Western Woods : Generic geo-domain lost via UDRP !

Western Woods.

Western Woods.

It’s not the nature of the domain, it’s how you respond to the UDRP.

In the case of the generic geo-domain WesternWoods.com, the late response by the Respondent played a major role in the decision.

According to the case, the Complainant did not even hold a registered trademark, relying instead on a “common law” mark:

“The Complainant is a wholesale and retail seller of jewelry and minerals and stones used in jewelry. Since 1984 the Complainant has operated under names that included the words “Western Woods”. It was incorporated under its present name in 1990. It holds no registered trademarks that include “Western Woods”.”

Another key element in this case was the late response filed, outside of the required 20 day window:

“… the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The due date for Response was extended until September 27, 2015. No Response was received by that date and accordingly the Center notified the Parties of the commencement of the Panel appointment process. The Respondent submitted a late-filed Response on September 29, 2015.”

In that late response, the Respondent stated:

Mr. Mallon has conducted a small woodworking business since 1988. Starting about 2008 “I decided to start a Made in America Company that specialized in displays for retail stores made in the American Southwest.

The website *westernwoods.com* was not being used by anyone, I thought what a great name for a woodshop that made western themed displays in the western United States. The downturn in business made this business venture slow and difficult to finance. In 2014 business started to improve and my ability to finance this is a little more feasible. I have never used this website to damage the name or business relationships the [Complainant] has.”

The Respondent asserts the statute of limitations as a defense, as the Complainant has not taken any action against the Respondent for seven years. Many other companies use “Western Woods” in their name. “I have a financial investment and allot [sic] of time spent on the development of this site, waiting 7 years to file this action is wrong, there has to be a time limit.””

Richard G. Lyon, sole panelist for the WIPO, delivered a decision that must have shocked the Respondent, ordering WesternWoods.com to be transferred to the Complainant.

For the full text of this decision, click here.


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