Reading the cases which came out of the National Arbitration Forum last week, I was struck by the decision over the domain name brickman.com (NAF 01425812) which was brought by The Brickman Group Ltd. against Tucows.com Co. The Complainant was a landscaping company with longstanding rights to the BRICKMAN mark including a federal trademark registration covering gardening and landscaping services.
The first surprise was the fact that there was even a decision issued at all. Tucows apparently filed a complaint in a Canadian court (at the same time as the arbitration) so that there no need for the NAF to decide the arbitration. The usual procedure for an Arbitrator in a case where there is a concurrent legal proceeding, is to stay the arbitration until the court has decided the issue.
Second, there was no discussion about Tucows response to the allegations even though it apparently filed a timely response. Tucows, a domain registrar and internet services provider, appears to have acquired the domain from a company called Net Identity which it bought back in 2006. According to a June 2006 press release Tucows purchased Net Identity’s portfolio of roughly 6,000 domains, many of which were surnames like Brickman, for $18 million and other considerations. So Tucows has owned the domain since 2006. If this is correct, then the Complainant waited an awfully long time to assert its rights, and Tucows may not have acted in bad faith if it was simply using the domain because it also acts as a surname. It’s hard to believe that Tucows did not raise this issue – nevertheless there is no mention of this in the decision.
Lastly, the arbitrator stated that “Complainant owns trademark registrations for its famous marks…”, but there is nothing in the decision which supports the determination that the BRICKMAN mark is “famous”, and even if there was, fame is not relevant to a similarity analysis.
Overall this is a pretty interesting decision for one that is moot, and we are interested to follow this case through the Canadian legal system and see how ownership of the brickman.com domain plays out.