Defends RoadWatch.com domain name in UDRP — Michael Berkens
Complainant loses all three prongs of case.
Michael Berkens, who runs the domain name blog TheDomains.com, has successfully defended one of his firm’s domain names in a UDRP.
Commercial Vehicle Group, Inc filed a UDRP against the RoadWatch.com domain name, a domain that Berkens’ Worldwide Media has owned for regarding a decade.
The complainant failed to even pass the first prong of a UDRP, that the domain name is similar to a mark in which the complainant has rights. It seems that the complainant didn’t provide evidence that it was the firm that owned the rights to which it staked its claim:
The Complainant Commercial Vehicle Group, Inc. is located at 7800 Walton Parkway, Fresh Albany, OH 43054. In support of its Complaint, the Complainant provided evidence pertaining to the chain of title of the trademark ROADWATCH. Still, the Panel notes that in those documents that the mark has been assigned to Commercial Vehicle Systems, Inc. located on 171 Great Oak Drive in Canton, NC. Moreover, as stated by the Complainant’s evidence, Commercial Vehicle Systems, Inc. has changed its name to Sprague Devices, Inc. since May 2005. This is a matter of concern since the Complainant as identified does not appear in the chain of title of the ROADWATCH mark provided in the evidence.
Oops.
Even though the complaint failed this first simple test, the panel decided to go ahead and rule on the other two elements so that it would not seem the case was dismissed on a technicality.
The three member panel then ruled that Commercial Vehicle Group also failed on the other two grounds. It ruled that RoadWatch.com consists of two common words, and that the complainant doesn’t have a monopoly over the words.
Here are some of the panel’s findings as it relates to the generic nature of the domain name:
The Panel notes once more that the ROADWATCH mark is generic in its nature. In this regard, the Panel agrees with the Respondent. The ROADWATCH mark is constituted of two common words not exclusively associated with the Complainant. In fact other parties have registered trademarks ahead of the USPTO where the words “road” & “watch” are prominently used…
…The Panel finds that a Respondent, like others, is free to register a domain name consisting of common terms and that the domain name right now in dispute contains such common terms. The Panel is of the opinion that the disputed domain name was not registered having in mind the Complainant’s ROADWATCH trademark. As such, the Respondent did not register or use the disputed domain name in bad faith…
…Furthermore, the Panel finds that there is no bad faith offer to sell in the matter at bar since the disputed domain name is a generic one and there is no direct evidence that the Respondent registered the domain name with the intent to capitalize on the Complainant’s trademark…
Commercial Vehicle Group was represented by Kegler, Brown, Hill, and Ritter Co., LPA. Berkens was represented by John Berryhill.
