Jamco
Trailers, a Division of MacLellan Welding Ltd. v. Jim O'Laughlin
Claim
Number: FA0204000110768
PARTIES
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.
PANEL
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.
PROCEDURAL
HISTORY
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 postmaster@jamcotrailers.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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. 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.
B. Respondent
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.
DISCUSSION
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.
Edmund
P. Karem, Panelist
Dated: June 5, 2002
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