Greene Engineers v. tubeheads.com
Claim Number: FA0204000109727
PARTIES
Complainant
is Greene Engineers, Campbell, CA,
USA (“Complainant”) represented by Christopher
Greene. Respondent is tubeheads.com, Ruckersville, VA, USA
(“Respondent”) represented by Jonathan Hall.
The
domain name at issue is <greene.biz>,
registered with Namescout.com.
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.
James A. Crary as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National Arbitration
Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 16, 2002; the Forum
received a hard copy of the Complaint on April 18, 2002.
On
April 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2002
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with paragraph 2(a) of the Rules for the Start-up
Trademark Opposition Policy (the “STOP Rules”).
A
Response was received in an untimely manner.
The Response was due on May 8, 2002 and it was received on May 9, 2002.
On May 30, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Crary as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
Complainant asserted it was the holder of the trademark or servicemark “GREENE”
which was used by Complainant, its customers, and others in the engineering
industry to refer to “Greene Engineers,” Complainant’s corporate name.
Founded
as a consulting engineering firm in 1954, the firm was incorporated in the
State of California in 1968 as “George A. Greene Co.”
Complainant
had been using the name “Greene” since 1956 and it was asserted that
Complainant was generally known within the engineering industry by the single
name “Greene” for decades.
The
corporate name was changed to Greene Engineers in 1990.
Complainant
trades worldwide as “Greene Engineers” and “Greene.” Complainant asserted that its service mark “Greene” is identical
to the domain name registered by Respondent.
Respondent
did not have the name “Greene” in its name nor did the name appear in any of
the information pertaining to its registration.
<tubeshead.com>
was an inactive Web site. An Internet
search yielded one match that indicated <tubesheads.com> would continue
the business of Hall Electronics. There
was a link to <halls.com>,
the Hall Electronics Web site. A review
of that Web site contained no description of its business which referenced
“Greene” in any form as a trade or servicemark or otherwise. Complainant therefore concluded that
Respondent was neither the owner of a trade or servicemark identical to the domain
name nor was it commonly known by the domain name.
Complainant
asserted that the .biz top-level
domain was established exclusively for businesses which legitimately conduct
business under the trademarks the business held. Since Respondent had demonstrated no business use of the domain
name, it therefore had no right or legitimate interest in respect to the domain
name <greene.biz>
and should be considered as having registered or used the domain name in bad
faith.
Complainant
requested that the Panel transfer the domain name to it.
B.
Respondent
The
Response was transmitted by fax on May 9, 2002, one day beyond the 20-day
deadline STOP Rule 5(a). Respondent
apparently believed he had 30 days to respond.
Respondent also indicated that the link to the NeuLevel site on the
Forum’s original e-mail did not operate.
The Response was submitted as quickly as possible once Respondent had
the correct e-mail address available.
Respondent
asserted that it had intended to use the <greene.biz> name
to build a business services site. He
is a resident of Greene County, Virginia.
Greene County was founded in 1838, being named after a famous
Revolutionary War hero, Nathaniel Greene.
Greene County was said to be one of the fastest growing counties in
Virginia. Respondent asserted no other
connection with the name “Greene.”
Respondent
owned the domain <tubeshead.com>, a domain he was planning to develop as
well. Although it was asserted that
Respondent should have applied for <greene.biz> in his own name, no dishonesty was intended
by using the business name <tubeshead.com>.
“Greene
Engineers,” the corporate name, was available in a variety of top-level domains
including dot com and dot biz. Other
than having the surname Greene, Respondent did not believe there was any
evidence that Complainant actually had a trademark on Greene or even Greene
Engineers.
1. Complainant does business under the
corporate name Greene Engineers, having originally been incorporated under the
name George A. Greene Co.
2. The name Greene is a common surname.
3. The evidence does not establish that the
name Greene has acquired secondary meaning sufficient to establish trademark
rights in the name Greene or Greene Engineers.
4. Respondent is a resident of Greene
County, Virginia. Respondent registered
<greene.biz> with the purpose of establishing a
business and services site for Greene County where he resides.
Although the Response was received by the Forum one day
beyond the 20-day deadline, the Panel felt it appropriate to consider the
untimely response. Respondent’s
assertion concerning difficulty linking to NeuLevel because the link did not
operate was the kind of exceptional circumstance contemplated by STOP Rule
14(a). This interpretation is felt to
serve the interests of administrative due process which favors the
determination and issues on their merits as opposed to technicalities.
While the Panel did consider the Response, the Response
did not effect the decision, since, as noted below, Complainant failed to
establish trademark or service mark rights, the threshold issue.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(2) the 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.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Clearly, the term Greene is a surname commonly found in
telephone books near the variant Green which is a surname and a descriptive
word used in many contexts. The Lanham Act prohibits registration of a
trademark that “is primarily merely a surname” on the Principal Register. 15 U.S.C. §1052(e)(3).
Only
a surname which has acquired secondary meaning is entitled to trademark
protections and protection under the STOP Policy.
“Personal
names (surnames and first names) have been placed by the common law into that
category of non-inherently distinctive terms which require proof of secondary
meaning for protection. Thus, since
personal names are not regarded as being inherently distinctive marks, they can
be protected as trademarks only upon proof that through usage, they have
acquired distinctiveness and secondary meaning.” McCarthy on Trademarks and
Unfair Competition § 13:2 (4th ed. 1996 and updated).
The
fact that Complainant operates an engineering corporation both in the United
States and abroad and trades on a worldwide basis as “Greene Engineers” and
“Greene” in no way establishes distinctiveness or secondary meaning such as
would warrant protection as a common law trademark. Complainant provided no supporting evidence to support its
assertion such as media accounts, surveys, evidence of advertising or other
materials that might establish at least a prima
facie case in support of its assertion.
See Lundy v. Diamond
D2001-1327 (WIPO Feb. 12, 2002).
The
Panel has concluded that the Complainant has failed to establish common law
service mark rights, and therefore the Complainant has failed to establish the
first element required by paragraph 4(a) of the STOP Policy. The Policy requires that the Complainant
establish all three elements set forth in paragraph 4(a) of the Policy in order
to succeed on a claim. Therefore, the
Complainant has failed to establish an abusive domain name registration.
Applying
principles of administrative economy, it is unnecessary to take up the issues
of whether Respondent established rights as legitimate interests or whether
there was registration or use in bad faith. See
Lundy v. Diamond D2001-1327 (WIPO Feb. 12, 2002).
DECISION
The Panel concludes that the Complainant
has failed to establish rights in a service mark and therefore it is not
entitled to relief under STOP Policy 4(i).
The Panel directs that the Complaint be dismissed.
James A. Crary, Panelist
Dated: June 14, 2002
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