A. O. Smith Corporation v. Rheem Solar
Centre
Claim Number: FA0205000114389
Complainant
is A. O. Smith Corporation,
Milwaukee, WI, USA (“Complainant”) represented by David R. Price, of Michael
Best & Friedrich LLP.
Respondent is Rheem Solar Centre,
New South Wales, AUSTRALIA (“Respondent”).
The
domain name at issue is <hotwater.biz>,
registered with Melbourne IT.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 May 21, 2002; the Forum
received a hard copy of the Complaint on May 28, 2002.
On
June 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
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”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted to
the parties a Notification of Respondent Default.
On
July 18, 2002, Respondent submitted a letter to the Forum by e-mail, stating
that it did not intend to contest Complainant’s claim. Respondent’s submission made no substantive
arguments and did not comply with the STOP Rules for Responses. Accordingly, it will not be treated as a
substantive Response.
On July 22, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any substantive Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <hotwater.biz> domain
name is identical to Complainant’s HOTWATER common law mark.
2. Respondent registered the infringing
domain name to impede Complainant’s ability to compete; thus, Respondent does
not have rights or legitimate interests in the <hotwater.biz> domain
name.
3. Respondent opportunistically registered
the <hotwater.biz> domain name in bad faith despite having
knowledge of Complainant’s rights in the HOTWATER mark.
B. Respondent did not submit a formal
Response in this proceeding.
Complainant has used the HOTWATER mark
for the past six years to sell its residential and commercial water heaters.
Complainant adopted the HOTWATER mark and corresponding <hotwater.com> domain
name as an identifier for its products and its business, and has used the mark
and domain name in interstate commerce since at least January 1, 1996.
Complainant
asserts that the HOTWATER mark has acquired secondary meaning as a
source-indicator because of its longstanding use of the mark in connection with
its goods and website. However,
Complainant fails to offer evidence supporting this assertion. A brief
investigation of Complainant’s <hotwater.com> website reveals that
Complainant makes no use of the HOTWATER mark, and consistently refers to
itself as “A.O. Smith.”
Respondent registered <hotwater.biz>
on March 27, 2002 through NeuLevel’s STOP registration procedure. The WHOIS
information for the subject domain name lists the Registrant as “Rheem Solar
Centre.” Complainant provides evidence that Respondent competes in
Complainant’s industry, offering identical services and water heating
products.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
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 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.
Complainant
has no registered trademark or service mark in the term HOTWATER. However, the ICANN dispute resolution policy
is broad in scope in that the reference to a trademark or service mark in which
the Complainant has rights means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice to support a domain name complaint under the policy. See generally McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy
does not require that a trademark be registered by a governmental authority for
such rights to exist).
Complainant
asserts that it has established secondary meaning pertaining to the use of the
HOTWATER mark, as it is “synonymous with Complainant and its services.”
However, Complainant’s Submission is deficient in this respect because there is
little evidence supporting this assertion. A brief investigation of
Complainant’s <hotwater.com> website reveals that Complainant makes no
use of the HOTWATER mark, and consistently refers to itself as “A.O. Smith.”
Complainant
cannot establish common law rights in a generic unregistered word, and has
failed in establishing secondary meaning. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis"); see
also Rollerblade, Inc. v. CBNO
and Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if
established, will defeat a claim of trademark rights, even in a mark which is
the subject of an incontestable registration”); see also PetWarehouse v. Pets.Com, Inc.,
D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and
"warehouse" are generic terms and therefore not subject to trademark
protection; although it is possible for two generic terms taken together to
achieve trademark or service mark status by achieving a sufficient level of
secondary meaning in the relevant community, the burden is on the party making
a claim to show distinctiveness or secondary meaning); see also SOCCERPLEX,
INC. v. NBA Inc., FA 94361 (Nat.
Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it
should be granted exclusive use of the domain name <soccerzone.com>, as
it contains two generic terms and is not exclusively associated with its
business); see also Coming
Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May
11, 2000) (finding Respondent had the right to register the subject domain name
<comingattractions.com> based upon the generic usage of the term
"coming attractions").
Complainant
has failed in establishing its common law rights in the HOTWATER mark because
it lacks strong customer identification of the mark as denoting
Complainant. See Lowestfare.com LLA v. US Tours & Travel,
Inc., AF-0284 (eResolution Sept. 9, 2000)
(finding that marks classified as descriptive cannot be protected unless
secondary meaning is proven, and to establish secondary meaning the Complainant
must show that the public identifies the source of the product rather than the
product itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608
(Nat. Arb. Forum Dec. 11, 2001) (finding that the Complainant failed to prove
trademark rights at common law because it did not prove the CYBERIMPRINTS.COM
mark was used to identify the source or sponsorship of goods or services or
that there was strong customer identification of the mark as indicating the
source of such goods or services).
Complainant fails in establishing a prima facie
case in support of the transfer of the domain name. See Gassan
Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (denying claim despite
Respondent’s lack of evidence because Complainant failed to carry its burden of
proof). Complainant has failed to
provide evidence that the HOTWATER mark has acquired secondary meaning denoting
Complainant and its services.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.
As the Panel has determined that
Complainant has no rights in respect to the mark HOTWATER and there are no
subsequent IP Claimants, it is unnecessary for the Panel to address the second
issue of Respondent’s rights or legitimate interests or the third issue of bad
faith.
The Complaint is DISMISSED.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 31, 2002
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