top level domain (“gTLD”) “.com.””
According to the UDRP, the Respondent, Michael Harrington, was an authorized distributor for Complainant from September 2010 until April 2016. Respondent registered the disputed domain name on September 28, 2010 for use as part of its distributor position.
The Respondent’s position also added that “Complainant has not provided any evidence to support its use of the ENGEL or ENGEL COOLERS mark during the timeframe it claims use. Complainant’s trademark registration for ENGEL COOLERS indicates a stylized mark, and Respondent is not using this stylized mark.”
It appears that the ENGEL COOLERS mark was registered on April 14, 2015.
Roberto A. Bianchi, Panelist, concluded that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.
The UDRP was thus dismissed, ordering the refusal of the domain’s transfer request.
For the full text of this UDRP, click here.
