Case Number: D2020-0155
Complainant: Roy Upshaw, d/b/a Taco Casa
Represented by: Norredlaw PLLC
A Texas-based taco chain, operating under the name Taco Casa, has been found guilty of Reverse Domain Name Hijacking after attempting to grab the domain tacocasa.com from an Alabama-based taco chain, also operating under the name Taco Casa. Texas-based company, owned by Fort Worth resident Roy Upshaw, was represented by the law firm of Norredlaw PLLC. Mr. Upshaw and the Texas company filed their UDRP on January 22, 2020. The Alabama-based company, owned by a Tuscaloosa resident Rod Wilkin, was also represented by counsel, the firm of Bradley Arant Boult Cummings, LLP. While it was unclear when Mr. Wilkin acquired tacocasa.com, the domain registration dates to 1998.
The Texas-based fast-food chain owner and franchisee had argued his long-standing business, operating since the mid-1980’s, plus a 2018 trademark registration for the character mark “taco casa”, and an older, design mark containing the words “taco casa”, which dates to January 1986. However, the Alabama-based Taco Casa provided state-level trademark registrations dating to 1981, as well as business records proving the company had operated since 1974. What is more, the company had been operating under its current state-level registration since 1980, which the panel noted in his report.
The single-member panel of the World Intellectual Property Organization found the case was a clear attempt by a new trademark holder to take the domain of another trademark holder.
“[I]t is clear that the Respondent had rights or legitimate interests in the name “Taco Casa” going back to 1974 and that it was firmly established in the corporate name and state-registered trade names and service marks by 1981,” wrote the panelist, W. Scott Blackmer.
In issuing his ruling of Reverse Domain Name Hijacking against Mr. Upshaw and the Texas-based company, Mr. Blackmer chastised the complainant for attempting to misrepresent the case. “Here, the Complainant offered few supporting facts, misstated a material fact … and ignored evidence (available on the Respondent’s website and in conversation with the Respondent’s counsel) that the Respondent indeed possessed well-established rights and legitimate interests in the Domain Name long before the dispute arose,” he said.
The RDNH ruling was handed up March 18, 2020.
Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-0155