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Michael Berkens and Howard Neu Team Up to Save Domain Name

December 7, 2010Domaining, Domainnamewire, howard neu, michael berkens, Policy & Law, worldwide mediaComments Off on Michael Berkens and Howard Neu Team Up to Save Domain Name

Michael Berkens’ Worldwide Media, Inc., has successfully defended its domain name in a UDRP with the help of attorney Howard Neu.

Complainant CareFree Homes II, L.P. doesn’t have a registered trademark for “CareFree Homes”, but it argued common law rights. The argument by the El Paso, Texas home builder was fairly weak. Summarizing the home builder’s failure to show any sort of common law mark, the panel wrote:

The evidence offered by the Complainant falls far short of the fairly high standard for establishing a common law mark. The fact that it had a presence on the Internet over the past 10 years under various domain names which include the name CAREFREE HOMES is not enough. The submitted print publications and flyers of advertisements used to promote its business, the fact that it is the recipient of building awards and that it has advertised through cable TV do not provide sufficient evidence of a common law mark.

…The fact that the words of the disputed domain name are generic operates against a finding of their having acquired a secondary meaning. The fact that there are similar operations in at least three other states, as identified by the Respondent, all operating under the name “Carefree Homes” further diminishes the Complainant’s case.

Because the complainant didn’t meet the first requirement of a UDRP, the panel declined to consider the second and third elements of a UDRP. However, the panel did give a nod to a recent case involving Frank Schilling that I previously said could set an important precedent over laches.

This panel stopped short of considering if it agreed with the panel in the Schilling case that found laches (basically waiting too long to file a complaint) could be a defense, but still noted that waiting over a decade to file a complaint hurt the complainant’s case:

This is another case where a complainant has slept on its rights. It would be extremely difficult to infer, after 10 years of inaction by the Complainant, that a respondent registering a domain name 10 years previously consisting of two generic words would know of their use by a company then operating in a small way in another state some distance away…

….The equitable doctrine of laches need play no part in this Panel’s assessment. Nevertheless, the longer a complainant defers the seeking of relief under the Policy, the more difficult it is to prove bad faith registration.

© 2010.

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