Commerce West Insurance
Company v. Commerce
Claim Number: FA0803001156346
Complainant is Commerce West Insurance Company (“Complainant”), represented by Rhea Harris, of Commerce West
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commercewest.com> (the “Disputed Domain”), registered with Godaddy.com, 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.
Robert A. Fashler as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2008.
On March 5, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Disputed Domain is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the Disputed Domain. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 March 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 9, 2008.
On April 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.
Complainant requests that the Disputed Domain be transferred from Respondent to Complainant.
Complainant asserts that:
(a) Complainant was founded in 1948, initially offering personal lines of automobile insurance, and currently offering private passenger automobile plans and mono line commercial automobile plans.
products are offered through independent agents throughout
(c) Complainant and its associated companies have over $4.6 billion in assets and thousands of clients.
rated as “A+” (
(e) Complainant has rights in the COMMERCE WEST mark because:
(i) Complainant has consistently used the mark in connection with its offering of insurance products since 1948;
Complainant operates throughout the
(iii) Complainant has established secondary meaning in the mark.
(f) The Disputed Domain is confusingly similar to Complainant’s COMMERCE WEST mark because the Disputed Domain incorporates the mark in its entirety with the omission of a space and the addition of the generic top-level domain “.com.”
(g) Respondent has no legitimate interest in respect of the Disputed Domain because:
(i) Respondent is not commonly known by the name “COMMERCE WEST,” Commerce West, or Commerce West, LLC;
(ii) Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain;
(iii) Respondent has not registered the Disputed Domain to use as a parody;
(iv) Respondent’s sole use and registration of the Disputed Domain is to trade on Complainant’s name and mark and to divert Internet users;
Respondent is squatting on the Disputed Domain in
violation of both
Respondent lists a
(vii) A Google search of the respondent’s corporate name returns solely the Disputed Domain;
(viii) Respondent has the burden to show concrete evidence that it has rights or legitimate interests in the Dispute Domain once Complainant makes such an allegation, and Respondent has failed to produce evidence to satisfy this burden; and
(ix) Respondent has not licensed, assigned or authorized use of the COMMERCE WEST mark in the Disputed Domain.
(h) Respondent has registered and is using the Disputed Domain in bad faith because:
(i) Respondent is preventing Complainant from reflecting its mark in a corresponding domain name;
(ii) Respondent is attempting to pass itself off as Complainant which may divert customers away from Complainant;
(iii) Respondent has actual and or constructive knowledge of Complainant’s COMMERCE WEST mark when it registered the Disputed Domain due to the famous nature of the mark;
(iv) Respondent has not used the Disputed Domain; and
(v) Respondent cannot use the Disputed Domain in a non-infringing manner.
Respondent asserts that:
(a) The Disputed Domain is not identical or confusingly similar to any mark in which Complainant claims to have a right because:
(i) Complainant has not registered with the USPTO for exclusive use of the COMMERCE WEST mark or <commercewest.com>;
(ii) Complainant is not known as known as “Commerce West;” it is known as “Commerce West Insurance Company;”
(iii) Complainant’s corporate name “Commerce West Insurance Company” is not sufficiently confusingly similar with the Disputed Domain to warrant a transfer of the Disputed Domain to the Complainant;
(iv) Respondent and Complainant are not in the same area of business; Complainant is in the business of insurance, Respondent is in the business of developing online businesses;
(v) The Disputed Domain has not been marketed in relation to the insurance business;
(vi) A consumer viewing the website associated with the Disputed Domain would not confuse it with a website belonging to the Complainant; and
(vii) A consumer searching for Complainant on the Internet would be directed to the Complainant’s website, not the Disputed Domain;
(b) Complainant’s rights to the term “Commerce West,” if any, do not supersede those of Respondent because:
(i) Complainant’s assertions of use of the COMMERCE WEST mark are unsupported, false and grossly misleading, because, contrary to assertions made by Complainant:
(1) Complainant has not consistently used its mark in connection with its offering of insurance products since 1948;
(2) Complainant’s mark is not nationally recognized; and
(3) Complainant’s business name is not famous;
Respondent is a
(iii) Respondent has a priority right to us the COMMERCE WEST mark due to its first use of the mark dating back to 1997, presumably through a predecessor in title;
(iv) Respondent has made use of the Disputed Domain; and
(v) Respondent has not abandoned the COMMERCE WEST mark or the Disputed Domain;
(c) The Disputed Domain has been registered by the Respondent in good faith because:
(i) Complainant has failed to meet its burden of establishing bad faith; Complainant has only made conclusory and unsupported allegations;
(ii) Respondent has not registered the Disputed Domain in circumstances outlined in Paragraph 4(b)(i) of the Policy; Respondent has made no offers to sell the Disputed Domain and Respondent intends to use the Disputed Domain for its own business;
(iii) Respondent has not registered the Disputed Domain in circumstances outlined in Paragraph 4(b)(ii) of the Policy; by registering <commercewest.net> prior to the Respondent’s registration of the Disputed Domain, Complainant has shown a preference for <commercewest.net> over the Disputed Domain;
(iv) Respondent has a priority right to us the COMMERCE WEST mark due to its first use of “Commerce West;”
(v) Respondent has not registered the Disputed Domain in circumstances outlined in Paragraph 4(b)(iii) of the Policy; Respondent and Complainant are not in the same business and are not competitors;
(vi) Respondent has not registered the Disputed Domain in circumstances outlined in Paragraph 4(b)(iv) of the Policy; the Disputed Domain does not market insurance or any products to the public;
(vii) Respondent has made use of the Disputed Domain in the past and intends to make use the Disputed Domain within the next year;
(viii) Respondent can use the Disputed Domain in a non-infringing manner as it is the first to use the COMMERCE WEST mark;
The Panel finds that Complainant has not proven the first element stipulated in Paragraph 4(a) of the Policy and consequently the Disputed Domain should not be transferred from Respondent to Complainant.
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.”
Under Paragraph 4(a) of the Policy, the Respondent must submit to a mandatory administrative proceeding when a Complainant asserts to the applicable dispute resolution service provider that:
(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.
Paragraph 4(a) of the Policy goes on to stipulate that:
“…the complainant must prove that each of their three elements are [sic] present.”
The first element that Complainant must establish is that the Disputed Domain “is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.” This element, in turn, requires the Complainant to prove two distinct factual points: first, that it has rights in the mark it is asserting; and, second, that the Disputed Domain is identical or confusingly similar to that mark. Hence, in this case, Complainant must begin by establishing that it has rights in the COMMERCE WEST mark.
Complainant claims to have been using the trademark COMMERCE WEST continuously since 1948, but Complainant has never acquired a registration for the trademark COMMERCE WEST in any jurisdiction. Rather Complainant asserts common law rights in the mark.
UDRP proceedings are international in every sense. The disputants may rely on rights in virtually any jurisdiction in the world. The UDRP panelists reside in a variety of different countries. Accordingly, disputants should keep the international nature of UDRP proceedings in mind when preparing their submissions.
This consideration is particularly applicable to assertions of common law rights. Complainants should clearly identify the jurisdiction in which common law rights are claimed and they should elucidate the relevant legal principles of that jurisdiction. Further, as common law rights in all jurisdictions are a function of active trademark usage, Complainants should provide sufficient evidence from which panels can infer the existence of such common law rights.
As Complainant resides in the
To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right. With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol. In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent. [emphasis added; citations omitted].
Accordingly, when one seeks to enforce common law trademarks, it is not sufficient merely to assert that one has been “using” the trademark. One must provide sufficient evidence from which it can be inferred that common law rights exist and then establish the scope of legal protection that ought to be afforded to the common law trademark. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof), Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products) and Lilian Vachovsky, COO, Aplus.Net Internet Servs. v. At Hosting Inc.,. D2006-0703 (WIPO Oct. 26, 2006) (“It is well-established that mere assertions of common law rights in a mark are insufficient without accompanying evidence to demonstrate that the public identifies the Complainant’s mark exclusively or primarily with the Complainant’s products.”).
Complainant makes a number of assertions as to its use of the COMMERCE WEST mark and the goodwill that it has generated therefrom. However, as discussed above, mere assertions of use of a common law trademark are not sufficient to demonstrate rights to such a mark. Further, in the Declaration of Rhea Harris (Exhibit A of the Complaint), the Complainant declares under penalty of perjury that the Complainant “has used the name “Commerce West” in commerce continuously without abandonment since 1948.” However, that sworn statement is directly contradicted by Exhibit B of Ms. Harris’ Declaration (a printout of Complainant’s website <commercewest.net>) which states that Complainant has been “[k]nown by Independent Agents and policyholders as Western Pioneer Insurance Company until 1995.” Presented with such a contradiction, the Panel can only infer that Complainant is either attempting to mislead the Panel or was exceedingly careless in presenting its evidence and submissions. Such a contradiction places the in question the reliability of the entirety of Complainant’s evidence and submissions.
The only evidence that Complainant provides as to the manner in which the trademark is supposed to have been used is a 2008 printout of the Complainant’s website <commercewest.net> (Exhibit B of the Complaint), and a domain name registration thereof (Exhibit D of the Complaint). Complainant does not provide any indication of the volume of sales that are supposed to have been made in association with the trademark, the revenues that are supposed to have been generated by those sales, or any advertising expenses incurred in association with the trademark. Complainant does not provide a sufficient factual basis from which the Panel can infer that there is substance to complainant’s assertion that it has engaged in continuous use of the trademark COMMERCE WEST in association with any products or services.
Complainant provides a copy of a corporate search from the California Secretary of State website confirming that Commerce West Insurance Company was founded in 1948 (Exhibit C of the Complainant). That material shows Complainant’s current name but fails to reveal when Complainant adopted that name. Having regard to Exhibit B, the Panel infers that complainant’s corporate name was Western Pioneer Insurance Company until 1995, and that the current name was adopted in 1995. In any event, a mere corporate registration is not evidence of use of a trademark in association with goods and services.
Complainant has failed to provide sufficient evidence from which the Panel can infer that Complainant holds common law rights in the trademark COMMERCE WEST. Hence, the Panel finds that Complainant has failed to satisfy its burden under Paragraph 4(a)(i) of the Policy.
Because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, Complainant's failure to prove the element listed in Paragraph 4(a)(i) means that the Panel need not consider whether Complainant has proven the remaining element contained in Paragraphs 4(a)(ii) and 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <commercewest.com> domain name not be TRANSFERRED from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: April 28, 2008
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