S & H Enterprises, Inc. DBA Nationwide Lifts of New York, New York, just lost a UDRP on the very generic domain name nationwidelifts.com
S & H’s site is at elevette.com which they registered in 2003 and which I’m sure all domain investors would agree is a horrible domain.
S & H has trademarks on the term NATIONWIDE LIFTS: registered on June 14, 2005, with a filing date of August 18, 2004 and one registered on June 5, 2012
The domain holder which is in the same business as S & H selling elevators registered the domain name nationwidelifts.com on February 12, 2004.
Despite the domain being generic and recogized by the panel as such, and despite the fact that the domain was registered before the trademark was even filed for the sole panelist Mark Partridge did not find nor even discuss Reverse Domain Name Hijacking (RDNH) which should have been found I would say should a “matter of law”
Here are the relevant facts and findings:
“Between Respondent’s registration of the disputed domain name in February 2004 and June 2006, the disputed domain name resolved to a web page with an “under construction” notice.
In June 2006, the URL “www.nationwidelifts.com” began redirecting to the URL “www.abbeyaccess.com”.
Respondent’s previous elevator sales company is Abbey Access, which operates in California, as does Nationwide Lifts.
Complainant sent a letter to Respondent on August 18, 2006 requesting that Respondent discontinue use of the disputed domain name.
Beginning around September 2006, the disputed domain name began to redirect to the URL “www.naers.com”.
Subsequently, between October 2006 and October 2011, the disputed domain name was “parked” and remained inactive during this time.
According to the case record, Respondent does not appear to be known by the name Nationwide Lifts, nor is it authorized by Complainant to use the name. Respondent did not make actual use of the disputed domain name for a period of five years between 2006 and 2011 when Respondent had the site “parked”. Respondent did not conduct business through the disputed domain name, instead he used it merely as a site that would redirect to his own website, “www.naers.com”, when consumers visited the disputed domain name.
Accordingly, the Panel finds Respondent lacks any rights or legitimate interests in the Domain Name.
The more difficult question is whether the disputed domain name was registered in bad faith.
Complainant states that the prior company of Respondent, known as Abbey Access, was a direct competitor of Nationwide Lifts in California. Respondent states that he was unaware of Complainant at the time it registered the disputed domain name.
Respondent registered the disputed domain name in February 2004, before Complainant filed its first application for trademark registration.
Although Complainant claims use back to May 2003, use alone is not sufficient to establish trademark rights.
Complainant must also prove that “Nationwide Lifts” was distinctive and functioned as a trademark. To prove bad faith registration, Complainant has the burden of proving that it had trademark rights prior to Respondent’s registration of the disputed domain name and that Respondent knew of Complainant’s mark before it registered the disputed domain name.
Since the mark was not the subject of a federal registration prior to registration of the disputed domain name, Complaint must show that it had acquired common law rights in the mark prior to February 2004.
In an effort to show trademark rights before February 12, 2004, Complainant submitted a “Sales Funnel Report” showing a number of sales of dumbwaiters, lifts, and elevettes as early as June 27, 2003. Complainant additionally proffered a New York state document dated July 29, 2003 certifying that S & H Enterprises, Inc., Complainant’s corporation, filed a Certificate of Assumed Name to conduct business under the assumed name “Nationwide Lifts”.
The Panel agrees that the evidence shows use of the name Nationwide Lifts as early as June 2003, but concludes that Complainant has failed to show trademark rights prior to February 12, 2004.
At best, the name Nationwide Lifts was in use for less than a year prior to Respondent’s registration of the disputed domain name. The name is an apt description for the services of both companies and was deemed to be merely descriptive and not entitled to trademark rights in 2005 at the time the mark was refused registration on the Principal Register and placed instead on the Supplemental Register. Typically, secondary meaning may be found after five years of use of a descriptive mark, but it would take evidence of exceptional use to establish secondary meaning in less than a year. There is no such evidence here. Here, the evidence of use in a manner that would create public awareness of the mark is minimal.
In some instances, acquired distinctiveness may be shown by an intentional attempt to trade on the rights of another. Complainant, however, did not submit any evidence or particular facts demonstrating that Respondent was aware, or should have been aware, of Complainant, Complainant’s business, or Complainant’s mark. Complainant merely alleges in its Response to Procedural Order No. 1 that Respondent, as Abbey Access, was a direct competitor of Nationwide Lifts in 2004 and remains a competitor of Nationwide Lifts. There is no evidence in the record to indicate that Respondent was, or should have been, aware of Complainant. Respondent denies prior knowledge of Complainant or its claimed mark.
Given that “Nationwide Lifts” is an apt descriptive term for its services, it is plausible that Respondent registered the disputed domain name due to its descriptive utility and not as an attempt to trade on or disrupt Complainant’s business. Complainant has not made a sufficient showing here to tip the scale in its favor on this point.
In conclusion, Complainant has not met its burden in proving that Respondent was, or should have been, aware of Complainant and Complainant’s mark. Moreover, Complainant has not met its burden of proving trademark rights prior to registration of the disputed domain name. Accordingly, Complainant has failed to prove bad faith registration, one of the necessary elements of its claim.
