Wrong Turn

Steve Levy ⬥ 29 July

There are many possible issues to discuss in the New Jersey Turnpike Authority’s failed attempt to reclaim the domain names gardenstateparkway.com and njturnpike.com through a UDRP complaint. There’s the issue of laches: the domains were registered in 1998, and the complainant claims it only just learned of these domains in 2012 – 14 years later! Also, at one point, the Respondent’s websites showed a graphic of a hand pointing the middle finger as a protest against tolls on the roadways managed by the Complainant – so, this could have been claimed as fair use.

However, what ultimately doomed this case was that the Complainant failed to provide evidence that it owned trademark rights to the NEW JERSEY TURNPIKE and GARDEN STATE PARKWAY names in 1998 when the domains were first registered.

The Complainant had filed the appropriate U.S. trademark applications, but most of these were done in 2012 – certainly after the respondent registered the domains. However, since the Complainant had been managing these roadways for over 50 years, presumably it would have been possible for it to dig up some old materials showing that it had common-law (unregistered) trademark rights in the names and that the names were not merely geographic terms used by a state government to identify these roadways. This then, would show that the Complainant’s trademark rights existed when the domains were first registered, making it possible to prove that the Respondent acted in bad faith at that time, as is required by the UDRP.

Unfortunately for the Complainant, no proof of these common-law trademark rights was submitted into evidence.

So the bottom line here is that, either the Complainant’s lawyers didn’t advise putting in this evidence of common-law trademark rights or the Complainant wasn’t able to find enough material to prove that it had such rights back in 1998 when the domains were registered.  Either way, it’s clear that this case shouldn’t have been brought under the UDRP and that Complainant should have considered more experienced domain enforcement counsel for this very challenging situation.

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