Magnetic Shield Corporation
v. MuShield
Claim Number: FA0803001158545
PARTIES
Complainant is Magnetic Shield Corporation (“Complainant”), represented by Christopher
W. Schneider, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mumetal.com> (the “Domain Name”),
registered with Enom, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Michael Albert, Terry Peppard, and Paul M.
DeCicco as Panelists. Paul M. DeCicco, presiding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 6, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 10, 2008.
On March 10, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <mumetal.com>
domain name is registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 11, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 31, 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 postmaster@mumetal.com by e-mail.
A timely Response was received and determined to be complete on March 31, 2008.
A timely Additional Submission submitted by Complainant was received on
April 7, 2008, and was determined to be complete in accordance with
Supplemental Rule 7.
A timely Additional Submission submitted by Respondent was received on
April 11, 2008, and was determined to be complete in accordance with
Supplemental Rule 7.
On April 15, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Michael Albert, Terry Peppard, and Paul M.
DeCicco as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
Magnetic Shield Corporation ("Complainant") is the owner of
an incontestable trademark registration for the mark MUMETAL registered with
the United States Patent and Trademark Office ("USPTO") for
"alloy in sheet, strip or foil form" (US Reg. No. 1,327,977, issued
April 2, 1985). Complainant and its predecessor in interest, Spang and Company
(“Spang”) have been using the mark in association with these services since at
least as early as December 31, 1935. Complainant entered into an agreement to
purchase the rights to the registered trademark MUMETAL from Spang. The
assignment of title to the mark was recorded with the United Stales Patent and
Trademark Office on March 28, 2005.
Since its inception, Complainant has provided electronic component
insulation and magnetic interference protection. On September 22, 1996 and
March 5, 2002 respectively, Complainant reserved the domains
<magnetic-shield.com> and <mumetals.com> to be used in connection
with the sale of its magnetic shielding products. Complainant and Spang have
spent significant sums on advertising the MUMETAL brand nationwide through
their website and magazine advertising such as the electrical engineering
serial, Conformity Magazine.
There is not nor has there ever been any license or other business
relationship between Complainant and Respondent. Accordingly, Respondent has no
permission to use Complainant's MUMETAL trademark.
Respondent has maintained a commercial website associated with the
disputed Domain Name, located at <mumetal.com>. Respondent's
website promotes and markets goods identical to Complainant’s, namely magnetic
shielding components. Respondent obtained the disputed Domain Name on August
22, 1999, without the authorization and/or knowledge of Complainant. Respondent
is clearly aware of MUMETAL's status as a registered US Trademark as on its
other website at <mushield.com> Respondent uses the circle R with
MUMETAL, as "Mumetal®."
Respondent's domain name is either identical or confusingly similar to a
trademark or service mark in which Complainant has rights. Thus, Complainant has established that it has
trademark rights in its mark through its federal trademark registration.
Respondent's domain name is identical in sound, appearance, meaning and
commercial impression to Complainant's incontestable
Respondent has no rights or
legitimate interests in the disputed domain name. Respondent
has never used the Domain Name or any name associated with it in connection
with a bona fide offering of goods or
services. Respondent's Domain Name is identical to, wholly incorporates, and is
solely comprised of Complainant's registered trademark.
Respondent has never been commonly known by the Domain Name. A
registrant generally lacks rights or legitimate interests in a domain name
where a complainant has prior rights in a mark that precede a respondent's
registration of the domain name. Complainant and Spang used the mark in
commerce, and obtained a
There is no evidence to establish that Respondent is commonly known by
the Domain Name. Furthermore, there is no evidence that the Domain Name
comprises the legal name of Respondent.
Respondent's awareness of Complainant's marks prior to registration of
the Domain Name evidences Respondent's lack of rights or legitimate interest in
the Disputed Domain Name. Respondent created the Domain Name over
sixty-four years after the trademark MUMETAL was in use and fourteen years
after it secured federal trademark protection. Respondent therefore had constructive
notice of Complainant's ownership of its mark well before the registration of
the Disputed Domain Name.
Respondent's use of Domain Name is not for any legitimate noncommercial
or fair use. Respondent uses the <mumetal.com>
domain name to operate a website that offers and advertises goods and services
directly competitive with Complainant's highly specialized business. Respondent
profits from Internet traffic to the site due to the recognition of
Complainant's mark. Since Respondent's website is commercial in nature, it
cannot qualify under the safe harbor of Policy 4(c)(iii)
as a legitimate noncommercial or fair use without intent for commercial gain.
The Domain Name was registered and is being used in bad faith.
Respondent's bad faith is evidenced by a use of Complainant's trademark
primarily for the purpose of disrupting Complainant's competing business. Respondent's website found at <mumetal.com>
is commercial in nature, specifically marketing electromagnetic shielding alloy
in direct competition with the identical goods sold under Complainant's MUMETAL
mark. Respondent registered the Domain Name without the permission or knowledge
of Complainant.
Respondent's bad faith actions intentionally attempted to divert Complainant's customers. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's registered trademark as to the source, sponsorship or affiliation of the website and the services it promotes and sells.
Given Complainant's long and continuous use of its mark, through the
distribution of a magnetic shielding alloy, Respondent clearly had knowledge of
Complainant's mark prior to registration of the Domain Name. Complainant's mark
was registered with the United States Patent and Trademark Office fourteen
years prior to the registration of the Disputed Domain Name. This prior
registration gave constructive knowledge (i.e., awareness) to Respondent.
B. Respondent
Respondent contends as follows:
Prior to 2005, when it acquired Spang Specialty Metals'
("Spang") trademark registration for "Mumetal," Complainant
shared the established view in the industry that
"mumetal" was, and had been for many years, a generic term for high
permeability magnetic shielding material. Between 2000 and 2003, Complainant's
website proclaimed, "the term mumetal is often used as a generic term, as
Kleenex is used for any facial tissue."
Statements from participants in the magnetic shielding
industry with decades of experience among them agree that "mumetal," despite its origins as a patented product in the
1920s, has long since become a generic catch-all for high permeability
Nickel-Iron alloys. Numerous references in dictionaries, encyclopedia,
reference materials, scientific literature, and consumer-oriented websites
recognize and underscore the generic nature of "mumetal."
The Panel does not have the authority to
invalidate Complainant’s registration; but it does not have to reach that
result to decide this case.
Complainant’s right to Spang's federal registration was
acquired through an invalid "assignment in gross." To the extent that
"mumetal" has any residual,
non-generic meaning, it must, of necessity, have the meaning Spang attributed
to it. Spang only used "mumetal" in connection with
a defined chemical formulation. Complainant applies "mumetal"
to other formulations. Even if "mumetal" were not generic,
Complainant lost any rights and priorities that Spang may have accumulated in
the name by applying it to a different product.
"Mu" is the English
transliteration of a Greek symbol for magnetic permeability. Thus, the term
"mumetal" literally means "magnetically permeable metal."
Because of the strongly descriptive nature of the term, it quickly became the
generic term for high permeability magnetic shielding alloys, which might
differ in chemical composition, but which all served the same general purpose. Respondent has been selling high permeability
magnetic shielding materials, including materials manufactured by Spang since
1998. In 1999, Respondent registered the <mumetal.com> domain
name.
Complainant registered <mumetals.com>
in 2002 – three years before it acquired rights to the registration through
assignment, and during the time it now claims that Spang had exclusive rights
to that name.
On previous versions of its website Complainant states that "mumetal" is a generic term. Other companies preceding the interests of the Complainant likewise treated the mark as generic since as early as the 1970s. Consequently, the public has appropriated the term and the purported owner of the trademark can no longer benefit from its protection. The former mark holder, Spang, never challenged respondent’s use of the term “mumetal.” Spang was a supplier of Respondent for 20 years.
Although the Panel cannot declare Complainant’s registration invalid in this proceeding, the longstanding generic use of the term "mumetal" prevents Complainant from being able to satisfy its burdens of proof under the Rules.
Respondent’s evidence in this case demonstrates that "mumetal" is a generic term for high permeability Magnetic Shielding Materials. Such evidence includes: (1) dictionary definitions; (2) generic use of the term by competitors and other persons in the trade; (3) Complainant’s own generic use; and (4) generic use in the media.
Because of Complainant’s own generic use and acknowledgments of genericness, Complainant is estopped to deny that "mumetal" is a generic term.
Complainant cannot show that Respondent lacks rights or legitimate interest in the <mumetal.com> domain name or that it registered the name in bad faith. When Respondent registered <mumetal.com> in 1999, the term "mumetal" had long been in generic use. Respondent sold the type of product the term was used to describe. Complainant’s predecessor did not object to Respondent’s registration of the domain and continued to sell product to Respondent. Complainant also fails to make any of the showings described in paragraph 4(b) of the Policy.
The Panel should conclude that Complainant has failed to meet its burden to show that Respondent has "no right or legitimate interest" in the <mumetal.com> domain name, or that the "name has been registered and is being used in bad faith."
If "mumetal" has any non-generic significance, it necessarily has the significance given by its assignors during their decades of use. But Complaint uses the term for a product of a different composition. Thus, even if "mumetal" is not generic, Complainant cannot enforce against Respondent any rights it purported to acquire from the assignor.
C. Additional Submissions
Complainant, through its supplemental submission, contends as follows:
Although Respondent alleges that Complainant's incontestable federal trademark registration is generic, as recently as December 6, 2007 Respondent offered to purchase the trademark at issue for $25,000.
Evidence challenging the validity of Complainant's registered trademark is incongruous with the principles of the Policy. Moreover, the evidence Respondent provides is not of a compelling nature such that the Panel should question the renewed trademark registration granted by the United States Patent and Trademark Office ("USPTO"). Complainant is the true and valid owner of the registration for MUMETAL as the assignment was validly executed. Because of the nature of the instant proceedings, such a fact intensive question as a claim of genericness is not appropriate here.
Even if the Panel were to consider Respondent's evidence of the validity of the MUMETAL registration, Respondent's evidence is not compelling enough to find that the mark is generic. Respondent acknowledged the mark's value through its asking price for the disputed domain. Respondent initially offered to sell the domain for $110,000 and later was "willing to lower" the asking price for the disputed domain to $95,000.
In addition to serving as supplemental evidence of Respondent's registration and use of the disputed domain in bad faith, the offers show Respondent's recognition that the federal trademark registration for MUMETAL has value.
There is evidence for the argument that the industry or relevant purchasing public does not understand the term MUMETAL primarily as the common or class name for any alloy or genus of goods in International Class 35. Moreover, the lack of dictionary definitions for the term "mumetal" weighs heavily against a claim of genericness.
Therefore, Respondent's evidence fails to clearly prove that MUMETAL has become generic.
Complainant's incontestable federal
registration was validly assigned. Complainant reiterates its objection to
evidence submitted addressing an issue better decided through alternative
avenues available to Respondent. Nevertheless, the mark
The assignment was not in gross, as the goodwill was transferred to Complainant such that sufficient continuity exists. Significantly, nowhere in Respondent's generous amount of putative evidence was there any suggestion that consumers were disrupted, misled or confused after the assignment.
Respondent, through its
supplemental submission, contends as follows:
Complainant’s admissions and failure to deny salient facts demonstrates that it cannot prove that Respondent registered and is using the Domain Name in bad faith or that it lacks rights or legitimate interest in the Domain Name.
Complainant affirms that it did not gain an appreciation for "mumetal's" trademark significance until it purchased the registration in 2005. Prior to that time Complainant shared the prevailing view in the industry that "mumetal" was a generic term for high permeability magnetic shielding material.
The timing of Complainant’s apparent change in position is significant and dispositive. To prevail on its claim, Complainant must prove that Respondent acted in bad faith, and without legitimate rights to the domain, both when it registered the domain, and during its use in the intervening years. Complainant cannot possibly satisfy this burden, because it is undisputed that from 1999, when Respondent registered the domain, through 2005, when Complainant acquired the registration, both parties agreed that "mumetal" was used generically to refer to high-permeability Nickel-Iron alloys, and was therefore available for use by anyone in the industry. Respondent's registration and use of the domain to describe and sell precisely these products is the essence of legitimate and good-faith use.
The history of the parties' settlement discussions does not, as Complainant contends, change this conclusion.
Complainant has not put forth evidence, if any exists, of the term's non-generic use, either with its original Complaint, or in its supplemental materials.
The generic status of "mumetal" is directly relevant to the Panel's inquiry into Respondent's good faith and its rights and legitimate interests in the at-issue domain name.
Generic use is not irrelevant although cancellation or invalidation of a Federal trademark is beyond the jurisdiction of a UDRP panel.
FINDINGS
Complainant has trademark rights in the mark
MUMETAL by virtue of its registration with the United States Patent and
Trademark Office.
Complainant through its
predecessor-in-interest indicated that the mark MUMETAL was generic at the time
of its initial registration by Respondent in 1999.
The Domain Name is identical to a mark in
which Complainant has rights.
Respondent has not acted in bad faith, having
used the mark under the reasonable belief that it had become generic.
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 has made at least a
threshold showing that it has rights in the MUMETAL mark through its trademark
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,327,977 issued April 2, 1985). Complainant
has used this mark since 1935 with its predecessor-in-interest, and acquired
the rights to the
mark through a valid assignment from Complainant’s predecessor-in-interest to
Complainant on March 28, 2005.
Complainant therefore has established rights in the MUMETAL mark
pursuant to Policy ¶ 4(a)(i). See
State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June
19, 2006) (“Complainant’s registrations with the United States Patent and
Trademark Office of the trademark, STATE FARM, establishes its rights in the
STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer
Enters., Inc., FA 622122 (Nat. Arb.
Forum Apr. 14, 2006) (finding that the complainant’s registration with the
USPTO for the
Respondent argues
throughout its papers that Complainant should be denied the requested relief
because the <mumetal.com> domain name is comprised of
a generic term. The argument is supported by over one hundred pages of material
in the form of declarations and otherwise. However, both Respondent and
Complainant urge that a UDRP panel is jurisdictionally bound to not act to
invalidate or nullify a complainant’s nominally valid registered trademark.
This Panel agrees. The instant forum is ill equiped to make the fact-intensive
determinations necessary to decide definitively whether a mark is generic. Such
deteminations must rely on evidence whose weight and foundation is better
exposed and assessed through traditional judicial proceedings. See generally Hit Factory
Entm’t, Inc. v. Manhasset
Bay Assocs., Inc., FA 649476 (Nat.
Arb. Forum, April 14 2006); UGG Holdings, Inc. v. WebQuest.com, Inc., FA 335456 (Nat.
Arb. Forum Dec. 8, 2004); Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enters., &
J. D. Sallen Enters., D2000-0461
(WIPO July 20, 2000); and Ritz Hotel, Ltd. v. Damir Kruzicevic, D2005-1137 (WIPO Jan. 16, 2006), each cited
by Complainant. Simply put, “[a]
UDRP proceeding is an improper forum in which to seek invalidation or disregard
of a duly issued federal trademark registration.” ACE Ltd. v. WebMagic
Ventures, LLC, FA 1143448 (Nat. Arb. Forum, Apr.
8, 2008). See also See Sights on Serv.,
Inc. v. Secret Shopper Co., D2003-0415 (WIPO Aug. 23, 2003). Respondent’s
claim that Complainant’s registered trademark is generic therefore goes beyond
the scope of what this Panel is prepared to decide pursuant to Policy ¶
4(a)(i). As discussed below, however,
the claim of genericness is relevant here and will be addressed in the Panel’s
analyses of Policy ¶¶ 4(a)(ii) and (iii).
The <mumetal.com> domain name is identical to Complainant’s MUMETAL mark because the at-issue domain name contains Complainant’s registered trademark in its entirety and adds only the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)
Complainant has
satisfied its burden under Policy ¶ 4(a)(i), having
established that the Domain Name is identical to a trademark in which it has
rights.
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the domain name at issue.
Complainant asserts that Respondent is not commonly known by the <mumetal.com> domain name. The WHOIS information identifies Respondent as “MuShield.” Complainant states that Respondent is not licensed or authorized to use the MUMETAL mark in a domain name. The Panel therefore concludes that Respondent has made a prima facie showing that Respondent lacks rights and interest in the at-issue domain name.
The burden thus shifts to Respondent to affirmatively show that it has rights or interests in the at-issue domain name. Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that can demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy. To wit:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy ¶ 4(c).
Complainant established that
Respondent is not commonly known by the Domain Name and has not been granted
rights in such name. Complainant asserts and Respondent does not deny that
Respondent is using the <mumetal.com> domain name to provide information and advertisments for
products and services directly competitive with Complainant’s business. There also may be an inference that
Respondent derives revenue from this use through the accrual of referral or
click-through fees or indirectly derives benefit through the promotion of its
business interests.
Ordinarily, such use would not be bona fide pursuant to 4(c). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). If, however, the disputed mark is generic, then it is free for all to use, and accordingly anyone (including Respondent) would have rights or legitimate interests in using it. See Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that the respondent had a legitimate interest in the domain name <kidcarrier.com> because it was a generic term for a class of products that the respondent sells); see also Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.”).
While this Panel cannot, and
therefore does not, definitively rule that the term MUMETAL is generic in the
face of Complainant’s valid trademark registration, Respondent has at least
raised a plausible argument, supported by considerable evidence, to that
effect. Moreover, it does not appear
that Respondent intended to mislead consumers or tarnish the trademark or
service mark at issue. Indeed, the Panel
finds that Respondent reasonably believes that Complainant’s mark is generic.
Respondent thus benefits from a fair use defense under Policy ¶ 4(c)(iii).
In sum,
the Panel finds that Respondent has legitimate rights or interests in respect
of the domain name.
The third element Complainant must show if it
is to prevail is that Respondent both registered and used the at-issue domain
name in “bad faith.” This it has not
done.
Complainant fails to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
At the time of registration and for a time thereafter, both Complainant and its predecessor-in-interest admitted, by statements and actions, that the term MUMETAL was generic (notwithstanding that the mark’s trademark registration suggests a contrary position). The evidence presented by Respondent on this point is uncontroverted. These admissions by Complainant estop it from now claiming that Respondent could not have believed the term MUMETAL to be generic at the time of Respondent’s domain name registration. Therefore, Respondent was justified in relying on these admissions and could not have had the necessary intent required to be found to act in bad faith.
Policy ¶ 4(b) et seq. sets out four fact patterns, without limitation, which if found by a panel demonstrate a respondent’s bad faith. As discussed below, not one is applicable with regard to the instant case, or can there otherwise be a showing of bad faith on the part of Respondent.
The fact that Respondent offered to sell the Domain Name within the context of settling the crux of the instant dispute is not persuasive evidence that Respondent registered the domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name to the [C]omplainant.” Parties should be free to settle their disputes in advance of administrative or legal proceedings without having to worry that such discussions will be used against them if and when the dispute moves to a formal forum. See generally, Fed. Rule Evidence 408. Panels are split on whether the rationale underlying Rule 408 should act to exclude evidence within the settlement context or merely be a consideration in weighing such evidence. Nevertheless, even if such an offer to sell by Respondent was outside of the settlement context, there is no evidence whatsoever tending to prove that Respondent intended to sell or rent the domain “at the time of registration.” Think Serv., Inc. v. Carlos, D2005-1033 (WIPO Nov. 18, 2005). Indeed, there were no offers to sell the domain by Respondent during the nearly ten-year pendency of the domain name’s registration prior to the instant dispute. This corroborates Respondent’s position that it did not have, as a primary purpose for registration, the intent proscribed by Policy ¶ 4(b)(i). Similarly, given the apparent good faith registration by Respondent, the Panel concludes that Respondent did not registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name as likewise there is no evidence that Respondent “engaged in a pattern of such conduct.” Policy ¶ 4(b)(ii).
Since the record shows that at the time of registration Respondent and Complainant’s predecessor-in-interest were not competitors but rather had the mutually beneficial relationship of that of a vendor and customer, there can be no showing that that by registering the domain name Respondent intended to disrupt a competitor’s business. Any reliance on Policy ¶ 4(b)(iii) in support of Respondent’s bad faith, therefore fails.
Furthermore, as discussed above, the record indicates that Respondent reasonably believed that the term MUMETAL was generic at the time of registration. Therefore, Respondent did not have the intent to create “a likelihood of confusion with the complainant’s mark.” Policy ¶ 4(b)(iv).
Finally, absent a
showing of any ill intent on the part of Respondent, there can be no basis for
finding bad faith on any other grounds and therefore Complainant cannot meet its burden of proof
under Policy ¶ 4(a)(iii).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Terry Peppard, and Paul M.
DeCicco as Panelists.
Paul M. DeCicco, presiding Panelist
Dated: April 29, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum