Goes off the rails, ruled reverse domain name hijacking — Cybersquatting dispute

Both firms have trademarks, and Respondent’s predate the Complainant’s.

A UDRP panelist has found Quality Transportation Services, Inc. to have tried reverse domain name hijacking smartrail.com.

It filed a cybersquatting case against Regal Rexnord Corporation, a machinery firm.

Both the Complainant and Respondent have trademark rights for the term Smart Rail/Smartrail, just in different fields of use.

Quality Transportation Services uses the mark SmartRail for services related to rail transportation. Regal Rexnord uses the term Smart Rail for machine parts.

The term is also trademarked by other firms for even more uses.

The Respondent’s trademark and domain registration predate the Complainant’s, making this case dead on arrival.

In denying the complaint, the panel found that Regal Rexnord established rights or legitimate interests in the domain name based on its U.S. trademark registration granted in August 1998.

The panel also concluded that Regal Rexnord couldn’t have registered the domain name in bad faith, given that the Complainant’s trademark didn’t exist at the time of registration.

In finding reverse domain name hijacking, panelist Fernando Triana wrote:

The Panel notes that Respondent does have rights and legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. It also notes that the disputed domain name registration predates Complainant’s first claimed rights in the trademark SMARTRAIL by almost 7 years. Nevertheless, Complainant asserts that the disputed domain name was registered and is being used in violation of its trademark rights.

Complainant’s trademark came into registration long following the disputed domain name was registered, and Complainant did not substantiate its vague claims of lack of rights or legitimate interest or bad faith registration and use.

On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.

It appears the Complainant was represented by someone in its tech department rather than a lawyer. Armstrong Teasdale LLP represented Regal Rexnord Corporation.