Group that manages UCR registrations loses case against registration filing service.
A UDRP panel has found Unified Carrier Registration Plan to have tried reverse domain name hijacking the domain name UCRRegistration.com in an interesting dispute.
UCR stands for Unified Carrier Registration, which is a sort of tax and registration system applied to trucking companies that operate across state lines. The system is congressionally approved, and the Complainant operates a website on a .gov domain, ucr.gov.
Various third parties, including UCRRegistration.com registrant Excelsior Enterprises International, Inc., provide services to help interstate carriers file their UCR registrations. It’s kind of like the services that help small businesses incorporate or how an income tax filing service helps people file their taxes.
Unified Carrier Registration Plan has a trademark for a logo, but UCR and Unified Carrier Registration by themselves seem to be commonly used terms in the industry. In fact, the Complainant disclaimed exclusive rights to use “Unified Carrier Registration Plan” in its logo trademark.
In a Unified Carrier Registration Plan board meeting on March 3, 2002, the group’s outside counsel commented on another group that provides third-party registration services:
I got a report this afternoon on our activities with six third-party permitting services that we have interacted with. The first is the Simplex group. We sent them a demand letter insisting that they stop using our registered logo. They engaged a lawyer to respond who sent us a letter agreeing with us that they should stop using the logo but they also believe that using the phrase ‘UCR permit’ and ‘UCR registration’ and similar phrases are permitted uses. We agree with that.
This suggests that the group agrees that it cannot stop third-party services from using the terms UCR permit and UCR registration — just that they shouldn’t use its logo.
The three-person UDRP panel found this case was brought in bad faith:
As to Complainant’s asserted common law trademark rights, the evidence before the Panel clearly shows that, prior to the filing of its initial Complaint in this proceeding, Complainant, Unified Carrier Registration Plan, established under a statute which uses “UCR” as an abbreviation for Unified Carrier Registration in the definition of Complainant, was well aware that it has no common law trademark rights in that abbreviation, nor in its combination with the descriptive word “registration”, as its outside Counsel so advised Complainant in 2022. The Panel notes that Complainant’s own website at “https://plan.ucr.gov/about-ucr/” uses “UCR” as an abbreviation:
“Motor carriers involved in interstate commerce, and other businesses subject to Unified Carrier Registration (UCR) are required to submit annual fees based on fleet size to supplement funding for state highway motor carrier registration and safety programs.”
As to legitimacy, the Amended Complaint asserted, as set out above:
“Before any notice to Respondent of the dispute, Respondent has not used, or made 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 a legitimate noncommercial or fair use. Instead, Respondent is using the confusingly similar domain name to reroute Internet users to its own website, which purports to sell Complainant’s services for an additional fee.
Although the identity of Respondent was not disclosed by the Registrar until after the filing of the Complaint, it is clear that Complainant had long been aware of the legitimate services provided by Respondent and others in the industry, since those services involve payments to Complainant on behalf of their customers, a service expressly recognized by Complainant as permissible in the UCR HANDBOOK, approved by the Board of Directors of Complainant, effective August 11, 2022, available on Complainant’s website:
“Registration Through Third Parties: An entity subject to UCR may engage a third party to perform UCR registration and pay UCR fees. Such arrangements may be subject to the rules of individual participating states. The UCR program does not regulate the fees a private party may charge a registrant for such a service.”
Nevertheless, Complainant proceeded to file its Amended Complaint with full knowledge of Respondent’s rights and legitimate interests in the domain name.
Having regard to all the circumstances of this case, the Panel finds that both the Complaint and the Amended Complaint were brought in bad faith and that each constitutes an abuse of the administrative proceeding.
Bradley Arant Boult Cummings LLP represented the Complainant, and Blank Rome LLP represented the Respondent.
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