ButtonMakers.com Registered in 2007 Lost in UDRP To Co. That Registered TM in 2014

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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.

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

  2. thelegendaryjp says

    Question, when did the owner start forwarding it to a competitor? After 2014 or before?

    As unfortunate as these decisions are the owners never seem to help themselves imo.

  5. Jay says

    It’s sickening really, another theft! I think a forward is a legitimate use of a domain. It’s prudent to forward keywords concerning your business. Ever hear of defensive registration?

    Redirects are ‘bad faith’, literally, that’s what the guy said. “Profit from the likely hood of confusion”? What kind of point is that?…pure conjecture. Respondent is in the button business himself!

    There’s not one bit of proof for any of the claims!

    A good lawyer could pick every bit of this apart. Sounds like someone got their palm greased…no other way to explain this.

  6. Rediculous says

    So wrong!!! It seems obvious to me that Dr. Katalin Szamosi may be a complete butt head whose job as an arbitrator may need to be re-evaluated after a display of seemingly-obvious incompetance. What an incredibly stupid decision by someone with clearly no clue.

  7. Until your lucky last says

    ButtonMakers.com must remain as it is now, pointing to buybuttonparts.com, a site perfectly related to what that ABSOLUTELY GENERIC DESCRIPTIVE NAME refers.

    Entrepreneurs DO NOT TRY TO STEAL generic descriptive domains to the entire community, to the entire world. DO NOT DO IT.

    Someone will die before or after: it’s the life, it’s absolutely normal, natural, human. Goodluck dishonest panelists, good luck, you need it.

  8. Ben says

    Is there some kind of appeal process here ,sometimes people just dont get it,and when your dealing with a 1 person panel WTF. What keeps this so called judge or arbitrator from giving away a 2 letter .com that some individual bought 10 years ago for 30 grand,away now. Why dont we all just see whats now out there with the same situation and follow this guys steps and start getting free domains that are worth fortunes,we can always use this case as precedents . So much for only have a couple SUPERSTAR domains instead of a basket good ones

  9. michael ehrhardt says

    4 Reasons Why You Should Ditch ‘.com’ for Good
    One of the first steps entrepreneurs take when jumping into startup life is setting up a company website. But then reality strikes: Most find that their dream “.com” names have been taken, or else are being held by brokers looking to make tens or hundreds of thousands of dollars to release even the most mediocre domain.

    Entrepreneurs in this position would be wise to take advantage of some of the new extensions being rolled out and ditch .com for good. Instead, they should consider some of the following opportunities when jump-starting their digital presence or a new campaign:

    to be continued…

    • thelegendaryjp says

      Thank you Michael, in that case, yes bad decision. If it was forwarded after the tm then I can understand it. to a degree.

  11. Linton Kerr says

    This is one of those cases where revenge is easy. I would register -maybe one for every state and advertise their competitors for free on mini sites. They would have to spend the rest of their lives filing udrps.

  12. michael ehrhardt says

    1. What is cancellation?
    Cancellation is a legal proceeding in which a party seeks to remove an existing registration of a mark from the trademark register. Generally, a party that believes it is being damaged by a registration may file a petition to cancel. Some jurisdictions refer to cancellation actions as invalidation, nullity, rectification or revocation actions.

    2. What grounds are available to cancel a trademark registration?

    A petitioner (the plaintiff) can raise either absolute, relative, non-use or abandonment grounds in a cancellation proceeding. Under absolute grounds, the petitioner can claim one or more of the grounds listed below. Alternatively, under relative grounds, the petitioner makes a claim of prior rights in the trademark, examples of which are listed below. If non-use grounds are raised, the petitioner claims that the registrant is not using or has never used the registered trademark on or in connection with the goods and/or services set forth in its registration. Under abandonment, the petitioner may claim that use of the trademark has been suspended for a period of years.

    http://www.inta.org/TrademarkBasics/FactSheets/Pages/CancellationofaRegisteredTrademarkFactSheet.aspx