Jamco Trailers, a Division of MacLellan Welding Ltd. v. Jim O'Laughlin
Claim Number: FA0204000110768
The Complainant is Jamco Trailers, a Division of MacLellan Welding Ltd., Brucefield, ON (“Complainant”) represented by Daryl W. Schnurr. The Respondent is Jim O'Laughlin, Kansas City, MO (“Respondent”) represented by Stephen G. Sanders, of Stinson, Morrison, Heck LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jamcotrailers.com>, registered with Register.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.
Edmund P. Karem is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 22, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.
On April 22, 2002, Register.com confirmed by e-mail to the Forum that the domain name <jamcotrailers.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on May 10, 2002.
On May 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has continuously manufactured horse, livestock and cargo trailers under the mark JAMCO. This manufacturing operation has gone on in Canada since at least June of 1986 and the company has used the mark JAMCO in connection with the sale of the same goods in the United States as early as January 1994. Complainant is the registered owner of the mark JAMCO in the United States and Canada, having obtained Canadian registration on July 30, 1999 and USPTO registration on May 2, 2000.
Complainant notes that comparing the domain name with the registered trademarks reveals that JAMCO is common to both and the only distinctive word in the domain name is the generic word TRAILERS, following JAMCO. Further Complainant alleges that the word JamcoTrailers in the domain name specifically and wrongfully refers to trailers manufactured by it.
Complainant Jamco indicates that the Respondent, O’Laughlin, has refused to cancel or transfer the domain name to the Complainant despite numerous written requests to do so. Complainant states Respondent continues to use the domain name and by so doing interferes with Complainant’s business and infringes upon Complainant’s registered trademarks.
Complainant after requesting transfer offered the Respondent $1,000 U.S. dollars to cease using the mark Jamco or Jamco Trailers and assign the name, which offer was rejected by Respondent.
Complainant argues that the Respondent uses the domain name through a corporation named Trailers 4 Sale, LLC (referred to in Complainant’s complaint as T4S). A distributor of the Complainant, Trailcorp, Inc., informed the Respondent in October of 1999 that he could have a dealership to sell the Complainant’s trailers. Complainant asserts it has no ownership interest in Trailcorp, Inc. and the fact that T4S was a dealer did not give the Respondent or T4S any right to register the domain name. When Respondent registered the domain name on November 2, 1999 Respondent should have known he had no right to register the Complainant’s business name as a domain name.
Complainant alleges that the T4S dealership was terminated August 31, 2000 but the T4S web site still uses the name Jamco and still claims T4S is an authorized dealer of Jamco Trailers. It is alleged that the picture on the web site is an actual picture of a trailer manufactured by Complainant. Complainant argues that the use of the domain name by the Respondent not only infringes the trademark registrations but wrongly misappropriates Complainant’s business name and falsely and unfairly misleads the public into believing T4S is an authorized dealer of Complainant.
The circumstances set out above lead Complainant to believe that Respondent is intentionally trading on its goodwill and making unfair use of the domain name for commercial purposes.
Following the termination of the T4S dealership on August 31, 2000 Complainant received information from its dealers that T4S and/or the Respondent had issued extremely low quotes on Jamco Trailers to potential buyers of the Complainant’s trailers, even when the potential customers were located too far away from the business address of T4S to be properly served by that company. It is alleged that these potential customers are attracted to the Respondent’s web site by the domain name. Lastly Complainant alleges it has lost sales when customers, quoted low prices by T4S, demand the same low price from the Complainant or an authorized dealer of the Complainant. When the authorized dealers are unable to match the low quoted price the customer looks elsewhere.
Respondent admits the domain name <jamcotrailers.com> refers to the name Jamco and admits that Jamco is the name used by MacLellan Welding, Ltd. Respondent however denies that such use causes confusion in the marketplace and asserts it uses the name of right.
Respondent licenses the domain name to his wholly owned business Trailers 4 Sale, LLC, a Missouri Ltd. Liability Corporation which uses the name in the ordinary course of business.
Respondent (Trailers 4 Sale) became an authorized dealer of Jamco through Trailcorp of Ontario, Canada two and a half years ago. Respondent contends that the attempt by Complainant to revoke its dealership was a violation of Missouri statutes. Respondent acknowledges that issue is not material to the resolution of this dispute. It contends, however, that at or near the inception of becoming an authorized dealer of Jamco Trailers it registered the domain name and shortly thereafter posted its web site and advertised that it was an authorized dealer of Jamco Trailers.
Respondent asserts that when it became an authorized dealer both Complainant and its authorized distributors knew Respondent had registered the domain name <jamcotrailers.com>.
Respondent further alleges that due to this dispute its web site is currently shut down by its web host.
Respondent asserts the domain name is used in connection with bona fide offering of goods, that it accurately identifies Respondent as offering Jamco Trailers for sale and that Complainant approved of its registration and use of the domain name. Respondent asserts it registered the domain name in good faith contemporaneous to becoming an authorized dealer of Jamco Trailers and properly began marketing Jamco Trailers with the use of the domain name.
Respondent asserts it carried out these commercial activities with Complainant’s knowledge and consent for over six months before Complainant offered the first objection.
Respondent states that it did not register or acquire the domain name for the purpose of selling, renting or otherwise transferring it to the Complainant. Rather it clearly indicated it does not wish to sell the domain name but rather to continue using it. Respondent states that even if Complainant has properly revoked the dealership of Respondent it is Respondent’s intention to continue selling horse trailers, to sell Jamco Trailers it currently has in stock, to sell previously owned Jamco Trailers and that it will not claim to be an authorized dealer of Jamco Trailers in the course of these transactions.
Respondent asserts it did not register the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, noting that <jamcotrailers.com> is the only domain name registered by it. Complainant has been in business for ten years and had ample opportunity to register various domain names but has not registered the domain name <jamco.com>. Respondent asserts some other United States entity registered that domain name more than seven years after Complainant began selling trailers in the United States.
Respondent points out its business practices and marketing under the name <jamcotrailers.com> is substantially similar to the common practice of dealers using brand names in their domain names and trade names such as <chevycars.com> and <fordcars.com>, both of which domain names have been registered and/or used by dealers of the respective automobile manufacturers.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Having considered the Complaint and the Response and being otherwise sufficiently advised the Panel makes the following findings with regard to elements of paragraph 4a of the policy:
Identical and/or Confusingly Similar
The Panel finds that the Complainant’s marks are identical or confusingly similar to the domain name <jamcotrailers.com>. It completely incorporates the JAMCO mark and merely adds the generic term “trailers”, which relates to Complainant’s business. See Space Imaging, LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business. See also Brown v. Bigelow, Inc. v. Rodela, FA 96466 (Nat.Arb. Forum Mar. 5, 2001) which found that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of casino, a generic word describing the type of business in which Complainant is engaged does not take the disputed domain name out of the realm of confusing similar.
Complainant is the registered owner of the mark JAMCO in the United States and Canada having used the mark in Canada since 1986 for its trailer manufacturing business. Since 1994 Complainant has used the JAMCO mark in the United States in association with the same goods.
Rights or Legitimate Interests
Complainant did not authorize Respondent to use the JAMCO mark. Respondent is no longer an authorized dealer of Complainant’s products. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name. See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), finding no right or legitimate interests where Respondent is not a licensee of Complainant, Complainant had prior rights in the domain name preceding Respondent’s registration and Respondent is not commonly known by the domain name in question.
Respondent’s use of the disputed name is not a bona fide offering of goods or services because it causes the public to believe Respondent is an authorized dealer of Complainant’s products. See Caterpillar, Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) which found that Respondent did not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which did not exist, with Complainant’s mark.
Registration and Use in Bad Faith
Respondent attracts customers to its web site located at the disputed domain name in order to issue extremely low quotes on Jamco trailers when Respondent is not currently an authorized dealer. Such a practice disrupts Complainant’s authorized dealers because they are unable to meet the low quotes. Complainant loses sales when consumers look elsewhere. This is a disruption of Complainant’s business pursuant to Policy 4(b)(iii), while at the same time confusing customers and attracting them to Respondent’s web site for commercial gain pursuant to Policy 4(b)(iv). This finding is supported by Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat.Arb. Forum Dec. 2, 2000) concluding the domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area. See also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat.Arb. Forum Oct. 11, 2000) which found Respondent’s registration of the domain name <statefarmnews.com> was in bad faith because Respondent intended to use Complainant’s marks to attract the public to a web site without permission from Complainant.
Respondent’s use of the disputed domain name has a likelihood of confusing customers who are in the market for Complainant’s products. See Reuters, Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) that case found bad faith where the Respondent attracted users to a web site sponsored by the Respondent and created confusion with the Complainant’s mark as to the source of sponsorship or affiliation of the web site.
For the reasons set forth above it is the decision of the Panel that the domain name <jamcotrailers.com> be transferred to the Complainant.
P. Karem, Panelist
Dated: June 5, 2002
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