South Fork Hardware, Inc., DBA TireChain.com Lost a UDRP decision today on the typo’s on tirechian.com and tirechians.com
Complainant has used TIRECHAIN.COM and TIRECHAINS.COM (“the asserted Marks”) since 1998. It uses the TIRECHAIN.COM Mark in connection with anti-skid chains for vehicle tires; anti-skid chains for vehicles; chains for motor cars; land vehicle parts, namely, tire chains; and land vehicle parts, namely, tire snow chains.
Complainant has a Pennsylvania state trademark registration and a pending application to register TIRECHAIN.COM with the United States Patent and Trademark Office (U.S.P.T.O).
Respondent registered the Domain Names on September 23, 2004.
Here is the relevant facts and finding of the one member panel:
“Although Respondent’s registration of the Domain Names with a deliberate typographical error (<tirechian.com> instead of TIRECHAIN.COM, and <tirechians.com> instead of TIRECHAINS.COM) to attract the public to its competing website may suggest bad faith, Complainant has failed to establish on the record here the first element of the Policy — rights in the alleged Marks. In light of this determination, the Panel does not need to consider whether the Domain Names are identical or confusingly similar to Complainant’s alleged Marks. Nor need the Panel consider whether Respondent has rights or legitimate interests in the Domain Names, nor whether Respondent’s registration and use of the Domain Names were in bad faith.
“Complainant attempts to rely on its Pennsylvania state registrations to demonstrate rights in the alleged Marks, however the Pennsylvania registrations are insufficient to establish trademark rights for purposes of the Policy.”
“Because state registrations are issued with no examination, a state registration does not give rise to the same presumptions of validity and ownership as does a federal registration. ”
“Another hurdle Complainant has not cleared on the record here is the descriptive and/or generic nature of the alleged Marks. ”
“Complainant argues that the alleged Marks have acquired distinctiveness and a secondary meaning with customers.
“In this regard Complainant points to external signage for its business using Tirechain.com, and an article dating back to 2000 posted on the website of “Outdoor Life” at ”www.tirechain.com/outdoorexplorer.htm” entitled “How to Mount Tire Chains”, which refers to a “chain expert” from “tirechain.com” recommending two types of chains for cars and light trucks. Also Complainant provided the Panel with a printout of ratings logged by Internet users on “Epinions” allegedly reflecting customer’s views about Complainant’s business, namely: “overall rating”, “ease of ordering”, “customer service”, “selection” on “on-time delivery”. Complainant argues that these consumer and client comments reflect consumer acknowledgement of Tirechain.com as a trade name for Complainant.
“Assuming that TIRECHAIN.COM and TIRECHAINS.COM are not generic, Complainant’s evidence (i.e., external business signage of Tirechain.com and reference in one article) at best shows trade name use of Tirechain.com. ”
“Complainant’s evidence falls far short of the kind and amount of evidence required to establish secondary meaning and distinctiveness such that the relevant purchasing public exclusively associates the terms with Complainant as a source of services. ”
This Panel finds that Complainant has failed on the present record to fulfill the first element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.”