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OK for Oklahoma : CitywideOK.com domain passes UDRP challenge


UDRP has been denied.

The owners of the domain CitywideOK.com faced a UDRP, brought forth by City Wide Franchise Company, Inc.

The Complainant does not even own the domain Citywide.com, which belongs to a cellular communications company; they operate from GoCitywide.com instead.

CITY WIDE is a trademark registered by the Complainant in 2009, a year after CitywideOK.com was registered.

The Respondent formed its janitorial services company in 2004 and in 2005 they registered a trademark for CITY WIDE in the state of Oklahoma – hence the “OK” suffix of the domain.

Fighting back the Complainant’s allegations of infringing on their mark, the Respondent stated the following:

1. Complainant has no standing to file the Complaint as the evidence that the company City Wide Holding Company, Inc. has a registered trademark is not evidence that Complainant itself has a trademark.

2. The Complaint is a claim designed to hinder Respondent from engaging in competition with Complainant and is therefore not the type of dispute contemplated by the UDRP.

3. Contrary to the allegations of Complainant, neither of Respondents had prior commercial dealings with Complainant.

4. Respondent began business under the City Wide name in Tulsa, Oklahoma in 2004. It registered a State trademark including the term CITY WIDE in April 2005 and modified it in 2008.

5. Respondent registered the disputed domain name on 26 March 2008 and has used it in connection with its business in Oklahoma, which State is known by the abbreviation “OK”.

6. If Complainant has rights in the CITY WIDE mark relied on by Complainant, that trademark was not registered until 17 March 2009, after Respondent had registered the disputed domain name and long after Respondent incorporated and began trading in Oklahoma City as City Wide.

7. The disputed domain name is not identical or confusingly similar to the CITY WIDE mark.

8. Respondent has a right or legitimate interest in the disputed domain name by virtue of the fact that on 26 March 2008 it registered the domain name which incorporates its business name. Moreover, Complainant disclaimed the exclusive right to use “City Wide” other than in the trademark relied on by Complainant. The term “City Wide” is also a generic term used extensively by others on the internet which Respondent has a right to use. The domain name also reflects Respondent’s bona fide offering of goods and services and has been used for that purpose.

9. Respondent did not register or use the disputed domain name in bad faith as it had a bona fide business purpose in using it. Respondent did not have the intention of causing confusion with Complainant’s trademark and has not done so. Respondent had no prior knowledge of Complainant’s alleged rights in that mark and did not register the domain name to disrupt Complainant’s business.

10. The Panel should make a finding of Reverse Domain Name Hijacking against Complainant.

The National Arbitration Forum’s discovery shows that the Complainant’s trademark for CITY WIDE exclaims the mark itself; in other words, they cannot have exclusive rights to the mark – only to its inclusion of a city skyline drawing.

Neil Anthony Brown, sole panelist, decided on behalf of the Respondent, and ordered the domain CitywideOK.com to remain with them. He declined to deliver a finding of Reverse Domain Name Hijacking, however.

For the full text of the UDRP decision, click here.

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