Tucows Fights off Car Dealership
Tucows wins UDRP decision for Batchelor.com.
Domain registrar Tucows has successfully defended against an arbitration proceeding over the domain name Batchelor.com, which the registrar acquired with its NetIdentity purchase. NetIdentity holds nearly 40,000 surnames and offers email addresses at those names, such as email@example.com.
The complaint was filed by Ken Batchelor Cadillac Company, a car dealership in San Antonio, Texas. The National Arbitration Forum panel determined that Batchelor Cadillac did not establish rights in the mark “Batchelor”. Establishment of rights to the mark is one of three requirements to win a UDRP. The complainant must also show that the registrant had no rights or legitimate interest in the name and the domain was been registered in bad faith. The panel did not weigh in on the latter two because of the lack of trademark.
Bill Sweetman, General Manager, Domain Portfolio at Tucows, said he was surprised this case was brought forth. “In this particular case Iâ€™m surprised the National Arbitration Forum took it” because the complainant admitted it didn’t have rights in the mark “Batchelor”, said Sweetman. In its filing, Ken Batchelor Cadillac Company asserted common law trademark for “Ken Batchelor Cadillac Company”.
“I think the folks that run that car dealership should see if theyâ€™ve been taken for a rideâ€ for fees by their representative, said Sweetman. The car dealership was represented by Jeffrey S. Zehnder, of Zehnder Communications, a communications and advertising firm. Bret Fausett of Cathcart Collins, LLP represented Tucows.
Zehnder, who stressed that he was not speaking on behalf of the dealership, told Domain Name Wire “We feel like we had a viable case to make. Our customersâ€™ tendency is to type â€œBatchelor.comâ€ into their address bar because thatâ€™s how they would likely search to find us.” He referred to another case won by parent company Sewell Automotive for the domain SewellCadillac.com. Acknowledging the difference, Zehnder said “Certainly our case would have been strengthened if it was BatchelorCadillac.com.”
Stephen Tolerico, VP of Marketing at Sewell Automotive said, â€œWe are obviously disappointed with the decision.â€
Sweetman said Tucows has won every surname UDRP it has responded to.
Batchelor Cadillac is not well known outside the areas of its car dealerships. A search for “Batchelor” on Google did not return the car dealership on the first page, but did turn up other people with the same last name.
It is unlikely that the panel would have found confusion even if Batchelor Cadillac did have trademark rights. The landing page at Batchelor.com does not have ads related to car sales.
Sweetman says Tucows does not sell domains from its NetIdentity portfolio. “If we were to sell one of those domains, not only do we sell the business value associated with the surname, but it hurts the overall portfolio,” said Sweetman. “The moment you pull one of those diamonds out of the necklace, the whole necklace loses value. Itâ€™s different from a portfolio of generic domains. You donâ€™t think twice about selling one of those for the right price.”