Generic domain name registration stays with rightful owner.
The domain name Convoy.com has been successfully defended against an attack in a Hong Kong UDRP.
The case was brought by Convoy Financial Services, a company incorporated in Hong Kong, against Rainforest Consulting of Tennessee. The respondent was represented by domain name attorney John Berryhill.
This dispute is interesting right off the bat because it was decided by Asian Domain Name Dispute Resolution Centre in Hong Kong. Most UDRP cases are heard by National Arbitration Forum or World Intellectual Property Organization; I believe this is the first case out of ADNDRC that I’ve reviewed.
Convoy Financial Services argued it has used the mark “Convoy” since 1995 in relation to financial services. But it didn’t register any of those marks until 2004. The domain name was registered in 2000.
The panel (William Law, the Hon. Neil Brown QC and Debrett G. Lyons) said (pdf) the firm did not provide evidence of using its marks consistently since 1995. Had the complainant’s rights in the mark predated the domain registration then it may have been able to argue that the domain was registered with the complainant’s mark in mind.
But even if it had proven rights to the domain name before the domain was registered, it still would have face a skeptical panel:
The Complainants submit some evidence showing company registration records which pre-date October 2000 but since “convoyâ€ is an ordinary word in English, without showing extensive use and other common law rights in the word, it would be difficult to satisfy paragraph 4(a)(iii).