The Freename Forum

In a recent UDRP decision by The Forum, it becomes clear that a 67-year-old business name does not readily give rise to a trade mark that fulfils the first requirement of the UDRP in the context of the proceedings. The complainant in the dispute over the domain thecharlesmachineworks.com was unable to prove the use of its name as a customary trade mark and lost the proceedings.

The Charles Machine Works Inc., founded in 1957, believes that its rights have been infringed by the domain thecharlesmachineworks.com, which is why it initiated UDRP proceedings before The Forum. Among other things, it argued that it was the owner of the customary trade mark ‘THE CHARLES MACHINE WORKS’. Although it largely uses its trademarks ‘DITCH WITCH’ and ‘HAMMERHEAD TRENCHLESS’ to sell its goods, it has been known in its industry as ‘The Charles Machine Works, Inc.’ for 67 years. It is the owner of the domains charlesmachineworks.com, charlesmachine.works, charlesmachine.net and charlesmw.com, among others. Customers would be misdirected by the domain thecharlesmachineworks.com. The complainant attached a screenshot of the opponent's website to her complaint, in which reference is made to the recycling of plastic, foam mattresses and similar products. These products were offered on the third party website using the complainant's postal address. The complainant further submits that in July 2024 someone under the name ‘Gregory More’ approached a bank with which the complainant does business and applied for a loan of US$ 300,000, whereby the person announced himself by email under the business name ‘The Charles Machine Works Inc.’ and the contact email address ‘gregory@thecharlesmachineworks.com’. The opponent, who registered the domain thecharlesmachineworks.com in October 2023 via a privacy service, did not report to the proceedings. Irish lawyer James Bridgeman was appointed as the decision-maker.

Bridgeman dismissed the complaint because, in his view, the complainant had not provided evidence of the existence of its trade mark ‘THE CHARLES MACHINE WORKS’ (The Forum, Claim Number: FA2410002119067). According to Bridgeman, it is clear that the appellant's company name is The Charles Machine Works, Inc. and that the company was founded in Oklahoma on 2 January 1957; this was proven by the submission of documents. However, the registration of a company name or a business name does not per se create trade mark rights. The appellant claims that it sells ‘equipment’ but does not explain its nature and has provided no evidence of the products it sells or the services it provides or of the use of ‘THE CHARLES MACHINE WORKS’ for its goods or services. In order to establish a common law trade mark right in ‘THE CHARLES MACHINE WORKS’, the appellant would have had to prove that it had used the mark in the course of trade to distinguish its goods and services to a sufficient extent to establish a protectable reputation and goodwill. It had not done so. It had therefore already failed to fulfil the first element of the UDRP.

As a result, Bridgeman did not go any further into the other elements of the UDRP procedure, but summarily dismissed the complaint and ruled that the domain thecharlesmachineworks.com would remain with the opponent.

The UDRP decision on thecharlesmachineworks.com domain can be found at:
https://www.adrforum.com/DomainDecisions/2119067.htm