Complainant loses all three prongs of case.
Michael Berkens, who runs the domain name blog TheDomains.com, has successfully defended one of his company’s domain names in a UDRP.
Commercial Vehicle Group, Inc filed a UDRP against the RoadWatch.com domain name, a domain that Berkens’ Worldwide Media has owned for about a decade.
The complainant failed to even pass the first prong of a UDRP, that the domain name is similar to a mark in which the complainant has rights. It seems that the complainant didn’t provide evidence that it was the company that owned the rights to which it staked its claim:
The Complainant Commercial Vehicle Group, Inc. is located at 7800 Walton Parkway, New Albany, OH 43054. In support of its Complaint, the Complainant provided evidence pertaining to the chain of title of the trademark ROADWATCH. However, the Panel notes that in those documents that the mark has been assigned to Commercial Vehicle Systems, Inc. located on 171 Great Oak Drive in Canton, NC. Moreover, according to the Complainant’s evidence, Commercial Vehicle Systems, Inc. has changed its name to Sprague Devices, Inc. since May 2005. This is a matter of concern since the Complainant as identified does not appear in the chain of title of the ROADWATCH mark provided in the evidence.
Even though the complaint failed this first simple test, the panel decided to go ahead and rule on the other two elements so that it would not seem the case was dismissed on a technicality.
The three member panel then ruled that Commercial Vehicle Group also failed on the other two grounds. It ruled that RoadWatch.com consists of two common words, and that the complainant doesn’t have a monopoly over the words.
Here are some of the panel’s findings as it relates to the generic nature of the domain name:
The Panel notes once more that the ROADWATCH mark is generic in its nature. In this regard, the Panel agrees with the Respondent. The ROADWATCH mark is constituted of two common words not exclusively associated with the Complainant. In fact other parties have registered trademarks before the USPTO where the words “road” & “watch” are prominently used…
…The Panel finds that a Respondent, like others, is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. The Panel is of the opinion that the disputed domain name was not registered having in mind the Complainant’s ROADWATCH trademark. As such, the Respondent did not register or use the disputed domain name in bad faith…
…Furthermore, the Panel finds that there is no bad faith offer to sell in the matter at bar since the disputed domain name is a generic one and there is no direct evidence that the Respondent registered the domain name with the intent to capitalize on the Complainant’s trademark…
Commercial Vehicle Group was represented by Kegler, Brown, Hill, and Ritter Co., LPA. Berkens was represented by John Berryhill.
> the complainant doesn’t have a monopoly over the words.
Indeed. It’s the respondent who holds the monopoly (albeit one that may soon weaken a little).
George Kirikos says
Congrats to Mike!
John UK says
Oh how coincidental that this should today.I am just in process of preparing a defence to a UDRP and already the skeleton of it is along the lines that no party should be able to monopolise “A” generic phrase or name ,i.e. one that is not made up. Thus was suprised to see this, and also something very similar in my inbox regarding TM’s infact that I will quote below because it maybe of interest and along same lines of argument funnily enough. Quote;
“Formula One Licensing B.V. appealed the decision to the Board of Appeal of the Finnish trade mark office, which dismissed the appeal in 21 June 2010 and affirmed the decision of the Finnish trade mark office, for the same reasons. The Board of Appeal also pointed out that the mark could not be understood as a special symbol for any entrepreneur. Also, in the context of motor sports, it clearly referred to the type, quality and purpose of use of the goods and services. In conclusion, for such goods and services, the mark should be free for everyone to use and lacked distinctiveness for the goods and services mentioned in the decision of the Finnish trade mark office.”
John UK says
And please add;
“Demonstrating some persistence, Formula One Licensing B.V. appealed the decision and the matter proceeded to the Finnish Supreme Administrative Court — which dismissed the appeal and again affirmed the decision of the Finnish trade mark office. This decision all boiled down to the fact that, if the international registration was considered to cover Finland for the goods and services that the Finnish trade mark office rejected, that would create an exclusive right for the applicant to use the mark in relation to, among other things, goods and services relating to motor sports. This conclusion was that the expression Formula 1 and its abbreviation F1 could not be reserved for only one entrepreneur. Hence, the international trade mark registration was not valid in Finland for the goods and services mentioned in the decision of the Finnish trade mark office.
What is your dot com?
John UK says
Sorry but will not post on here until it is all over.
I don’t get it. AFAIK, As UDRP is restricted to TM issue only, Commercial Vehicle Group, Inc must prove they have TM on the term before they can even have a case.
But, RoadWatch TM belongs to Sprague Devices, Inc. which was previously known as Commercial Vehicle Systems, Inc which is different from Commercial Vehicle Systems, Inc the complainant. The question is: has the complainant proved that they actually own the TM on RoadWatch?
Dave Z says
Heh, apparently not.
Looks like a slam dunk decision overall.
Maybe Commercial will buy the domain, like P&G finally bought Swash.com! No need to take huge offense – the UDPR is marketed as a shortcut to owning a preregistered dot com.