Vast Resources Inc. v. Topco
Claim Number: FA0803001158551
PARTIES
Complainant is Vast Resources Inc. (“Complainant”), represented by Jay
H. Geller, of Jay H. Geller a Prof. Corp., West Tower
Suite 4000, 2425 W. Olympic Bl.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <topcosales.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
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 6, 2008.
On March 7, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <topcosales.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 3, 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@topcosales.com by e-mail.
A timely Response was received and determined to be complete on March 21, 2008.
On March 25, 2008, Complainant submitted an Additional Submission that
was determined to be complete. The submission was received in a timely
manner according to The Forum’s Supplemental Rule 7.
On March 27, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has stated the following in its Complaint.
[a] The domain name <topcosales.com> is identical to Complainant's
trademark TOPCO SALES.
[b] The Respondent should be considered having no rights or legitimate
interests in
respect of the domain name in that it has allegedly owned the domain name
since 1998 and has never used the domain name in connection with a bona fide offering of goods and/or
services. Complainant, upon information and belief, believes that respondent is
not commonly known by the domain name; nor has it acquired trademark or service
mark rights in the name. To the best of Complainant's knowledge, Respondent is
not making a legitimate noncommercial 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.
[c] The domain name should be considered as having been registered in
bad faith and, being used in bad faith, in that it has owned the domain name
since 1998 and has never made any use of the domain and is thus cybersquatting
on the name. If the domain name owner had any bona fide intention to actually use the domain in connection with
any goods and/or services, it would have done so by now and its continued
ownership of the domain interferes with Complainants ability exploit its
trademark by its inability to use the domain name <topcosales.com>. Consumers who type in the web address <topcosales.com> are not taken to
Complainant's website but to Respondent's website and are told that website is
"under construction" and leads consumers to believe that Complainant
has no website.
The Complainant requests that the Panel issue a decision that the
domain-name registration is transferred. ICANN Rule 3(b)(x);
ICANN Policy of 4(i).
B. Respondent
Respondent has stated the following in its Response.
[a.] The Respondent has been selling its products under the name and
trademark TOPCO since at least 1965 and has used the trade name TOPCO SALES
since the late 1970's. The Respondent has also subsequently registered the
TOPCO SALES trade name. The Respondent is the owner of a registered trademark
in
The Respondent has adopted and used its registered trademark TOPCO and
trade name TOPCO SALES and has grown to be recognized as a leader in the
manufacture and distribution of premium quality equipment and products for the
energy industry, and caters to both the exploration and production sectors.
Through use of its mark and trade name, the Respondent prides itself in
providing high quality service, which includes experienced technical support,
customer training, prompt delivery, and a complete satisfaction guarantee.
The Claimant is the owner of a registered trademark in the
The use of the name, term and trademark TOPCO is not unique to the
Complainant. In the United States alone, for example, there exist numerous
registered trademarks for the term TOPCO used by parties other than the
Complainant for a variety of wares or services such as, for example: (1) TOPCO,
Serial Number 77/296,155 by Topco Technologies Corporation in respect of light
bulbs; street lights; recessed down lights; high intensity search lights;
diving lights; spot lights; crystal lights; high-intensity discharge lamps;
projector lamps; ceiling lights; indoor and outdoor solar powered lighting
units and fixtures; lamping casing/hangings for lamps; burners for lamps;
lights; electric lights; lighting apparatus and appliances; light tubes; solar
street lights; light emitting diode street lights; light emitting diode
lighting apparatus and appliances; solar lighting apparatus and appliances; (2)
TOPCO, Serial Number 76/680,838, by Häfele Gmbh & Co Kg Limited Partnership
in respect, among many other wares and services, fittings for windows, doors,
and furniture, locks, locks and cylinders; (3) TOPCO DESIGN, Serial Number 76/680,837
by Häfele Gmbh & Co Kg Limited Partnership for, among many other wares and
services, fittings for windows, doors, and furniture, locks, locks and cylinders;
(4) TOPCO, Serial Number 76/655,977 by Topco Technologies Corporation in
respect of computer operating systems for digital video recording and storage
equipment; computers; modem; computer service; internet phone; internet
cameras; computer video service; computer network hubs, switches and routers;
computer software for use in video streaming, recording and monitoring management;
video recorders; multiplexers; optical lenses; video cameras; video monitors;
access control and alarm monitoring systems; alarm and security related
systems, namely, personal security alarms, monitoring burglar and security
alarms, fire alarms; transceivers; (5) TOPCO, Registration Number 1,768,978 by
Topco Associates, Inc. for distributorship services in the field of food,
health and beauty care products of others; (6) TOPCO, Registration Number
1,448,490 by Topco Associates, Inc. for paper sacks; lawn furniture; grass
seed; (7) TOPCO, Registration Number 866,895 by Topco Associates, Inc. for
cotton swabs and cosmetic puffs; (8) TOPCO, Registration Number 866,580 by
Topco Associates, Inc. for toothpaste, denture cream, powdered denture
cleanser, denture adhesive, baby powder, shave cream, and personal deodorant; (9)
TOPCO, Registration Number 841,939 by Topco Associates, Inc. for medicinal
preparations, namely, aspirin, rubbing alcohol, hydrogen peroxide, and
petroleum jelly; (10) TOPCO, Registration Number 843,243 by Topco Associates,
Inc. for women's hosiery; (11) TOPCO, Registration Number 843,075 by Topco
Associates, Inc. for transparent adhesive tape and household adhesive tape for
household and like use; (12) TOPCO, Registration Number 834,338 by Topco
Associates, Inc. respect of clear plastic wrap; (13) TOPCO, Registration Number
783,463 by Topco Associates, Inc. in respect of air freshener, ammonia,
insecticide, fabric softener and anti-freeze; and (14) TOPCO, Registration
Number 778,669 by Topco Associates, Inc. in respect of lawn and garden
fertilizer.
The Respondent targets a vastly different market than the Claimant's
market and caters to a different clientele, namely the oilfield industry.
Assuming that the Claimant has been in continuous use of its trademark in
respect of the large number of wares claimed under Registration Number
2,628,320, the Claimant and Respondent have been in the marketplace
simultaneously for approximately 10 years. During such time, the Respondent has
not become aware of any confusion between its business, wares and activities
and those of the Claimant. Clearly the channels of trade are very different and
there is no likelihood of confusion between the Claimant's products and those
of the Respondent.
Furthermore, it should be noted that it appears from the Claimant's
website that the Claimant does not brand the products that it offers for sale,
or the packaging for same, with its trademark. Rather, the products are branded
by other trademarks, such as NOVELTEASE, TLC, and CLIMAX, which weakens the
connection and association a consumer would make with the term
"Topco" to any of the products offered for sale by the Claimant, and
lessening the likelihood of confusion.
[b.] The Respondent has pre-existing rights or legitimate interests in
respect of the domain name under Policy 4(a)(ii) and ICANN Rule 3(b)(ix)(2),
since the Respondent began selling its industrial oil field products under the
name TOPCO SALES in the late 1970's, as evidenced by the sales literature attached
as Annex 2. The Respondent later registered this trade name, as evidenced by
the trade name search and the historical search of the number company which
registered the trade name, attached as Annex 3. As such, the Respondent's use
of its trade name TOPCO SALES predates the Claimant's use of its mark by
approximately 20 years, and the Respondent has an established right to use its
trade name TOPCO SALES in the registration of the domain name in dispute. The
Respondent is also the owner of a registered trademark in
Furthermore, the Respondent has been using a name corresponding to the
domain name, namely "Topco", for which it obtained a registered
trademark, as previously noted. While the Respondent's registered trademark
differs slightly from the domain name, which contains the word "Sales",
"Topco" remains the dominant element of the trademark. As is
expressly noted by the
[c.] The Claimant has provided no evidence that the Respondent's domain
name was
registered and is being used in bad faith under Policy
4(a)(iii) and ICANN Rule 3(b)(ix)(3). The Respondent is a valid and
pre-existing owner and user of the TOPCO trademark and its TOPCO SALES trade
name and conducts a pre-existing business in good faith under its trademark and
trade name, and has done so long before the Claimant ever adopted and used its
mark.
The Respondent is not using the domain name without reasonable cause
and has certainly not engaged in any pattern of conduct that would disrupt the
Claimant's business or otherwise engaged in actions of
"cybersquatting".
As noted previously, there is a radical difference in the goods and
services of the Respondent and those of the Claimant. As such, there is no
likelihood of confusion with the Claimant's mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent's web site.
The Claimant's claim that the Respondent has not made any use of the
domain name and is, thus, "cybersquatting", should be dismissed,
given that the Claimant already has an established website that it has been
using since 2002 and, thus, the Respondent would have no motivation to sell the
domain name in dispute to the Claimant. Furthermore, the Respondent intends to
use the domain name in dispute for the sale of its industrial oil field
products under its trade name as it has over the past several decades.
C. Additional Submissions
Additional Submission filed by Complainant.
Nowhere in the response to the Complaint does the Respondent ever state
why it has never used the domain name <topcosales.com>
nor why it ever obtained the name. The fact that it owns registrations and uses
the name is totally irrelevant to this matter. The fact remains, uncontested,
that Respondent has never used the domain name for any purpose and can only be considered to be cybersquatting to prevent anyone else,
such as Complainant, with a legitimate interest in use of the name <topcosales.com>, from using the
name. In fact, Respondent’s
cybersquatting prevents Complainant from exploiting its trademarks.
Respondent alleges that Complainant does not actually use the trademark
Topco Sales. The name appears on every
product package that Complainant sells. Complainant’s website does not show the
entire package of any product that it sells. Consequently, the allegations made
by Respondent regarding Complainant’s website are totally inapposite and
irrelevant. Had Respondent simply looked
at the entire package of one of Complainant’s products, it would have clearly
seen that Complainant prominently uses the trademark Topco Sales on its
packaging.
Complainant submits that its Complaint is well founded and that the
subject name should be ordered transferred to Complainant.
DISCUSSION AND FINDINGS
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 asserts rights in the TOPCO SALES
mark through registration of the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,628,320 issued Oct. 1, 2002). The
Panelist finds that Complainant’s trademark registration is sufficient to
establish rights in the mark pursuant to Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive [or] have acquired secondary meaning.”).
The Panelist further finds
that the <topcosales.com>
domain name is confusingly similar to Complainant’s TOPCO SALES mark, since the
domain name fully incorporates Complainant’s mark and merely adds the “.com”
generic top-level domain. The addition of a generic top-level domain does not
distinguish the domain name from Complainant’s mark. Thus, the Panel finds that
the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Croatia Airlines v. Kwen Kijong,
AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark).
Respondent contends that it is a recognized
leader in the manufacturing and distribution of equipment for the energy
industry and that it has been in business since at least as early as 1965.
Moreover, Respondent contends that it has used its trade name TOPCO SALES in
its business since the late 70’s. Respondent also contends that it owns a
trademark registration for the TOPCO mark with the Canadian Intellectual
Property Office (“CIPO”) (Reg. No. TMA147320 issued Sept. 16, 1965). In the
Panelist’s opinion, Respondent has shown that it is commonly known by the <topcosales.com> domain name for
purposes of Policy ¶ 4(c)(ii) by virtue of its
trademark registration and longstanding use of its trade name in commerce. See Avnet, Inc. v. Aviation Network,
Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was
commonly known by the <avnet.net> domain name because the respondent
submitted “evidence that it was known by the name AVNET for at least ten years
prior to its domain name registration”); see
also Digitronics Inventioneering Corp. v. @Six.Net Registered,
D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known
by the <six.net> and <sixnet.com> domain names even though the
complainant had registered the SIXNET trademark because the respondent
demonstrated that its customers associated the respondent’s company with the
domain names).
Thus, the Panelist concludes that Respondent has successfully demonstrated rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Because the Panel has determined that Complainant has
not satisfied this requirement of the Policy ¶ 4(a)(ii),
there is no need to determine whether Respondent registered or used the domain
name in bad faith. See
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Jonas Gulliksson, Panelist
Dated: April 10, 2008
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