When It Comes to Domain Names, It’s Not Easy Being Green

This week’s National Arbitration Forum decision involves the domain names greencycler.com and thegreencycler.com. The complainant, Greencycle, Inc., holds a trademark for Greencycle and uses the domain name www.greencycle.com to offer mulch, soil and stone. The respondent, Gail Loos/Ingenious Marketing, uses the domain names at issue to market a counter-top composting device. The respondent applied for a trademark for Greencycler in 2010, but the USPTO rejected the application in 2011, citing likelihood of confusion with the already-registered trademark for Greencycle (held by the complainant).

The panelists in this case found that the complainant satisfied the first of three elements of the UDRP: The complainant successfully demonstrated that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights.

However, the panelists found that the complainant did not establish the other two required elements, that the respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

A quick look at the respondent’s website suggests that the Greencycler is a legitimate product – an ‘award-winning’ kitchen scrap composter – and that it is also a very different product from the landscaping materials offered on the complainant’s site. According to the Decision Findings, the respondent attempted to “negotiate a co-existence arrangement [with the complainant], but no agreement was reached”. As opposed to cybersquatted or typosquatted sites, the respondent’s site does not include pay-per-click ads that lead to products or sites that compete with the complainant’s products.

Ultimately, there just wasn’t enough – if really, any – evidence that the respondent had registered the domain name in bad faith. However, the respondent felt that the complainant was acting in bad faith by bringing the complaint and alleged that the complainant was engaging in reverse-domain-name hijacking.

Though the panelists did not find that the complainant was engaging in reverse-domain name hijacking (put simply, harassing the competition through filing complaints), the case shows what I feel is an inappropriate and overly-aggressive use of the UDRP that had no chance of success from the start.  This is really just a routine conflict between two companies in similar fields, and it’s my opinion that the complainant used the UDRP only for leverage – perhaps to scare the respondent into negotiating a settlement of the broader trademark dispute.