Tucows Fights off Car Dealership

Tucows wins UDRP decision for Batchelor.com.

Domain registrar Tucows has successfully defended against an arbitration proceeding over the domain name Batchelor.com, which the registrar purchased with its NetIdentity purchase. NetIdentity holds nearly 40,000 surnames and offers email addresses at those names, such as [email protected].

The complaint was filed by Ken Batchelor Cadillac Firm, a car dealership in San Antonio, Texas. The National Arbitration Forum panel determined that Batchelor Cadillac did not establish rights in the mark “Batchelor”. Establishment of rights to the mark is one of three requirements to win a UDRP. The complainant must also show that the registrant had no rights or legitimate interest in the name and the domain was been registered in bad faith. The panel did not weigh in on the latter two since of the lack of trademark.

Bill Sweetman, General Manager, Domain Portfolio at Tucows, stated he was surprised this case was brought forth. “In this particular case I’m surprised the National Arbitration Forum took it” since the complainant admitted it didn’t have rights in the mark “Batchelor”, stated Sweetman. In its filing, Ken Batchelor Cadillac Firm asserted common law trademark for “Ken Batchelor Cadillac Firm”.

“I think the folks that run that car dealership ought to see if they’ve been taken for a ride” for fees by their representative, stated Sweetman. The car dealership was represented by Jeffrey S. Zehnder, of Zehnder Communications, a communications and advertising firm. Bret Fausett of Cathcart Collins, LLP represented Tucows.

Zehnder, who stressed that he was not speaking on behalf of the dealership, told Reglike “We feel like we had a viable case to make. Our clients’ tendency is to type “Batchelor.com” into their address bar since that’s how they would likely search to find us.” He referred to another case won by parent firm Sewell Automotive for the domain SewellCadillac.com. Acknowledging the difference, Zehnder stated “Certainly our case would have been strengthened if it was BatchelorCadillac.com.”

Stephen Tolerico, VP of Marketing at Sewell Automotive stated, “We are obviously disappointed with the decision.”

Sweetman stated Tucows has won every surname UDRP it has responded to.

Batchelor Cadillac is not well known outside the areas of its car dealerships. A search for “Batchelor” on Google did not return the car dealership on the first page, but did turn up other people with the same last name.

It is unlikely that the panel would have found confusion even if Batchelor Cadillac did have trademark rights. The landing page at Batchelor.com does not have ads related to car sales.

Sweetman states Tucows does not sell domains from its NetIdentity portfolio. “If we were to sell one of those domains, not only do we sell the business value associated with the surname, but it hurts the overall portfolio,” stated Sweetman. “The moment you pull one of those diamonds out of the necklace, the whole necklace loses value. It’s different from a portfolio of generic domains. You don’t think twice regarding selling one of those for the right price.”