AutoTrader.com fails to win AutoTrade.com.
Long time domain name investor Garry Chernoff has successfully defended a case brought against his AutoTrade.com domain name by AutoTrader. The case was defended by John Berryhill.
Chernoff registered the domain name in 1998 based on the generic term “auto trade”. This was prior to AutoTrader publishing its web sit; it was a print publication at the time.
The majority including panelist Alfred Meijboom and The Hon Neil Brown QC wrote:
The Panel is satisfied that the Respondent registered the word “auto trade†as a Disputed Domain Name for a website directed at motor vehicles or the automotive industry in April 1998, without it necessarily having been aware of the Trademark. In this respect the Panel agrees with the Respondent that the word “auto trade†is purely descriptive for the automotive industry and commonly used for car related services. It is therefore not surprising that the Respondent chose to register the Disputed Domain Name to be used in connection with a purpose relating to its generic or descriptive meaning.
The panel found that Chernoff had been using the domain name since 1998 to promote links to the auto trade.
Panelist Richard W. Page dissented, arguing that Chernoff needed to show proof of how the domain name was used in when it was registered. There was clear proof of how it is used today and AutoTrader didn’t provide any evidence of prior use, so this is a strange dissent. And it would be difficult for a domain owner to prove how they used a domain name 13 years ago.
John Berryhill says
“Panelist Richard W. Page dissented, arguing that Chernoff needed to show proof of how the domain name was used in when it was registered.”
Obviously, the reason why one would register a domain name embodying the words “auto trade” would be to sell pet food.
Duh.
David J Castello says
Excellent. Congrats to Garry and John.