Case Number: D2018-0883
Complainant: RoofPro LLC
Represented by: Taft, Stettinius & Hollister, LLP
A Maryland roofing contractor, RoofPro, LLC, operating from the domain, marylandroofers.com, has been found guilty of attempted Reverse Domain Name Hijacking, after filing a UDRP complaint to acquire the domain roofpro.com. RoofPro was represented by Taft, Stettinius & Hollister, LLP, while the respondent domain owner, Blue Nova Inc., was represented by ESQwire.com Law Firm.
The roofing company began operations in 2003; however, the domain roofpro.com was registered in 2001, and acquired by its current owner in a mass domain purchase in 2002, nearly two years before RoofPro LLC began operating under its current name. RoofPro LLC argued that it had common-law rights to the name, since it had been operating with the same trade name since December 2004.
However, the WIPO panel disagreed, writing in its ruling, “The Complainant appears to have assumed that claiming a long period of use, without providing specific evidence of acquired distinctiveness, will be sufficient to support a claim under the Policy. That assumption was wrong, as it ignores well-established fundamental guidelines on this issue that are particularly important for putative trademarks comprised of descriptive words.”
The three-member panel chastised the complainant and its attorneys for bringing their complaint, as the complainant’s own evidence, the panel wrote, provided proof the domain was never registered in bad faith. “The chronology itself presents a compelling barrier against a finding of bad faith, which should have been obvious to the Complainant and its attorney. On this basis alone, this Complaint ought never to have been launched.”
The WIPO panel handed up its ruling on July 13, 2018.