The domain name ButtonMakers.com which was registered by the domain holder in 2007 was just lost in a UDRP to Rockstar Industries, LLP which registered a trademark in 2014.
The one member panel of Dr. Katalin Szamosi found the Complainant had established common law trademark rights to the term “Button Makers” as early as September 2004, despite that it’s pretty generic as far as I’m concerned.
The panel also put a lot of weight on the fact that the domain owned never used buttonmakers.com other than to forward it to buybuttonparts.com, which is a competitor to the Complainant finding that was not a legitimate use.
The panel did not discuss whether buttonmakers.com is a generic term rather than a well known brand nor did it discuss exactly how the Complaintant established it was a famous, well known brand back in 2004 to give it common law trademark protection.
A horrible decision in my opinion. Here are the highlights:
“Complainant contends that Respondent is not commonly known by the domain name, as it does business under the name BuyButtonParts.com. Complainant claims that the WHOIS information listing “ButtonMakers.com” is not how Respondent is known, as the contact page associated with the disputed domain name, as provided in Annex B, references Respondent as “BuyButtonParts.com.” In addition, Respondent does not argue that it is commonly known by the buttonmakers.com domain name, but instead asserts that in 2004, it launched its official website where is does business as “BuyButtonParts.com.”
Accordingly, the Panel finds that Respondent is not commonly known by the buttonmakers.com domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the buttonmakers.com domain name redirects internet users to Respondent’s own website where it sells products in competition with Complainant.
The Panel finds that Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant claims that Respondent uses the domain name in bad faith because it redirects Internet users to Respondent’s own website, where it sells products in competition with Complainant of which Complainant has provided evidence.
The Panel finds that the submitted evidence is sufficient to show Respondent is a competitor of Complainant, accordingly the Panel finds that Respondent uses the buttonmakers.com> domain name in disruptive bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s disruptive competition, described above, is done in bad faith under Policy ¶ 4(b)(iv) on the basis that the redirection from the
The Panel finds that Respondent attempts to profit through a likelihood of confusion, therefore uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.