Recent UDRP Decision Shows that Domain Name Transfers Are Not Always an Easy Decision
In a recent UDRP proceeding, the popular X-Sports manufacturer Vans, Inc. tried to gain the rights to the domain name <protechelmet.com> from the company, Military and Rescue Supply. Despite the evidence provided by both sides, a team of three Panelists decided that this dispute is not the type covered by the UDRP and should be resolved by the courts. Due to this decision, the domain name for now rests with Military and Rescue Supply.
Vans initially submitted the Complaint on September 16, 2011 in hopes of winning the domain name due to their trademark of “Pro-Tec.” Vans has held this trademark since they initially filed the registration with the United States Patent and Trademark Office in 1982. Vans claims that the domain name, protechelmet.com, is confusingly similar to their trademark because it fully incorporates their mark and just adds the generic term “helmet.” Pro-tec is a popular brand that manufactures protective gear including helmets for extreme sports and is sold by Vans, Inc.
However, Military and Rescue Supply contends that it and affiliated companies have been using the domain since 2004. Furthermore, they contend that in July 2006, Vans contacted the company, demanding an assignment of the domain name from one of its principals. The company refused and had not heard anything since until this Complaint was filed. In the intervening period, Military and Rescue Supply claims they have “developed a base of loyal customers and awareness about its website and that it would be severely prejudiced by the delay if the domain name were transferred.” Additionally, the Respondent states that they are not competing with Vans but rather selling their products and this is a fair use of the domain name.
After reviewing the cases laid out by each side, the Panel found the Respondent had not registered the domain name in bad faith. However, the Panel also said they are “convinced that the parties’ dispute is not the type envisioned to be covered by the UDRP and is best left to be resolved by the courts.” Declaring this, the Panel ordered that the domain name remain with the Respondent.
The full decision can be read here.