Motive behind creating ad agency website and trademark claims are questioned.
San Francisco company Hippie Tours LLC has lost a UDRP against the domain name HippieBus.com. It made a number of Magical Mystery claims in its UDRP.
John Berryhill represented domain name owner Mansour Elseify in the case.
On the surface, this case appeared to be one where a clueless complainant went after a domain name registered many years before the complainant started its business. But there’s more to it, as Berryhill uncovered.
It started with a failed transaction between the complainant and respondent. When the transaction didn’t go through, the complainant filed a trademark for “Hippie Bus” to operate a tours company. The registration was refused, so then the complainant tried to register the same term for advertising services. It was able to get this through the U.S. Patent and Trademark Office.
In the UDRP, Hippie Tours pointed to a free site it created on webs.com, using the domain name hippiebus.webs.com, and stated that HippieBus.com was confusingly similar to Complainant’s hippiebus.webs.com.
That’s funny enough, but then Berryhill looked a bit deeper.
The respondent claimed the “advertising and marketing” business was sham, asserted solely for the purpose of obtaining a U.S. trademark registration upon which to premise the UDRP case.
It turns out that much of the content on the free webs.com site was actually copied from an actual ad agency, with merely the name of the agency swapped out. It appears that the complainant created a sham use of “Hippie Bus” to get the term through the USPTO.
The single person UDRP panel denied the complaint.
One additional note: Berryhill’s defense includes a lot of information about the history of “hippie buses”. Something tells me he didn’t have to do a lot of original research on this topic.