Undersea Breathing Systems,
Inc. v. Fill Express, LLC
Claim Number: FA0711001108827
PARTIES
Complainant is Undersea Breathing Systems, Inc. (“Complainant”), represented by Allison
R. Imber, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nitroxpress.com> (the “Domain
Name”), registered with Godaddy.com, Inc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On November 29, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of December 19, 2007 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@nitroxpress.com by e-mail.
A timely Response was received and determined to be complete on
An additional submission was
received from Complainant dated
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
- it began promoting breathable gas services starting in 2005 under the NITROXPRESS mark;
- As of October 2007, it has a federal trademark registration pending for a stylized version of the mark;
- the domain name is identical or confusingly similar to Complainant’s NITROXPRESS mark;
- Respondent has no legitimate rights or interests in the name in that it is not Respondent’s personal name, Respondent is not known by that name, and Respondent does not engage in any legitimate business under the Domain Name;
- Respondent’s registration and use of the Domain Name have been in bad faith, including in that Respondent has used the Domain Name to redirect web traffic to one of Complainant’s competitors.
B. Respondent
Respondent contends that:
- the Domain Name includes two generic words (“nitrox” and “press”) and therefore is not a protectable mark;
- the Domain Name is sufficiently similar to the Respondent’s own name and service mark, “Fill Express: Nitrox and Technical Diving Specialists,” such that Respondent has legitimate rights and interests in the Domain Name;
- Respondent registered the Domain Name after Complainant allowed the Domain Name to lapse, thus resulting in the Domain Name being placed in an After Market Auction on GoDaddy.com, wherein Respondent properly purchased it as the high bidder;
- Respondent has used the Domain Name to provide the public with information about diving services; it has also included a link to its own services.
C. Additional Submissions
Complainant filed an additional submission, primarily to assert that
its pending trademark application conferred on it rights in the mark and that
it possesses common law rights in the mark as a result of its continuous use of
the mark in commerce since 2005.
Complainant also charges Respondent with “deception” with regard to its
ownership of the Domain Name.
Respondent filed an additional submission, primarily to object to what
it contends is the “libelous nature” of the Complainant’s Additional
Submission. It also reasserted that it
was using the Domain Name for a legitimate business purpose.
Each party has raised several other matters pertaining to disputes
between the parties that do not form the basis for this decision and will
accordingly be omitted from this discussion.
FINDINGS
The Panel finds that Complainant has failed to meet its burden of proof to establish the right to a domain name transfer under the Policy. Accordingly, the relief requested in the Complaint is denied.
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.
Complainant claims rights in the mark NITROXPRESS through common-law use since 2005 and a pending application for federal registration.
The extent of
Complainant’s rights or interests in this mark is unclear. The fact that Complainant set up “Nitrox
Express, Inc.” is not dispositive, since “simply operating under a business
name does not, per se, constitute
secondary source identification sufficient to warrant a finding of common law
rights.” See Weatherford Int’l v. Wells,
FA 153626 (Nat. Arb. Forum
The threshold question before the Panel is thus whether Complainant has established common-law rights to the NITROXPRESS mark. Complainant claims to have made commercial use of the mark since 2005. However, after Respondent’s July 2005 letter claiming that Complainant’s use of NITROXPRESS was confusingly similar to Respondent’s usage of “Fill Express: Nitrox and Technical Diving Specialists,” Complainant apparently ceased updating the <nitroxpress.com> website and offers little if any evidence that it continued to advertise or promote services using the NITROXPRESS mark.
Nevertheless, common-law usage of a trademark is sufficient to confer trademark rights, and once a mark is adopted commercially, abandonment of that mark is not lightly to be found. Accordingly, the Panel finds for purposes of this decision that Complainant has established at least some trademark rights in the mark NITROXPRESS.
The Panel further rejects Respondent’s suggestion that the mark is generic merely because it is composed of two allegedly generic terms “nitrox” and “express.” Even assuming these terms are generic separately, no showing has been made that their combination is itself generic to describe the products or services at issue here. Non-generic marks may be, and commonly are, made up of generic components. Moreover, the term NITROXPRESS is not identical to these two words but rather combines them in a way that is at least arguably original and suggestive (and therefore potentially protectable under trademark law).
Assuming therefore
that Complainant owns protectable interests in the mark, the question is
whether the Domain Name is identical or confusingly similar to that mark. The Panel finds that the Domain Name is
identical to the mark, since the addition of a gTLD is irrelevant under the
Policy. See
Under Paragraph 4(a)(ii), the Complainant bears the burden of making a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The Panel finds that the Complainant has not done so.
The parties differ markedly as to the basic facts surrounding Respondent’s registration of the Domain Name. Complainant alleges that its employee originally registered the Domain Name but then, perhaps out of malicious intent after termination from the company, transferred it to Respondent. Complainant offers no proof of these allegations other than surmise and belief. Respondent produces a screenshot showcasing its winning auction bid for the domain name, which lends some credence to its assertion that the Domain Name expired and that Respondent then purchased it at auction. Its explanation does not entirely eradicate all doubt as to whether the individual who originally registered the Domain Name for Complainant was involved in Respondent’s subsequent acquisition of it. Again, however, proof on the point is lacking.
The Domain Name <nitroxpress.com> appears to be composed of a combination of “nitrox” and “express.” Each of these terms is part of Respondent’s service name, “Fill Express: Nitrox and Technical Diving Specialists.” Thus it seems plausible on its face that Respondent would wish to use, and would have a legitimate interest in using, the Domain Name. Respondent appears, in other words, to be using the Domain Name in connection with a bona fide offering of goods and services by advertising nitrox diving equipment.
Complainant claims that its former employee sold the Domain Name to Respondent. But Complainant provides no evidence to support this contention. Respondent’s evidence of its winning auction bid supports its explanation of what happened, which is thus the more plausible version of the facts.
On all the evidence before the Panel, a reasonable interpretation of what may have occurred is that Respondent, seeing that Complainant had ceased advertising and maintaining its website after Respondent’s July 2005 letter, waited for the Domain Name to expire, assuming that Complainant had abandoned its intentions to use the NITROXPRESS mark. Once the Domain Name expired, Respondent purchased it at auction and put up its own informational content about diving, including a link promoting its own business. Doing so could be construed as a bona fide use, as the Respondent notes that it owns several “express” domain names for this very purpose, including <nitroxexpress.com>, <fillexpress.com>, <direxpress.com>, <diveriteexpress.com>, <rebreatherexpress.com>, <scubatankexpress.com>, and <vr3express.com>. Its use of domain names consisting of scuba-related terms together with the word ‘express’ is established and, at least so far as the evidence in this proceeding indicates, legitimate. While evidence that could be discovered through trademark litigation might prove otherwise, the Policy does not provide for discovery. It is a simpler and often more expedient mechanism for the resolution of certain disputes – namely, those in which the Complainant can establish each of the three criteria required by the Policy. Here, however, Complainant has not done so.
The Panel finds no evidence of registration
in bad faith, for many of the same reasons discussed above. Complainant’s accusations of sale or transfer
by its former employee to Respondent are unsupported by the evidence and
contradicted by Respondent’s evidence, including a screenshot of its winning
the Domain Name at auction after Complainant had apparently allowed the Domain Name
to expire. While Complainant claims that
it paid for the renewal, it offers no evidence of having done so; and the
expiration of the Domain Name and its auctioning off to another entity provides
evidence that Complainant did not in fact secure the renewal of its Domain Name
through proper channels.
The Panel further finds no evidence of use in
bad faith, as the Domain Name is used to describe products commonly sold in the
diving industry (“nitrox”) and used in the Respondent’s own name
(“express”). Respondent has plausibly
explained why it believes it had rights in the Domain Name, and Complainant has
not met its burden of proof to establish otherwise.
DECISION
For the above
reasons, it is Ordered that the relief requested in
the Complaint shall be and is hereby DENIED.
Michael Albert, Panelist
Dated: December 28, 2007
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