The New Jersey Turnpike Authority just lost a UDRP on the domain names GardenStateParkway.com and NYturnpike.com because the panelist found the Authority did not have “common law rights” to the terms Garden State Parkway or and NJ Turnpike and for some reason the state didn’t apply for a trademark on either roadway until 2001 and 2011 respectively
As an ex-New Yorker I can say few things in life give NYC people as much pleasure as seeing New Jersey lose,and before you feel to bad for the NJ folks take into account we all had to sit through many seasons of The Jersey Shore.
But I digress.
As far as the domain names at issue, GardenStateParkway.com and NJturnpike.com were registered on July 31, 1998 while the trademarks were not filed until October 22, 1998, and July 26, 2012 respectively although the roadway were in existence in 1954 and 1951 respectively (things move slower in NJ)
“The marks relate to two of the most “iconic and well-known highways in the United States,” which are travelled by millions of people each year and are currently symbolic fixtures within the United States.
“The New Jersey Turnpike opened in 1951 and stretches for over 148 miles through New Jersey, connecting motorists between New York and Pennsylvania. ”
“The Garden State Parkway opened in 1954 and runs from New York State to the end of the New Jersey shore.”
“Complainant alleges, in its Complaint and Additional Submission, that it has used the GARDEN STATE PARKWAY mark and the NEW JERSEY TURNPIKE mark since the 1950s, in connection with the famous roadways bearing the respective names.
“Complainant argues that the strength of the marks creates a protectable trademark interest in the marks on behalf of Complainant, which Complainant has cultivated by investing a great deal of time and monetary resources to promote and advertise the marks, leading to substantial consumer recognition and goodwill.
“Complainant argues that its marks were well-established for decades prior to Respondent’s registration of the domain names, and Complainant’s roadways under the GARDEN STATE PARKWAY and NEW JERSEY TURNPIKE marks were so well known and “intrinsically tied to the fabric of the State of New Jersey” that Respondent cannot claim to have been unaware of Complainant’s marks. Further, Complainant asserts that Respondent is located in the state of New Jersey and displays negative content regarding paying tolls on New Jersey highways on its website, which demonstrates that Respondent was aware of Complainant’s marks.
“Respondent argues that because his domain names were registered thirteen years before Complainant applied for trademark registrations for its marks, Respondent’s rights to the gardenstateparkway.com and njturnpike.com domain names trump Complainant’s. Respondent allege to have researched for trademarks for both names before the registration of the disputed domain names and that no trademarks were associated with theese names at that time.
“Respondent contends that the gardenstateparkway.com and njturnpike.com domain names are comprised entirely of common and geographic terms that have many meanings apart from use in Complainant’s GARDEN STATE PARKWAY and NEW JERSEY TURNPIKE marks.
“Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.
“The Panel notes that Respondent’s disputed domain name registrations predate the Complainant’s filing of the adduced service marks.”
Generally, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
“Therefore, Complainant will have to rely upon unregistered rights in order to prove Respondent’s bad faith registration”
“No evidence in support of the Complainant’s invoked longstanding use of the marks or widespread recognition and fame of the marks has been submitted in this case. “
‘Accordingly, the Panel finds that Complainant has not proven common law rights to the GARDEN STATE PARKWAY and NEW JERSEY TURNPIKE marks prior to the disputed domain name registrations.
“Without proof of trade or service mark rights to GARDEN STATE PARKWAY and NEW JERSEY TURNPIKE at the time of the domain names’s registrations, they are to be considered as consisting of common terms at the time of their registration”
“Therefore, the Panel finds that Respondent did not register the gardenstateparkway.com and njturnpike.com domain names in bad faith under Policy ¶ 4(a)(iii).”