UDRP YOU Make the Call No. 2 - Pitstop.com

[jberryhill]

Okay, since the Toros.com thread got a little mixed up because WIPO posted the wrong result, how about we try a case that hasn't been decided yet?

This is the case:

WIPO Case Number D2023-5318
Domain name(s) pitstop.com
Complainant Distribuidora Automotiva S.A.
Respondent Black Moon Designs LLC / Jeff Muzzy

To kickstart you with a few facts, this is the Complainant:

https://www.pitstop.com.br/

They are an auto parts distributor in Brazil. In the Complaint, they say this about themselves:

Okay, what do you make of this one?

 

[draco]

Pit Stop is a common automotive / racing phrase.

The complainant mentions doing business and having trademarks in Brazil. Nothing about the USA, where Black Moon Designs appears to be located.

I looked at some (not all) previous Archive.org captures of the domain, and I don't see anything that would indicate Black Moon was aware of or trying to capitalize on the complainant's business. There are quite a few captures showing a misconfigured server. But I don't see how that would justify taking the domain away from the Respondent.

Unless there's some revelation not included in the above information, I would have to say the Respondent will keep the domain.

 

[Chris Hydrick]

YOU Make the Call

138 Original You Make The Call Clips

the Toros.com thread

Just to cross off any similarites from case #1: the Toros.com thread:

One of the two funny things here is that the Respondent also owns the .net ... and the complainant doesn’t even want them.

The respondent in PitStop.com (5 July 94) also appears to own PitStop.net (26 JUNE 1998). Despite the early WHOIS age, both these domains had dropped at least twice.

The complainant owns PitStop.com.br (16 JULY 1997) and PitStop.net.br (25 June 1998).

If I am reading PitStop.net.br WHOIS correctly, the WHOIS registration for PitStop.net.br predates PitStop.net by one day.



This may be notable considering the logo for PitStop.com.br is: Rede Pit Stop



Rede Pit Stop translates from Portugese to English as: Pit Stop Network

Except that might not be a full translation as "Stop" in Portugese is "Parada", and "Pit" in Portugese is "poço".

FWIW:

PitStop.Network is available for registration.

RedePitStop.com was owned by Distribuidora Automotiva S A from 2008 to at least around 2018 at Tucows. It transferred to GoDaddy under WHOIS privacy, and remained registered until 26 December 2023; currently available for hand reg.

Yes, you read that right. If the Complainant's attorney - a UDRP panelist and trademark attorney had, you know, bothered to look to see if anyone OWNED A TRADEMARK FOR TOROS.COM, they would have found out the Respondent did.

Similar to Toros.com, PitStop.com had filed for a trademark. Mark #75876701. However, that mark appears abandoned.

 

[jberryhill]

PitStop.com had filed for a trademark. Mark #75876701. However, that mark appears abandoned.

Yes, but....

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

IF that applicant is connected with the current registrant.

 

[Keith]

The .com is currently parked. As long as no ads infringed, they win. It’s a generic term known widely in the racing community and beyond.

 

[jberryhill]

Look a little deeper….

 

[DomainNature]

The word Pit Stop is not a brand name, this words are widely used in English language, if someone say Pitstop I would not think or even know there is such company in Brazil, therefore this is another try grab RDNH in my opinion.
Considering that the words are even not from Portuguese/Brazilian language, the complainant can easily go grow potatoes.

 

[jberryhill]

Considering that the words are even not from Portuguese/Brazilian language, the complainant can easily go grow potatoes.

That's a very good point. From the Response:

The problem is, they weren't actually called that...

One pro-tip for UDRP Complainants. Try not to lie.

 

[Jannes]

 

[DomainNature]

There are some things in such cases that can be used to show to the complainant, example, what is the reason that the complainant decided just now to UDRP this domain, why they waited all this years, what was the opportunity they have seen just now (?), they probably found something recent like parked domain with ads, which they think is in bad faith, but I think the owner can do whatever he likes with this old domain, sell, park, develop etc.
Wide usage for such words, pretty many companies can use Pit Stop for other purposes, not just car parts.

 

[Jannes]

Jeff Muzzy seems to be a long-time Microsoft veteran, it would be nice if his old company retaliated, no soup Microsoft licenses for you!

 

[jberryhill]

a long-time Microsoft veteran

Not exactly your typical cybersquatter's LinkedIn page, eh?

I think you might be getting results for distributor OR automotive instead of that exact phrase. But "Automotive Distributor" is quite the distinctive corporate name.

 

[MariaEl]

Hi, here's what I found:

Pitstop.com as seen from Brazil (where Complainant holds registered TMs for Pitstop and runs a website on Pitstop.com.br):

So, as far as I understand, the A requirement of the Complaint (identical or confusingly similar etc.) is likely to be established, and it's real that anyone trying to reach Pitstop.com.br could easily reach Pitstop.com, where they are shown ads for the type of products and services offered by Distribuidora Automotiva S.A. Complainant is actually likely to be damaged by this situation.

The key then would be on the examination of the other two requirements of the UDRP, namely bad faith and respondent's legitimate rights. If I am understanding correctly what Mr. @jberryhill hinted at with the photo he posted and the comment on an old filing for Pitstop trademark in the US, these requirements would be solved in favor of Respondent, thus the transfer would be denied.

 

[MariaEl]

Yes, but....

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

IF that applicant is connected with the current registrant.

Is the connection possible in this case?

 

[MariaEl]

On the other hand... Wayback Machine one day in 2005:

 

[jberryhill]

Last call, place your bets:

 

[Keith]

Last call, place your bets:

Show attachment 254221

The only way I see the complainant winning is if the domain owner had a parked page with ads to the complainant’s business.

Otherwise, it’s a generic term and in reality, the system and rules should be changed. You should not lose a valuable asset over online adverts of any kind. Archaic way of thinking…

 

[MariaEl]

Yes, it is parked with ads (see my post above).

Nevertheless, since it is a generic term, the decision was probably made taking into account dates order (when Complainant first had rights on the term versus when Respondent acquired this domain, and whether Respondent had Complainant in mind or targeted them etc.).

Also, whether Respondent has any rights or legitimate interests (such as seem to have been hinted of by Mr. Berryhill).

 

[MariaEl]

Well, I've halted my house chores just to wait for the decision to be finally published...

No soap opera or sitcom would match this suspense!

 

[jberryhill]

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-5318.pdf

The Panel notes that the Response states the disputed domain name was initially registered for a project inthe context of the Respondent’s work as a software engineer, as is reflected in the oldest WHOIS recordlisting the corporate address for Microsoft. The Response then states that “(w])hen the (disputed domain) name was not used for its original purpose, (the) Respondent continued to personally maintain the domain name and to pay the renewals for purposes relating to why Respondent chose ‘PITSTOP’.” This formulation appears to imply both that the disputed domain name was potentially registered at the request of or for the page 5benefit of his then-employer, but also that the Respondent registered the disputed domain name from the outset for a car-themed purpose. It is also not entirely clear when the disputed domain name would have passed from one purpose to the other, and when the registrant became the sole registrant (as opposed to the Admin/Tech contact, but not the Registrant); the next WHOIS record provided shows this to be in 2013.Ultimately however, given that the Respondent incorporated Pitstop.com Inc. as Washington corporation inAugust 1999, there is sufficient corroborating evidence of the fact that the Respondent’s a bona fide / noninfringing use of the disputed domain name between 1998 and 2008, as a racing car online resource. The Panel finds that the latter use is sufficient to establish rights or legitimate interests.