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.
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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