Greene Engineers v. tubeheads.com
Claim Number: FA0204000109727
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.
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.
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).
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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