Here are the facts of the case:
“Complainant or its predecessors have operated a retail business under the TRACTOR SUPPLY COMPANY service mark since 1938.”
It has adopted several versions of the service mark, including TRACTOR SUPPLY, TRACTOR SUPPLY CO. AND TSC. ”
Complainant has a federally registered service mark for TRACTOR SUPPLY CO. ”
Complainant has registered tractorsupply.com, tractorsupply.org, tractorsupplyco.com, and tractorsupplycompany.com, and conducts online business via its websites.
“The website is inactive, and is parked with the Registrar, GoDaddy.com. According to the informal response filed on June 10, 2010, Respondent states:
“The purpose of my purchasing the domain name was to help my father-in law re-sell tractors that he buys and fixes-up and take the proceeds to build handi-cap accessible walkways, ramp, barn, and feeding stations for the goats, rabbits, chickens, and other animals that we have on our farm because my wife and I volunteer to do work with special needs young adults, and my father-in law has helped us out tremendously with clearing land and making preperations [sic] at our farm thus far.”
“Complainant has at least 930 stores in 44 states. Particularly noteworthy, one of Complainant’s TRACTOR SUPPLY stores is located less than five miles from Respondent’s address.”
“Based on these facts, it can be strongly inferred that Respondent would have been aware of the TRACTOR SUPPLY marks prior to registering the disputed domain name.”
“Even if Respondent were to use the website, it would be “… to… re-sell tractors…” Clearly, this is for commercial gain. It does not matter for what purpose the Respondent might use those proceeds. Respondent therefore has violated paragraph (4)(b)(iv).”
“This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.”
Hum
For those who don’t think generic terms can be trademarks and even if trademarked should trademarks would not be upheld, here is a case that says differently.
I’ve been following Tractor Supply’s UDRP cases for a while and I must say it’s surprising how easily they’re getting these. Other domains they’ve won:
tractor-supply.us
tractorsupplies.name
alabamatractorsupply.com
They even had the balls to go after tractorsupplies.org, but that has been terminated.
Very sad when the panelists start acting like this.
I’m so ready for a lawsuit against the NAF and WIPO . I wait with eager anticipation.
Total waste of money going after all the mickey mouse extns.
By doing so they are giving credence to them
If they had a clue they would have applied for the .mobi domain during the sunrise period
“Trademarked generic” is something of a contradiction in terms.
While a generic term cannot be a trademark, most domainers’ concept of “generic” tends to be more expansive than the operative definition. A true generic term is such that it is nearly impossible to avoid the term in defining what the referenced thing is. Take “aluminum” for example. You could refer to it by its position on the periodic table, I suppose, but most everybody calls it “aluminum”.
There are descriptive terms which are pretty close to the line, but if one can show longstanding, substantially exclusive use of a descriptive term in such a way that relevant consumers have come to make a distinctive association with the goods/services, then the term is a mark by way of this acquired distinctiveness.
Some examples from everyday life that pretty much everybody associates with one product/service:
American Airlines – They are American, and they run an airline.
Handi-Wipes – They are handy, and they are used to wipe things.
One-A-Day Vitamins – ’nuff sed
General Motors – Do they make “specific motors”?
Rigid Tools – Never owned any of their tools, but they used to have great calendars.
Coca-Cola – Yes, Coca-Cola. Originally formulated from extracts of coca and cola, and still uses a processed coca extract as a flavor adjuvant.
Nationwide Insurance Company – Isn’t Geico a “nationwide insurance company”?
We run across these things all around us, associate them with a particular source, and really don’t think twice about it.
Now, if the facts in the opinion are to be believed, these folks have a lot of stores and have been around for over 70 years. Then, you have the fact that the Respondent apparently is among the relevant consumer group, and lives pretty close to one of their stores. Now, I wouldn’t know a tractor from a wheelbarrow, but it seems that the complainant here presented enough of a case, in addition to their registered marks, to suggest they are pretty well known as THE “Tractor Supply” in their relevant market, and a market in which there is reason to believe the Respondent is aware.
I meant to add that when I was first learning this, I was at a firm that did a lot of IP work for the Invisible Fence Company, which makes animal control products under the brand “Invisible Fence”.
So, it struck me to ask why “Invisible Fence” is not merely a descriptive term.
The answer struck me as profound:
It’s not invisible, and it’s not a fence!
John Berryhill misses the point here. He should now better what “tractors” are and that even “Tractor Supply Company”, no matter how famous and how close it may be, should not claim exclusive use to the term “Tractor Supply”.
It is interesting that the complainant has .com, .org, but .info appears to belongs to a competitor Tractor Parts Inc, and not to the Tractor Supply Company since 2002.
This is probably a little off topic, but rulings like these makes me wonder what companies like the Portalis Group are thinking. As most of you are aware of they bought Business.TV for a juicy $100k. There is a trademark in the US -> “Business TV”.
As far as I see it – “Business.TV” and “Business TV” are not the same marks. They may be close, but they’re not identical. Fact is that TV in the trademark (Business TV) means Television, .TV in the domain (Business.TV) stands for Tuvalu.
What is clear to me is that US TM’s don’t rule the world. US TM’s cover everything inside the US borders – that’s about it. Portalis is a german company so they should be “off limits” in terms of the US panels stupidity, theoretically speaking.
Then again I wouldn’t be suprised if a panel in the US court system one day orders Portalis to transfer the domain to the TM owner. Portalis should register a TM in the madrid protocol to be on the safe side.
I think domainers should start to look at domain trademark registrations, in any goods or services class for that matter. Domain TM’s would mark your ground when the big companies tag along and try to run you over. Fight the stupid panel and court systemes and beat them in their own backyard 😉
John
Tractor supply, camping supply, restaurant supply, general store, trial lawyers the list goes on and on, seen thousands of these in my life
How can some one own a yellow pages category?
well there is a few items of trademark law here that are important here. 1.complainant has a prior federal mark for tractor supply co.
so respondants mark tractorsupply.mobi is confusingly similiar to complainants superior mark 2. complaintant has 930 stores in 44 states this means complaintant is known nationwide AND LOCALLY RESPONDANT HAS NO LOCAL RIGHTS COMPLAINTS RIGHTS ARE SUPERIOR.3. complaintant has spent dollars to be known the prior length of the mark registered and the size of the ad budget is revelant.4. the key is the registered mark tractor supply to the left of the dot. the .mobi is irrevelant in trademark domain name manuel.5. it is irrevelant complaintant did not use the website all that matters is that the complaintant used the mark and did not abandond the mark tractor supply.so this so called generic term has prior registration constructionnationwiderights and continous usage.in the trademark world respondant is using the same class earning or going to earn profit off complaintants goodwill. could procede to federalcourtbut would bear the burden of proof and would pay all legal fees if respondant lost…to high a threshold to cross.
domain guy
“Track Supply” is a generic term that noone should be allowed to trademark. There are thousands of truck suppliers in the world! Anyone has right to register any domain with this phrase without concern for trademark violation or “bad faith”. The claim is invalid and the case should be dismissed. No amount of power, influence, or money or goodwill should override the registrant’s fundamental right, regardless of his or her intent, location, etc.
I think the issue is with the USPTO 70 years ago for interpreting Tractor Supply as a non-generic term. The terms Tractor and Tractors for selling tractors and tractor parts would be truly generic.
But Tractor Supply is not completely generic. A competing business could just as easily adopt Tractor Equipment, Tractor Gear, Tractor Parts, Tractor Sales, etc. Combining the words makes it unique in the marketplace and able to be protected, IMNLO (In My Non-Legal Opinion).
it seems some are taking issue with what the trademark office has granted. i think this is a separate issue from the question of whether the domain registration was proper.
it would be interesting if tm owners had to run the risk of their tm being voided each time they sought to assert it via udrp. but this is not the case. the mark could be extremely weak (perhaps it never should have been granted), but does that mean a udrp claim should fail?
this seems to be what some of you are arguing: the mark never should have been granted, therefore a domain owner should not have to honour it.
do we really expect wipo to go against the decision of a country’s ip office to grant a tm?
i see nothing wrong with this udrp result. indeed, the uspto’s wisdom is often questionable. but that’s another matter entirely. and it has little to do with wipo’s domain name arbitration panels.
This has already been lost to big brother last year.
Remember Free Credit Report Dot Com?
Yeah, that is a trademark, and if you have anything about a “free credit report” you will get sued.
That is because, this shit is a fraud to begin with. It’s just pseudo-law, which is just as bad as pseudo-religion (all religion) because people lose their lives to these companies after they sue for $100s of thousands of dollars to send a message. And it usually happens to poor college students.
Lesson to the young: Do not try to escape our 4-foot high walls.
@daryl: “big brother” and “these companies” (if they are successful ones) get sued all the time, for legitimate and illegitimate reasons. of course they keep the gory details to themselves, as you too no doubt would if you were sued. so we don’t see all that really happens. but if you could see their inner workings, you might see they have to live by the same “pseudo-laws” as real people. and similar to real people, in the game of business and life, they win some and they lose some, and they settle 9 times out of 10. please consider that these entities are formed of real people (who depend on the entity to support them) just like “domainers” are real people (who depend only on themselves, or maybe their parents if of the teenage variety). each is admirable in their own right. but only to the extent each stays “within the walls”.
trademark systems are not without their flaws.
but should we fault anyone for using these systems?
there are certainly “domainers” who acquire tm’s for their domains. likely after they realise the domains’ value for advertising. but nothing is to say the tm’s could not be acquired earlier.
tangent time…
we often see domain acquisitions referred to as “speculative”. are tm’s “speculative”?
consider that tm’s are often applied for in very early stages. many of them prove to be worth nothing in the long term as businesses move along unpredictable paths. these tm’s simply are never used. their worth is questionable. some are abandoned.
maybe one could analogise this to all those non-producing domains in many a profilic domainer’s portfolio.
the systems are not perfectly efficient. speculation is often inaccurate. but we still use the systems, and we still speculate.
UPDATE
More Tractor domains are taken today by the same complainant in a separate ruling:
http://www.wipo.int/amc/en/domains/decisions/html/2010/d2010-0795.html
Domains taken in this ruling are:
tractor-supply-guide.com
tractor-supply-world.com
tractorsupplycentral.com