Tuthill Corporation v. William Durnan / Devco Corporation / Devco Corporation Devco Corporation
Claim Number: FA2006001901117
Complainant is Tuthill Corporation (“Complainant”), represented by Thomas White of Schiff Hardin LLP, US. Respondent is William Durnan / Devco Corporation / Devco Corporation Devco Corporation (“Respondent”), represented by Peter J. Kurshan of Herzfeld & Rubin LLC, US.
REGISTRAR AND DISPUTED DOMAIN NAMEs
The domain names at issue are <tuthillparts.us>, <tuthillpumps.us>, and <tuthill.us>, registered with GoDaddy.com, LLC and Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2020; the Forum received payment on June 19, 2020.
On June 22, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tuthillpumps.us> and <tuthillparts.us> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names; on June 23, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <tuthill.us> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and Network Solutions, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Network Solutions, LLC registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s Dispute Resolution Policy (the “Policy”).
On June 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tuthillparts.us, postmaster@tuthillpumps.us, postmaster@tuthill.us. Also on June 29, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 10, 2020.
On August 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
On August 24, 2020, the Parties requested that the Administrative Proceeding for the complaint be stayed for a one-time period of twenty-one (21) days until September 14, 2020, pursuant to USDRP Supp Rule 6(b). The Panel granted the parties’ request for stay. On September 14, 2020, Complainant requested the stay be lifted, which the Panel granted.
On September 18, 2020, Complainant filed an Additional Written Submission.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant develops and manufactures various pumps and other parts for machine assembly products. Complainant has rights in the TUTHILL mark through multiple registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 779,404, registered Nov. 3, 1964; Reg. 1,282,150, registered June 19, 1984). Respondent’s <tuthillparts.us>, <tuthillpumps.us>, and <tuthill.us> domain names are identical or confusingly similar to Complainant’s TUTHILL mark as they incorporate the mark in its entirety and add the descriptive “.us” generic top-level domain (“gTLD”) and/or add a descriptive word related to the industry associated with Complainant’s products.
Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use its mark in them. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect users to its website and falsely imply an affiliation with Complainant. Respondent also maintains an inactive holding at the <tuthillpumps.us> domain name.
Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by redirecting confused internet users seeking Complainant’s website to its own, implying an affiliation with Complainant. Respondent also inactively holds the <tuthillpumps.us> domain name.
B. Respondent
Respondent runs a business marketing and reselling products in Complainant’s industry, including Complainant’s products. Respondent’s <tuthillparts.us> domain name is not identical or confusingly similar to Complainant’s TUTHILL mark, as Complainant does not hold rights in the “TUTHILL PARTS” mark.
Respondent possesses a legitimate right or interest in using the <tuthillparts.us> domain name. Respondent uses it to identify the class of genuine products it resells, and thus does not falsely imply an affiliation with Complainant. Furthermore, Complainant implicitly authorized Respondent to use its mark in the disputed domain names in an agreement reached in 2017.
Respondent did not register or use the disputed domain names in bad faith and does not currently use the disputed domain names in bad faith. As stated above, Respondent uses the disputed domain name to identify the class of genuine products in which it trades. Respondent argues it has never used the disputed domain names to falsely imply an affiliation with Complainant, and that it did not register the domain names for the purposes of selling or renting them, disrupting Complainant’s business, or preventing Complainant from reflecting the mark in a corresponding domain name.
Respondent argues that the length of time that has elapsed since it registered the domain names, combined with Complainant’s original acknowledgement and agreement with Respondent demonstrate that Complainant filed its complaint in bad faith under the doctrine of laches.
C. Additional Submissions
The Additional Submissions largely relate to procedural matters that are now moot. One point from one of the additional submissions is discussed in context below.
As a threshold matter, the Panel must initially determine whether this proceeding is properly directed at multiple domain names or whether they are held by distinct and independent entities. The Panel finds that Complainant has presented evidence sufficient to demonstrate that the disputed domain names are commonly owned or controlled by a single Respondent who is using multiple aliases.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
As a threshold issue prior to reaching the above three-factor test, Respondent suggests that the Complaint is barred for undue delay under the doctrine of laches.
The Panel finds that the doctrine of laches does not apply as a defense in these proceedings. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”)
Complainant claims rights in the TUTHILL mark through multiple registrations with the USPTO. (e.g. Reg. 779,404, registered Nov. 3, 1964; Reg. 1,282,150, registered June 19, 1984). Registration with the USPTO generally demonstrates rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has thus shown rights in the TUTHILL mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tuthillparts.us>, <tuthillpumps.us>, and <tuthill.us> domain names are identical or confusingly similar to Complainant’s TUTHILL mark, as they incorporate the mark in its entirety, adding only the descriptive “.us” gTLD, and/or a descriptive term associated with Complainant’s business. Under Policy ¶ 4(a)(i), neither adding a descriptive word that describes the goods and services associated with a mark nor adding a descriptive gTLD would generally suffice to differentiate a disputed domain name from the mark it incorporates. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Twentieth Century Fox Film Corporation v. Diego Ossa, FA 1602016 (Forum Feb. 26, 2015) (finding confusing similarity “as Complainant has offered its services under the FOX SPORTS mark in New York City for years, the Panel agrees that the affixation of the gTLD “.nyc” to the otherwise incorporated mark only serves to increase confusing similarity.”).
In sum, because all three disputed domain names incorporate Complainant’s TUTHILL mark in its entirety, each appends to the mark the geographically descriptive “.us” gTLD, as well as (in two of the three cases) the words “parts” and “pumps”, which are descriptive words associated with the goods Complainant manufactures and sells, the Panel finds the disputed domain names are identical or confusingly similar under Policy ¶ 4(a)(i).
The Panel find that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues it has rights or legitimate interests in use of the <tuthillparts.us> domain name as a reseller of genuine TUTHILL parts and an implied license to use the mark from Complainant. Past Panels have also found resellers of genuine goods possess a legitimate interest in using a mark to promote and sell the goods, as long as this use does not cause confusion as to who is selling the product, especially where Complainant may have authorized Respondent to do so. See Koninklijke Philips Elecs. N.V. v. Cun Siang Wang, D2000-1778 (WIPO Mar. 15, 2001) (“a trader in genuine branded goods can have a legitimate interest in using a domain name incorporating the brand name for a website promoting and selling the branded goods, provided that the trader does not use the domain name so as to cause confusion”); see also Suspensions, LLC v. The LBC Group, Inc., FA 662305 (Forum May 5, 2006) (denying the complainant relief where the panel was unclear after reviewing the evidence in the record whether or not the complainant authorized the respondent to register a domain name containing its mark). Respondent argues that it uses the domain name <tuthillparts.us> to identify the class of genuine products it resells, rather than falsely imply an affiliation between Complainant and Respondent.
Respondent further contends that Complainant was aware and agreed to let Respondent continue to operate under this domain name, provided Respondent remove certain content from its <tuthill.us> domain name and that Respondent continue to sell genuine parts made by and sourced from Complainant and/or its distributors. Respondent argues that Complainant now is trying to renege on its authorization, after Respondent acceded to this condition to use Complainant’s mark. Evidence suggests there may well have been some degree of assent by Complainant to the Domain Name registrations, thus giving Respondents had legitimate rights. Respondent has also provided disclaimers on its website making clear that the trademarks in question are the property of Complainant and that Respondent is not affiliated with Complainant.
Complainant argues that Respondent’s website leads Internet users to links that provide information about other products not owned by Complainant or possibly in competition with Complainant. In some circumstances, such facts, if proven, could nullify any right that the domain owner might otherwise have to incorporate a complainant’s mark into its domain name. Indeed, Complainant notes in a supplemental submission that the <tuthillparts.us> domain name directs users to a page within Respondent’s website from which other pages can be accessed in which Respondent sells parts of other (presumably competing) manufacturers. This factor brings Respondent perilously close to circumstances in which panels have found that non-authorized use of a mark by a reseller can be prohibited when used to direct internet users to a landing page that advertises, sells, or offers to sell products that compete with those sold by the owner of the mark. The landing page in question here, however, appears to relate solely to Complainant’s products. Nor is Complainant’s case established by its assertion that it “has no way to verify” if the products Respondent sells are genuine. While it is true that the kinds of discovery tools available to parties in U.S. litigation are not available under the Policy, other ways of determining the authenticity of a respondent’s products do still exist; and absent sufficient evidence of inauthenticity, the party bearing the burden of proof (here, the Complainant) has not established otherwise. For purposes of this proceeding, taking at face value Respondent’s representations that the products are genuine and Complainant’s failure to establish (or even contend) otherwise, the Panel must conclude that the preponderance of the evidence suggests that they are genuine.
In the context of this proceeding, moreover, absent the ability to resolve what appears to be a genuine dispute between the parties regarding whether assent to such usage existed as a result of the exchange that occurred during 2017, nor as to whether Respondent’s conduct caused or is likely to have caused any consumer confusion, the Panel finds that Complainant has not at this point met its burden of proof regarding the element of legitimate rights or interests. In so stating, the Panel does not intend to prejudge any determination on this issue that might be made by a court of competent jurisdiction presented with a more detailed factual record.
For the above reasons, the Panel finds Complainant has not met its burden to show that Respondent lacks a legitimate right or interest, in view of Respondent’s use of the disputed domain names in connection with what may well be a bona fide offering of goods or services, under Policy ¶¶ 4(c)(ii) or (iv).
While there is no need to reach the issue of bad faith given the above finding regarding the Legitimate Rights element, the Panel further notes that there is little evidence to support Complainant’s burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Complainant having failed to establish all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tuthillparts.us>, <tuthillpumps.us>, and <tuthill.us> domain names REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: September 22, 2020
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