The Complainants Columbia Insurance Company of Omaha, Nebraska, United States of America; and H.H. Brown Shoe Company, Inc. of Greenwich, Connecticut, United States of America, just won a UDRP on the domain name carolinaboots.com.
The trademark holder didn’t own a trademark on the term “carolina boots” but owned a trademark on the term CAROLINA which covered shoes and boots.
The trademark holder registered the domain name carolinashoe.com on August 13, 1999, but didn’t register the domain carolinaboots.com which was apparently available at the time since the domain holder registered it on August 29, 2000.
Now its 2013 and the company just got control of the domain name on a complaint filed in November 2012, more than 12 years later.
As we pointed out a few weeks ago a lot of the “cybersquatting” problem that trademark holders complain about are caused by the trademark holders themselves.
In this case the trademark holder is at fault for not registering the domain name in the 1st place and then by allowing the domain to be parked for 12 years, especially since the panel found the domain holder took copyrighted images and material off the trademark holders site.
Here are the facts and findings by the one member panel:
The Complainants are said to be a leading manufacturer of footwear and said to have been operating for over 115 years.
The Complainants are said to have been using the CAROLINA trademark continuously since 1963 for “boots and shoes” and are said to have obtained a U.S. Trademark Registration for the trademark CAROLINA in 1996 and in Europe in 1992.
It is also stated that the Complainants registered the domain name carolinashoe.com on August 13, 1999 and use the said carolinashoe.com website to sell and advertise the Complainants’ famous CAROLINA boots.
“The Panel is satisfied from the number of trademark registration certificates exhibited to this proceedings that the Complainants own substantial federal, international and common law rights in the trademark CAROLINA which the Complainants have used in the sale and advertisement of boots and other footwear globally and over the years. In this regard the Panel finds that the disputed Domain Name incorporates all elements of the Complainants’ trademark which is CAROLINA and accepts that the mere addition of the designator “boots” and the gTLD “.com” does absolutely nothing to preclude a finding of confusing similarity”.
The Panel is therefore satisfied that the Complainants have established that the disputed Domain Name carolinaboots.com is confusingly similar to the Complainants’ CAROLINA trademark.…