Uniform company files arbitration to get Peaches.com domain.
be sweeter.
Peaches Uniforms, a seller of fashion uniforms and scrubs to women in the medical industry, has filed an arbitration request with National Arbitration Forum to gain control of the domain name Peaches.com.
Peaches Uniforms, founded in 1987, filed for a trademark on the term Peaches for medical uniforms in 2006. The trademark was granted in April 2007.
Peaches.com was originally registered in 1995. The current owner, 24-7 Outdoors, Inc., has owned the domain since at least 2003, the earliest date historical whois records are available on DomainTools. At the time, the domain was registered to The Peach Connection and 24-7 Outdoors.
Earlier this year, Peaches.com forwarded to a parking page with ads for medical uniforms. Since at least October it has forwarded to web pages not related to medical uniforms.
Peaches Uniforms will have to jump two big hurdles if it has any hopes of winning this battle.
First, the domain was registered several years prior to Peaches Uniforms even registering its current domain PeachesUniforms.com and more than a decade before the company filed for a trademark on “Peaches”. Proving a bad faith registration will be challenging. At the time the domain was registered, is it likely that the registrant knew of Peaches Uniforms and bought the domain with the company in mind? With such a generic term and the company being in a small niche, this will be a tough sell to the panel.
Second, Peaches Uniforms has had a web presence for a long time. Why wait until the last month of 2008 to filed a UDRP to get the domain Peaches.com? Surely the company has been aware of the existence of peaches.com for a long time. A UDRP arbitration panel will sometimes find against a complainant’s claim that there was confusion between the domain and its brand if it takes too long to file a UDRP.. For example, in a case about CapitolCorridor.com, the panel wrote “Complainant also contends that it only recently learned of the existence of capitolcorridor.com as a reason for its six-year delay in asserting its rights. The Panel gives this unsupported assertion little weight, as it is difficult to believe that the owners of capitolcorridor.org could reasonably remain unaware of the existence of capitolcorridor.com for over six years.”
I don’t have more details about the ins and outs of the case, but I’ll anxiously await the decision and post a follow up when it is handed down.
David J Castello says
There is NO way that Peaches.com should lose this name. If they do it will be a horrific decision for domain owners.
WQ says
>>>There is NO way that Peaches.com should lose this name.
Well, they were serving ads for medical uniforms. So there is SOME way they could lose this domain.
Luckily, they reg’d the domain long before their TM.
David J Castello says
WQ:
If ALL the ads on the previously parked page were for medical uniforms I’d say this might get a little sticky. There were no ads for peach fruit baskets or any other peach product? Andrew, can you see by looking at their UDRP submission?
Regardless, I’m sure the owners of Peaches.com weren’t serving up the medical uniform ads. Their parking company was serving up the ads. The problem here is that some UDRP arbitrators are holding the domain owners 100% responsible for ads on their parked pages as if the domain owners were purposely targeting these companies.
If Peaches.com loses this generic name (as Frank did with ChiliBeans.com) I would say that no parked name is safe going into 2009.
WQ says
It doesn’t have to be ALL ads. It can only be one.
And technically we are each resposible for whatever ads appear on our domains. Many domains have been lost by owners letting parking companies “auto optimize” their domains.
This is something anyone with domains they dont want to lose needs to be aware of.
I have been moving many of mine away from the auto optimize options when they can have a potential problem.
No parked domain is safe if you have links to keywords and websites that infringe on another companies trademark.
In this case, its going to really boil down to whether or not the Peaches Lawyers took screenshots of Peaches.com when it was serving up the infringing keywords.
Thats about all they have to work with here.
Then its up to the panel to decide if thats enough to cost them the domain.
Hopefully not.
Matt Saunders says
If I may be picky for a moment, one does not “file for a trademark,” one files an application for registration of a mark. Trademark rights are gained by use of the mark, not by registration. This is an important distinction, as an individual or company may have established strong and widespread rights in a mark long before filing an application for registration.
Also, keep in mind that it is the date the application was filed, not the date the registration was issued, that is the key date with respect to a registration. Once the registration issues, the rights that go along with that registration date back to the filing date.
Anyway, love the blog, just wanted to bring that up.
Andrew says
@ David & WQ –
I agree with both of you. The domain name shouldn’t be taken away, as there’s no way this was registered in bad faith. There are many company’s that own trademarks to the term peaches, too.
But the domain DID show a lot of medical uniform ads, which is precisely why Peaches Uniforms has *ANY* claim here. If those ads wouldn’t have shown up, Peaches Uniforms would have not shot at the domain.
Any self-respecting UDRP panel wouldn’t find in Peaches Uniforms’ favor. But the only reason they’ll have to look at the case is because of the links.
Andrew says
@ Matt – thanks for being picky 🙂
My guess is in the UDRP Peaches Uniforms claims common law trademark rights back to its founding in 1987. But they will have to prove that the owner of Peaches.com should have known about the trademark. That will be tough.
Andrew says
@ David – I have not seen the actual filing as the respondent would not comment.
John Berryhill says
“If Peaches.com loses this generic name (as Frank did with ChiliBeans.com)”
Umm… not so fast there. Chillibeans.com is subject to follow-up litigation, and is far from “lost”.
Andrew Allemann says
@ John – haven’t located a lawsuit related to ChiliBeans…feel free to point me in the right direction 🙂
I found my thrill says
I second the motion on where is the Chillibeans.com lawsuite. Should not be a secret.
Peaches = DESIRABLE WOMEN
(not all women 😉 I suggest only 7 – 9% are peaches. IF YOU KNOW WHAT I MEAN
read the decision.
It is a good thing that the women were not ugly (and I am here to tell you) otherwise the use would not have been suggested by the generic meaning = no bonified use = you lose your domain after 10 years of no complaint.