Company went after CyclingTips.com.
Law firm ESQwire.com has scored yet another Reverse Domain Name Hijacking victory on behalf of a client.
Wallace Media Pty Ltd, which operates the cycling website CyclingTips.com.au, filed the case against the owner of CyclingTips.com. Wallace Media complained that people looking for its site often leave off the .au, leading them to the respondent’s domain name.
There were a lot of issues at play in this case, including when the respondent actually registered the domain name. Fundamentally, though, this case came down to a company adopting a highly descriptive domain name and then wanting to get common law trademark protection for it.
Wallace Media threw out a bunch of stats to show that its website is popular among Australian bicyclists. But what does that have to do with a domain name owner in Canada, who could have purchased the domain name for the same descriptive purpose?
The three person panel found that the complainant did not show it had trademark rights in “CyclingTips”:
In the case at hand, the Panel notes that the name CYCLINGTIPS is not inherently distinctive as it is composed of the two generic words “cycling” and “tips” and is descriptive of the contents made available on the Complainant’s blog site “www.cyclingtips.com.au”.
The Panel has reviewed the material submitted by the Complainant and finds that it is not sufficient to demonstrate that consumers identify the name with the source of the Complainant’s services and not merely a phrase describing those services.
The panel also determined that the domain name wasn’t registered in bad faith. Although the whois information for the domain has changed, the respondent said he registered the domain name in 2005 — several years before the complainant’s site existed.
In finding reverse domain name hijacking, the panel wrote:
…the Panel finds that the Complainant should have known that it would not be successful in the present UDRP proceeding, due to the Complainant’s lack of any registered trademark corresponding to the disputed domain name, the descriptiveness of the name CYCLINGTIPS and the paucity of evidence establishing that the name CYCLINGTIPS has become distinctive of the Complainant’s services. These fundamental flaws in the Complainant’s case are exacerbated by the facts, which should have been known to the Complainant and its authorised representative, that the registration date of the disputed domain name predated the Complainant’s existence by several years and that there was an absence of any evidence of the Respondent’s intention to target the Complainant.