US company Hudson’s Furniture Showroom, Inc. had initiated UDRP proceedings against a US national over the domain name <hudsonfurniture.com> based on the following unregistered trademark: HUDSONS’S FURNITURE. The Complainant claimed to operate this trademark in a geographical area corresponding to central Florida. In this regard, it should be recalled that the legal scope of an unregistered trademark (or common law trademark) is equivalent to the geographical area in which its owner operates its business under the said trademark, unlike a trademark registered with the USPTO (the United States Patent and Trademark Office) whose territorial scope extends to the entire territory of the United States. In addition, the HUDSONS’S FURNITURE trademark, on which the UDRP complaint is based, is made up of a descriptive term (furniture) and a geographic term (Hudson), which makes it vulnerable and ineffective. In fact, from a legal point of view, such a trademark is difficult to enforce against third parties. Therefore, in the presence of such a weakly distinctive sign, in the context of a UDRP proceeding, some panelists may consider that there is no opposable mark. In this case, the panelist took this position:
“The Panel notes that the terms HUDSON and FURNITURE are descriptive and lack of distinctiveness. The Complainant doesn’t own any registered trademarks comprising of the terms HUDSON and FURNITURE and has not submitted evidence supporting marketing expenses which would support the allegation that the continuous use the “HUDONS’S FURNITURE “mark establishes common law rights in the “HUDONS’S FURNITURE “mark for the Complainant. Without the any evidence to the contrary the fact that the Complainant is only located in a small geographical area (taking into the global reach of a website) it cannot be established that “HUDONS’S FURNITURE “mark has acquired secondary meaning.” (Forum, FA2110001971294, Hudson’s Furniture Showroom, Inc. v. Boran Batur, December 13, 2021, <hudsonfurniture.com> (panelist: Katalin Szamosi))
The panel then rejected the transfer request: no trademark, no domain name.
Furthermore, it emerges from the response that the complainant had abandoned or omitted to renew the disputed domain name, which would have enabled the respondent to acquire it through an auction. This unfortunate situation leads to recall the critical importance of a domain name as an asset of a company. A domain name is not an asset to be neglected, and its renewal, like its security, must be taken with the utmost seriousness.
