BusinessESforSale.com (plural) failed to show it had trademark rights in its descriptive name.
Although there are many benefits to using a good descriptive domain name, there’s also a drawback: other people can use similar domains, too.
That’s the case with BusinessESforSale.com, which just lost a UDRP against the owner of BusinessforSale.com.
The complainant failed to show that the disputed domain name was confusingly similar to a trademark in which it has rights since it couldn’t show any sort of trademark rights in BusinessesForSale.com.
This would be like someone using Lemons.com (for selling lemons) going after the owner of Lemon.com or Lemons.co.uk.
The majority of the panel was unimpressed that the complainant’s initial filing failed to mention that its trademark application was denied. Only once this was brought up did the complainant make a supplemental filing explaining that trademarks can be denied for a number of reasons — yet not disclosing why its application was denied. In its supplemental filing it also tried to make the case for a common law mark. The majority of the panel would not consider this additional evidence since it should have been disclosed in the initial complaint.
The complaint included copies of the BusinessESforSale.com website. The panel noted that nowhere on the site does it claim a trademark on the term, and in fact “Businesses For Sale” is used in its descriptive sense immediately below the logo.
One panelist, Richard Page, dissented and said the complainant showed common law rights that were sufficient for a UDRP.
That’s why it’s usually best to go with a three person panel.
The respondent was represented by John Berryhill.