Seaway Bolt & Specials Corp. v. Digital Income Inc.
Claim Number: FA0206000114672
Complainant is Seaway Bolt & Specials Corp., Columbia Station, OH, USA (“Complainant”). Respondent is Digital Income Inc., Penticton, BC, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seaway.com>, registered with Tucows.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 21, 2002; the Forum received a hard copy of the Complaint on June 28, 2002.
On June 24, 2002, Tucows confirmed by e-mail to the Forum that the domain name <seaway.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 July 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 17, 2002.
On 24 July, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant submits as follows:
Seaway Bolt & Specials Corp has done business as Seaway since 1957 as a specialist manufacturer of pipes, drain plugs and special fasteners. The Complainant is known by and is distinguished from all others by the trade name “Seaway”. The trade name “Seaway” is the abbreviation of its corporate name and this abbreviation has been in continual use since 1957.
Thomas Gibson of the Respondent registered the domain name <seaway.com> with the sole intention of selling or leasing it for a profit. The Respondent sent the Complainant a lease agreement stating that the Respondent, while retaining ownership of the domain name would allow the Complainant to use it for $350 per month. The Respondent also offered to sell the domain name outright for $20,000 US. These amounts are clearly in excess of the Respondent’s out of pocket costs directly related to the domain name.
<Seaway.com> has never been used by Thomas Gibson of the Respondent in connection with a bona fide offering of goods or services.
There is no evidence of Thomas Gibson of the Respondent ever having been known as <seaway.com> either as an individual, business or organization.
Thomas Gibson of the Respondent is not making a legitimate non commercial or fair use of <seaway.com>.
The Respondent submits as follows:
The argument that the word Seaway is a worldwide recognized abbreviation of the company “Seaway Bolt & Specials Corp” which “is known by and distinguished from all others by the trade name Seaway” is somewhat far reaching and presumptuous, as is the assertion that the word “Seaway” “…identifies its products.”
The Respondent carried out searches for Seaway on two search engines Alta Vista and Lycos. In the AltaVista search there were over 75 thousand hits for “Seaway”. Seaway Bolt and Specials Corp was not featured until 13 pages and 134 sites into the search. In the Lycos Search, there were over 220 thousand hits. The Respondent scanned the first 180 entries and could not find any reference to the Complainant or its products. These results suggest that the Complainant would have difficulty attracting customers to their site by just using the word “seaway”. The word “seaway” is a very small and non-descript part of the Complainant’s corporate identity. “Seaway” is not confusingly similar to the Complainant’s identity. The documents submitted by the Plaintiff show that they do not use “Seaway” on its own only as part of “Seaway Bolt & Specials Corp”. The Complainant’s own another domain name <SeawayBolt.com> which it could use as its url.
The Complainant does not appear to have a registered trade mark for “Seaway”.
The Respondent is in the business of registering generic domain names such as <looniebin.com>, <getseen.com> and <funkyteen.com>. <Seaway.com> was seen as short, easy to spell and generic and is held for future development.
The word “seaway” is generic and does not refer exclusively to the Complainant.
The Respondent has had a search engine site up and running for more than 2 years at <seaway.com> which has become identified with this name and url. If they decide to use it for another purpose they will not offer pipe plugs or threaded fittings in competition with the Complainant. This is a commercial and fair use of the name.
It was not the Respondent’s original purpose when registering the name to sell it to the Complainant of whom they had never heard at the time. The Respondent has never engaged in a pattern of contacting companies to sell domain names. The Complainant contacted the Respondent to ask if the domain name was for sale and the Respondent’s answer reflected the value the Respondent put on the name. It was not until one and a half years later that the Complaint was issued. The Respondent is not a cybersquatter, but is a domain name developer.
The Respondent’s site at <seaway.com> has in no way disrupted the business of the Complainant.
The Complainant is trying to take or steal <seaway.com> from the Respondent in order to profit from the added traffic generated by the domain.
The Complainant has traded using the name “Seaway” in its trading name since 1957 in the United States in the field of pipes, drain plugs and special fasteners.
The Respondent, based in Canada is a dealer in domain names representing common words or phrases. It registered <seaway.com> in January 17, 2000 and has used it since then for a site featuring a search engine. After the Complainant approached it, the Respondent offered to lease the name to the Complainants for $350 a month or sell it for $20,000.
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.
Identical and/or Confusingly Similar
The Complainant does not appear to have a registered trade mark for “Seaway”. However, it has been trading using the name “Seaway” in its trading name since 1957. Such longstanding use in its field would be sufficient to give the Complainant reputation and goodwill in the name “Seaway” in their field of activity sufficient to give them unregistered or common law rights in the name “Seaway” as a trade mark, at least where they are based in the United States, sufficient to prevent another trader using “Seaway” to sell competing goods of the same type in the United States. The Policy recognizes unregistered or common law trade mark rights and, accordingly, the Complainant has shown that it has rights in the trade mark “Seaway”.
Further, the Domain Name is identical to the trade mark “Seaway” in which the Complainant has rights, the “.com” part of the domain name not serving to distinguish the Domain Name from the Complainant’s mark for the purposes of the Policy.
Rights or Legitimate Interests
Paragraph 4 (c) of the Policy sets out some of the ways that a Respondent can demonstrate its rights or legitimate interests to the Domain Name and these include that before notice of the dispute the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. The Respondent has used <seaway.com> as a site for search engine services since registration.
I have held (below) that the Complainant has failed to prove that the Domain Name has been registered and used in bad faith. Because the domain name is a dictionary word and because the Complainant has not shown that the Respondent knew about or should have known about the Complainant at the time of registration, I am prepared to hold that the Respondent’s use of <seaway.com> as a search engine is bona fide and that the Respondent has a right or legitimate interest in the Domain Name.
Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including (paraphrasing slightly to suit, but using the relevant section numbering):
(i) the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; and
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
It is interesting that the Complainant did not contend that the Respondent was intentionally attempting to attract users to its site by creating a likelihood of confusion with the Complainant’s mark. This could suggest that the Complainant is not particularly well known internationally or outside its own sphere of activity and that “Seaway” is not particularly well known as a trade mark internationally to members of the public not in the same trade as the Complainant.
Seaway is a dictionary word. The Respondent, based in Canada, a different country to the Complainant and with no apparent connection with any trade similar to the Complainant maintains the Domain Name was registered as a generic domain name. The Complainant has produced no evidence that the Respondent is a cybersquatter, but relies on the fact that the Respondent offered to lease or sell the domain name to the Complainant for not inconsiderable sums, certainly in excess of registration costs. However, the Complainant approached the Respondent and domain name speculation in domains reflecting ordinary dictionary words is not bad faith unless the Respondent registered the name with the intention of selling to the Complainant or a competitor of the Complainant. Seaway Bolt & Specials Corp would not appear to be a particularly well known company outside its field. The Complainant has not proven that the Respondent knew about the Complainant at the time that it registered the name or that it should have known about the Complainant. For this reason, there is no evidence that the domain name was registered in bad faith.
In light of the foregoing the Panel decides that, although the Domain Name <seaway.com> is identical to a trade mark in which the Complainant has rights, the Respondent has shown that it has a right or legitimate interest in the Domain Name and the Complainant has failed to show that the Domain Name was registered or used in bad faith.
The Complainant having failed to provide the evidence necessary to satisfy all three limbs of section 4 (a) of the Policy, the Complaint is hereby dismissed.
Dawn Osborne, Panelist
Dated: August 5, 2002
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