Case No Domain(s) Complainant Respondent Ruleset Status
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Sears Brands, LLC Dann J. Flesher c/o Frick & Frack Enterprises UDRP CLAIM DENIED


Demonstrable Preparations for Noncompeting Business

06-Aug-2009 07:42am by UDRPcommentaries

About author

Gerald M. Levine

Sears Brands owns the trademark MY GOFER in two classes. Registrations were respectively January 2009 and November 2008; first use in commerce for both classes was April 2007. The filing factor of the earlier of the two trademark registrations was 1(b) (Statement of Use Filed October 2007), the later 1(a). The Complainant registered <> in June 2006. The Respondent in Sears Brands, LLC v. Dann J. Flesher c/o Frick & Frack Enterprises, FA0906001267667 (Nat. Arb. Forum July 29, 2009) registered the following domain names in May 2008, <>, <>, <>, <>, and <>.

The Respondent offered evidence that it was already operating a business through one of the websites utilizing an algorithmic patent registered by the USPTO in 2003. The parties are in completely different businesses with no overlap of customers or products.

Sears Brands illustrates (at least for generic terms) two different factual circumstances. The first involves registering confusingly similar domain names “for the purpose of competing with a complainant.” This is “not a use in connection with a bona fide offering of goods or services.” The second involves use of confusingly similar domain names “operating or preparing to operate a non-competitive business.” This use has been found not to be abusive citing three earlier cases for the proposition, David J. Joseph Co. v. Barry, D2000-1418 (WIPO January 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute); Etax Corp. v. Whiting, AF-0369 (eResolution October 15, 2000) (finding rights and legitimate interests where the respondent consulted extensively with his business partner, incorporated a company, and contacted a web designer); Warm Things, Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that the respondent was making a bona fide offering of goods or services at the <> domain name as the respondent was operating in a field unrelated to the complainant or its products).

The Respondent in Sears Brands falls into the second category, namely that before notice of any dispute it commenced using one and has made demonstrable preparations to use the other disputed domain names in the furtherance of its business.


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