Why Did It Take 12 Years For This Trademark Holder To File & Win A UDRP?

The Complainants Columbia Insurance Company of Omaha, Nebraska, United States of America; and H.H. Brown Shoe Company, Inc. of Greenwich, Connecticut, United States of America, just won a UDRP on the domain name carolinaboots.com.

The trademark holder didn’t own a trademark on the term “carolina boots” but owned a trademark on the term CAROLINA which covered shoes and boots.

The trademark holder registered the domain name carolinashoe.com on August 13, 1999, but didn’t register the domain carolinaboots.com which was apparently available at the time since the domain holder registered it on  August 29, 2000.

Now its 2013 and the company just got control of the domain name on a complaint filed in November 2012, more than 12 years later.

As we pointed out a few weeks ago a lot of the “cybersquatting” problem that trademark holders complain about are caused by the trademark holders themselves.

In this case the trademark holder is at fault for not registering the domain name in the 1st place and then by allowing the domain to be parked for 12 years, especially since the panel found the domain holder took copyrighted images and material off the trademark holders site.

Here are the facts and findings by the one member panel:

The Complainants are said to be a leading manufacturer of footwear and said to have been operating for over 115 years.

The Complainants are said to have been using the CAROLINA trademark continuously since 1963 for “boots and shoes” and are said to have obtained a U.S. Trademark Registration for the trademark CAROLINA in 1996 and in Europe in 1992.

It is also stated that the Complainants registered the domain name carolinashoe.com on August 13, 1999 and use the said carolinashoe.com website to sell and advertise the Complainants’ famous CAROLINA boots.

“The Panel is satisfied from the number of trademark registration certificates exhibited to this proceedings that the Complainants own substantial federal, international and common law rights in the trademark CAROLINA which the Complainants have used in the sale and advertisement of boots and other footwear globally and over the years. In this regard the Panel finds that the disputed Domain Name incorporates all elements of the Complainants’ trademark which is CAROLINA and accepts that the mere addition of the designator “boots” and the gTLD “.com” does absolutely nothing to preclude a finding of confusing similarity”.

The Panel is therefore satisfied that the Complainants have established that the disputed Domain Name carolinaboots.com is confusingly similar to the Complainants’ CAROLINA trademark.

“The Panel also finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy.

“There is no evidence of any authorization from the Complainants to the Respondent to use the Complainants’ mark in the disputed Domain Name, nor is there any evidence that the Respondent is commonly known by the disputed Domain Name or any term incorporated therein or that the Respondent is in any way affiliated to the Complainants either as vendor or retailer or indeed an authorized seller”.

“Furthermore from the adduced evidence it is clear that the Respondent is using the disputed Domain Name to divert Internet users to the Respondent’s websites unrelated to the Complainants’ mark for the purpose of generating revenue”.

“In the circumstances, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy”.

“The Panel is satisfied that the Respondent registered the disputed Domain Name in bad faith and has continued to engage in bad faith use”.

“The Panel finds that the Respondent must have had actual and or constructive notice of the Complainants’ mark before deciding to register the disputed Domain Name on August 29, 2000″.

“Secondly, the evidence from the screen shots attached to these proceedings demonstrates that the Respondent has offered the disputed Domain Name for sale at the price of USD 31,674 to be precise”.

“Thirdly, the website at the disputed Domain Name displays the Complainants’ copyrighted pictures and advertising language and gives the impression that there is an offering of shoes for sale when it is actually not possible to buy shoes from the Respondent’s website”.

“In the Panel’s view, the Respondent is clearly engaged in cybersquatting and has been using the disputed Domain Name to divert Internet visitors to pay per click websites to generate revenue which constitutes bad faith use”.

“Fourthly, the Complainants have correctly drawn attention to the Respondent’s attempt to conceal its identity by registering the disputed Domain Name through a privacy service as further evidence of bad faith”.

“Fifthly, the Respondent’s use of the Complainants’ copyrighted materials and photographs displayed on the website must be deemed to be bad faith use of the disputed Domain Name”

 

Comments

  1. todd says

    Why Did It Take 12 Years For This Trademark Holder To File & Win A UDRP?

    Because now they can win. 2 years ago this wasn’t the case but this is going to be happening more and more to great domains. Mainstream is seeing that its not that hard to win these cases anymore and to take hold of great domains. Not good for domain owners at all.

  2. Alan says

    “since the panel found the domain holder took copyrighted images and material off the trademark holders site.”

    That nailed it for the trademark holder………and why should it not?

  3. BrianWick says

    “but owned a trademark on the term CAROLINA which covered shoes and boots.”

    I agree with the decision because “Carolina Boots” is not generic, not commonly used – but at the same time is distinct

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