In the case of Toilets.com, Inc. v. Porta-Jon of the Piedmont (WIPO D2008-1043, August 22, 2008), the Panel was faced with two long standing companies using nearly identical marks and web sites. Complainant first used the phrase “porta-john” for rented portable toilets in 1962. And owns registered mark for PORTA-JOHN since 1972. Complainant’s principal website is “www.porta-john.com”, which it has used continuously since 1997. Respondent conducted a similar business in the state of North Carolina since May 1969, and incorporated its business under the name Porta-Jon of the Piedmont, Inc. in North Carolina in 1973. Respondent holds state trademark registrations for PORTA-JON in North Carolina and South Carolina. Respondent registered the disputed domain name “porta-jon.com” in 1998 and used it to promote its business.

The Complainant sent many cease and desist letters to Respondent over the years. The panel acknowledged, that the only fathomable argument in favor of finding a lack of legitimate purpose was that the cease and desist letters may have served as notice of the dispute. However, the panel quickly dismissed any validity or support thereto.

Instead the panel focused on the evidence presented in favor of legitimate use by the Respondent, noting:

This Panel cannot conceive circumstances in which decades of use of a business name, without interruption, can fail to give a registrant a right or legitimate interest under the Policy to incorporate the principal word in that name into a domain name used for purposes of that business. Such circumstances are exactly the reason for the safe harbor in paragraph 4(c)(ii) of the Policy.

The Panel observed further that:

To the extent Complainant believes its business has been adversely affected by Respondent’s long-time conduct, an action in court for trademark infringement or unfair competition is the appropriate means for seeking redress. A court action, not a Policy proceeding, similarly is the place to determine “priority” and other rights under national trademark laws. With its abbreviated proceedings and considerably lower costs, the Policy may appear to be a quick-and-dirty alternative to an infringement action or, as appears to be true in this case, to a further cease-and-desist letter.

Ulitimately, the Panel denied the transfer of the domain and found that the complaint was “nothing more than harassment” and was Reverse Domain Name Hijacking.