Butler Manufacturing Company v. Ties.ca
National Online Inc.
Claim Number: FA0204000110808
PARTIES
Complainant
is Butler Manufacturing Company,
Kansas City, MO, USA (“Complainant”) represented by David V. Clark, of Lathrop
& Gage L.C. Respondent is Ties.ca National Online Inc.,
Brampton, ON, Canada (“Respondent”).
The
domain name at issue is <butler.biz>,
registered with Parava Networks, Inc.
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.
P.
Jay Hines 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 24, 2002; the Forum
received a hard copy of the Complaint on April 26, 2002.
On
May 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
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
timely Response was received and determined to be complete on May 16, 2002.
On June 3, 2002, pursuant to STOP Rule 6(b), the Forum
appointed P. Jay Hines as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant claims ownership of numerous
trademark and service mark registrations, in the United States and abroad, for
the mark BUTLER. Complainant
identifies, in particular, U.S. Registration No. 560,737 for the word mark
BUTLER in connection with metal bins and tanks for the storage of grain,
ventilated metal tanks for drying of grain, metal silos and corn cribs,
stationary and portable metal tanks for liquids, metal barrels and drums. Registration No. 560,737 registered on July
1, 1952, claiming use in commerce since May 1, 1930. Complainant also identified U.S. Registration No. 528,706 for the
word mark BUTLER in connection with fabricated metal buildings, hangars, header
houses, walkways, and parts thereof, waterwell casings, and preformed metal
panels for buildings and signs.
Registration No. 528,706 registered on August 8, 1950 again with a claim
of use in commerce as of May 1, 1930.
Complainant also provides printouts from the U.S. Patent and Trademark
Office database regarding 15 additional active U.S. registrations for
trademarks and service marks comprised, in whole or in part, the term “BUTLER”
for goods and services related to the building construction industry.
Complainant asserts that it
conducted an investigation of Respondent and found no U.S. or Canadian
trademark or service mark filings, no information indicating that Respondent
has begun to use or made demonstrable preparations to use the <butler.biz>
domain name, and no evidence indicating that Respondent has ever been commonly
known by the name BUTLER. For these
reasons, Complainant asserts that Respondent must be considered as having no
rights or legitimate interest in or to the <butler.biz> domain
name.
With respect to bad faith,
Complainant alleges that Respondent had to be aware of Complainant’s well-known
BUTLER mark in connection with fabricated metal buildings, silos, grain bins,
tanks and other metal structures at the time Respondent sought to register the
<butler.biz> domain name.
Complainant again points to the absence of any evidence that Respondent
has used the <butler.biz> domain name in connection with the bona
fide offering of goods or services or is in any way associated with the domain
name or any “butler” derivative name.
Complainant relies on Fiat Auto
S.p.A. v. Search Hound, DBIZ2001-00023 (WIPO Feb. 12, 2002).
B.
Respondent
Respondent claims that its intended
use of the <butler.biz> domain name does not in any way infringe
upon the Complainant’s registered marks.
Respondent’s intended use is in connection with “ties, men’s apparel,
fashion, formal wear, event planning, event organizing, party planning, party
organizing, travel planning, social etiquette, and formal entertaining.” Respondent contends that the word “butler”
is a generic dictionary term meaning “the head servant in a household who is
usually in charge of food service, the care of silverware, and the deportment
of the other servants.” Respondent
identifies the typical duties of a butler, from the web site of “The
International Guild of Professional Butlers,” as “assisting with formal
affairs, understanding social etiquette, formal service, planning, and
organizing parties and events in the home, serving as a personal valet,
assisting the household, and assisting the gentlemen of the house.” Respondent alleges that its proposed use
will be in a field directly associated with the commonly understood meaning of
the word “butler.” Accordingly,
Respondent has not sought to register a trademark or a service mark for the
word “BUTLER” on the belief that the same would be rejected as being clearly
descriptive.
Respondent asserts that
Complainant’s registrations and use of the term “butler” in connection with
fabricated metal buildings and other goods does not afford exclusive use of the
generic term for unrelated goods and services.
With respect to legitimate rights
and interests, Respondent claims that long before any notice of the dispute it
made significant investment in connection with a bona fide offering of goods
and services in a targeted field related to the domain name. Respondent was federally incorporated in
Canada on January 27, 2000, provincially incorporated on June 27, 2000, applied
for and obtained Canada Customs and Revenue business and goods and services tax
registration numbers, and applied for and registered <butler.biz>
as a business name with the Ontario government for the sale of goods and
services related to “online retailer of fashion apparel; clothing, men’s ties,
men’s fashion, formal wear, event planning.”
Respondent provides documentation for these activities. The registration of the <BUTLER.BIZ>
domain name as an assumed name in Ontario occurred on May 13, 2002, after the
notification of the complaint and commencement of the administrative
proceeding, according to Respondent, on the very first business day possible
after issuance of the domain name on March 27, 2002 due to a strike by the Ontario
Public Service Employee’s Union, which began on March 12, 2002. In this regard, Respondent provides a
“notice of strike” posting on the Ontario Government web site.
Respondent
also points to its letterhead which bears a logo of “two penguins wearing ties”
as evoking a connection to, and demonstrating the planned tie-in, to the image
of a “butler.”
Respondent asserts that it
registered the <butler.biz> domain name in good faith as part of
its overall marketing plan. Respondent
has not offered the domain name for sale to any party. Respondent first became aware of the
Complainant when it received the notification of Complainant’s I.P. claim. The parties are not competitors and
Respondent registered the domain name for its own use, not to prevent
Complainant’s use. Respondent asserts
that there is no possibility of confusion due to the complete dissimilarity of
the respective goods and services.
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.
The Panel finds that Complainant has rights in a mark
that it is identical to the subject domain name.
While it is somewhat difficult to bridge
the gap between Respondent’s use of the tradename Ties.Ca National Online Inc.
in connection with men’s fashion and event planning and its proposed use of the
domain name <butler.biz>, the Panel finds a legitimate tie-in with
the dictionary term “butler” and sufficient circumstantial evidence of
activities associated therewith that began prior to notification of the
dispute. The term “butler” is a generic
term. However, it is not generic for
the activities of either the Complainant or the Respondent. The Panel does not believe that the term
“butler” is immediately descriptive of the identified activities of the
Respondent. Nonetheless, it is a
dictionary term that is suggestive of some of those goods and services. As many of those activities were underway
before notification of the dispute and, as pointed out in the case relied upon
by the Complainant, in a STOP proceeding there often will not have been time
for Respondent to use the domain name in issue, the Panel believes that there
has been a sufficient showing of demonstrable preparation to use the domain
name for a bona fide offering of goods or services under STOP Policy
4(c)(ii). The Fiat Auto case was a default situation where there was, of course,
no evidence of any preparations to use the domain name. The situation here is likewise
distinguishable from Twentieth Century
Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27. 2002),
where the Respondent made “unsupported, self-serving allegations” regarding her
legitimate interests without any evidentiary support.
The record supports the conclusion that
Respondent adopted and made preparations to use the domain name <butler.biz>
in connection with its online retail sale of men’s clothing. While Respondent’s evidence with respect to
social etiquette and event planning, which arguably are more in line with the
ordinary dictionary meaning of the term “butler,” may be weak, there is a
plausible connection between the image of a neat and tidy “butler” to the sale
of men’s clothing. The situation is
more in line with Zero Int’l Holding GmbH
v. Beyonet Services, D2000-0161 (WIPO May 12, 2000), where the Respondent
registered the domain name <zero.com> because it was short, simple and
easy to remember, had not registered any other domain names, and had never
heard of the Complainant at the time of registration. This is not a case in which the Respondent selected a domain name
incorporating a famous or distinctive mark that it should have known it was not
entitled to use. See CRS Tech. v. Condenet, Inc., FA93547
(Nat. Arb. Forum Mar. 28, 2000) where the Respondent’s domain name
<concierge.com> was used in relation to providing online travel
services. The domain name is meant to
communicate some aspect of the goods or services provided, i.e., the kind of
assistance one would expect from a “butler.”
It is the positive image associated with the word that attracted
Respondent to the domain name, not a desire to cause confusion with
Complainant’s trademark rights. In
these circumstances, the first to register a domain name containing a
suggestive dictionary term should prevail absent bad faith and a lack of
legitimate interest.
As the Panel finds that Respondent has
rights or legitimate interests, it is not necessary to reach the issue of bad
faith. However, despite the notoriety
of Complainant’s name and mark in its field, Complainant has not established
any of the enumerated factors of bad faith on the part of this Respondent.
As Respondent has a legitimate
interests in the domain name <butler.biz>, Complainant’s Complaint
is dismissed and the Panel determines that subsequent challenges, as
against the Respondent, under the STOP policy, shall not be permitted
against this domain name.
P. Jay Hines, Panelist
Dated: June 13, 2002
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