Bolton & Menk, Inc.is a company offering engineering and surveying services since 1949. The Company was discomforted when it found out that the domain name BoltonMenk.com was registered and used by a third party in relation to a Chinese website offering explicit videos and advertisements.
The Company thus filed for a UDRP Complaint at the Forum. The Complainant had filed for a trademark before USPTO in May 2021. The Complainant claimed that despite not having the registered trademarks, the Complainant possesses common law rights over the mark resulting from its continuous usage of the mark for its service offerings since 1996. The Complainant also presented the use and possession of the domain name Bolton-Menk.com.
The Respondent didn’t respond. However the panel noted that the trademarks filing of the Complainant was not finalized yet and was up for opposition. Given this, the Complainant’s claim of the domain name rests on it having common law rights. Although the Complainant did exist for a long time it has failed to prove that the name under it has acquired secondary meaning.
On the ground of insufficient evidence provided by the Complainant, the panel couldn’t establish that the Complainant had acquired common law rights over the domain name.
Since the success of UDRP is based on fulfillment of all criteria and since the first criteria wasn’t met, the panel doesn’t find any reason to investigate on other criterions
The Complaint was denied.
You can read the full case in detail here.
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