UDRP finds laches and that trademark is also generic

Panelist questions why case was filed 16 years after domain was registered, and notes that the trademark is also generic.

When is a trademark also generic?

You probably didn’t know that the hardware chain True Value Company has a trademark on the term “Green Thumb”. It has a registered trademark on the term dating to 1987.

I always thought the term meant someone who is good with gardening.

I’m not alone, either. Apparently, in the same year of True Value’s trademark registration, a dictionary defined the term “green thumb” to mean the same thing.

That was a key point in a UDRP that True Value recently filed against the domain name GreenThumbGarden.com.

The registrant of the domain name said he registered it because of the generic value of the domain name. The panel, citing the dictionary definition, agreed.

It’s interesting that even True Value uses the term “green thumb” in a non-trademark way on its website, writing “True Value experts can help you flex your green thumb with the lawn and garden tips…”

Panelist Karl V. Fink also made a rare finding of laches. He wrote:

The disputed domain name was registered in 1999, over 15 years prior to this proceeding. Any business disruption or confusion suffered by Complainant as a result of Respondent’s domain name registration was either non-existent or minimal, or Complainant would have taken action earlier.

True Value also doesn’t own GreenThumb.com, which is used by the Green Thumb Nursery.

I imagine the company has plans to increase its web presence for the Green Thumb “brand”, which explains why it suddenly decided to go after the domain name in 2015.