A three member UDRP panel just rejected the complaint brought by Tarheel Take-Out, LLC of Chapel Hill, North Carolina against Versimedia, Inc. of Wilton, Connecticut, on the domain name takeout.com and found the complainant was guilty of Reverse Domain Name Hijacking.
“In its trademark application, filed roughly six years after Respondent registered the generic or commonly descriptive term “takeout” as a domain name, Complainant alleges that its first use of TAKEOUT.COM occurred in 2010.
“Given the record, it strains credulity to believe that Complainant did not know or should not have known that it had no trademark rights in TAKEOUT.COM that could serve as the basis for this Complaint.
“It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.”
“For the foregoing reasons, the Panel makes a finding of Reverse Domain Name Hijacking.””
Here is the relevant facts and findings from the panel
“It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy. ”
“In this case, the website provided by Complainant as evidence of use of TAKEOUT.COM in November of 1999, <tarheeltakeout.com>, only shows use of TARHEEL TAKE-OUT EXPRESS as a trademark. Complainant itself notes in the Complaint that this mark was used only in North Carolina. Complainant has not shown that this use of <tarheeltakeout.com> and TARHEEL TAKE-OUT EXPRESS conferred any trademark rights for the merely descriptive TAKEOUT.COM on Complainant.”
“This application also states that the first use of TAKEOUT.COM occurred in 2010, roughly eleven years after the first use claimed in this Complaint. ”
“The Panel notes that the application relied on by Complainant ultimately registered on the Supplemental Register. However, Respondent had obtained the disputed domain name <takeout.com> approximately six years prior to the filing date of Complainant’s application for TAKEOUT.COM.
F”inally, the Panel notes that there is substantial third party use of TAKEOUT.COM as well as the generic or commonly descriptive phrase “takeout.” “Takeout” is a term commonly used to “describe food or a meal to be consumed away from its place of preparation. ”
“The Panel finds that Complainant has no rights in TAKEOUT.COM as a service mark that could serve as the basis for this Complaint under the Policy.”
“For the foregoing reasons, the Complaint is denied.”
7. Reverse Domain Name Hijacking
In this case, the only alleged rights in TAKEOUT.COM that could have arisen prior to Respondent’s registration of the disputed domain name stem from Complainant’s use of TARHEEL TAKE-OUT EXPRESS at the domain name <tarheeltakeout.com> for services rendered in North Carolina.
“In its trademark application, filed roughly six years after Respondent registered the generic or commonly descriptive term “takeout” as a domain name, Complainant alleges that its first use of TAKEOUT.COM occurred in 2010.
Given the record, it strains credulity to believe that Complainant did not know or should not have known that it had no trademark rights in TAKEOUT.COM that could serve as the basis for this Complaint.
“It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules.”
“For the foregoing reasons, the Panel makes a finding of Reverse Domain Name Hijacking.”
“While the Panel recognizes that Complainant attempted to withdraw its Complaint after learning that the Respondent acquired the disputed domain name for a legitimate use, the Panel does not believe that the Respondent should in the circumstances have been forced to present such evidence in light of Complainant’s previously disclosed lack of rights in “takeout.com” in combination with the commonly descriptive nature of that term. For Complainant to have brought these meritless UDRP proceedings in the first place is such circumstances and to have put the Respondent to the not insignificant cost of having to mount a defense to a baseless claim should be discouraged.”
