Decisions: “Nice” Trademark!

The presence or absence of a trademark can sometimes make or break a UDRP case for a Complainant. Nice Car Inc.’s trademark for NICE CAR seemingly played a large role in deciding the outcome in its complaint against choi sung sik over the domain name NiceCar.com, filed with the National Arbitration Forum.

In the case of a default (non-response) by the Respondent, the Panelist made her decision based only on the information that the Complainant presented. The Complainant has owned a US Trademark for NICE CAR in relation to motor vehicle dealerships and repair services since 1975.  Surprisingly, despite some technical issues in the PTO application process and a cancellation action by a competitor claiming prior use, the trademark was never called into question for being descriptive of the Complainant’s services.

Owning rights to such a borderline mark may be unusual, but the Panelist determined that the it was identical or confusingly similar to the NiceCar.com domain name. The Complainant was also able to prove that the Respondent lacked rights or legitimate interests in the disputed domain name and that he had registered the name in bad faith, as he offered to sell it to the Complainant for $100,000, a sum that greatly exceeds the Respondent’s costs of registering and maintaining the domain name.

Based on the above factors, the Panelist ordered that the domain name be transferred to the Complainant. While the proceedings themselves were somewhat straightforward based on the evidence presented, it’s somewhat unusual for a case involving such a descriptive term to proceed to smoothly. This shows that if the Complainant can satisfy all three requirements and the respondent defaults, a transfer of almost any name is possible.