Registrant rides away with win in 'BudgetBicycleCenter.com' Case
In Budget Bicycle Center v Williamson Bicycle Works, a National Arbitration Forum (NAF) panellist has refused to order under the Uniform Domain Name Dispute Resolution Policy (UDRP) the transfer of the domain names 'BudgetBicycleCenter.com' and 'BudgetBicycles.com' to the complainant.
In its complaint, Budget Bicycle Center (BBC) asserted that it had conducted business under its name since 1979. BBC's primary competitor, Williamson Bicycle Works (WBW), owns retail stores within one mile of BBC. BBC claimed that WBW registered the disputed domain names to redirect visitors to its competing website, 'WillyBikes.com'.
In response, WBW argued that it had registered the domain names for legitimate commercial use "merely [to] describe a class of goods" and "customers were not misled when the domain names led them to the Williamson Street Bicycle Works website, because Williamson Street Bicycle Works was in the business of selling bicycles".
NAF panellist Clive Elliott agreed with BBC that it could bring a UDRP action based on common law trademark rights in BUDGET BICYCLE WORKS, used in commerce since 1979. However, he noted that BBC's "submissions and evidence were brief and perfunctory at best". According to Elliott:
"one would have expected that in the case of a mark/name that is clearly highly descriptive, that further evidence or at least detailed submissions would have been addressed to the issue of not just secondary significance but whether and how the mark/name has acquired the necessary distinctiveness."
Although the domain names were found to be identical "or at very least confusingly similar to complainant's BUDGET BICYCLE CENTER mark", Elliott determined that BBC had failed to demonstrate that WBW lacked rights and legitimate interests in the domain names. Elliott agreed with WBW's assertions that the domain names consisted of generic terms and that it had registered them in good faith to promote its business.
Accordingly, he refused to order the transfer of the disputed domain names.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC
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