Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds
Claim Number: FA0804001179369
Complainant is Gettysburg Flag Works, Inc. (“Complainant”), represented by Nicholas Mesiti, of Heslin Rothenberg Farley & Mesiti, P.C., New York, USA. Respondent is Precision Marketing Solutions, Inc. and Jeffrey Reynolds (“Respondent”), represented by Howard M. Neu, of Law Office of Howard M. Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gettysburgflags.com>, registered with Fabulous.com Pty Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Sandra J. Franklin, Esq., Kendall C. Reed, Esq., and the Honorable Ralph Yachnin, (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2008.
On April 22, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <gettysburgflags.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 May 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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 firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on May 21, 2008.
An Additional Submission was received from Complainant on May 23, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on May 28, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On May 28, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sandra J. Franklin, Esq., Kendall C. Reed, Esq. and the Honorable Ralph Yachnin, (Ret.) as Panelists.
Complainant requests that Respondent’s Domain Name be transferred from Respondent to Complainant.
Respondent is in violation of the policy with respect to Respondents registration and use of the disputed domain name.
Complainant, Gettysburg Flag Works, Inc., has been providing quality flag products and design services for fifteen (15) years. Complainant’s extensive use of the mark GETTTSBYRG FLAG in connection with its goods and services had created an association in the minds of the consumers between the mark and Complainant’s products.
Complainant is the owner of the United States Trademark Registration No. 3,286,141 for the mark GETTYSBURG FLAG.
Respondent is a corporation incorporated under the name of Precision Marketing Solutions, Inc. Respondent operates its business under the name of <americanflags.com>, as well as the corresponding website, www.americanflags.com.
Respondent and Complainant are competitors in the industry of selling flags.
Respondent registered the domain name corresponding to its own business in 1998.
Respondent registered the disputed domain name in 2004. Respondent’s only use of the disputed domain name has been to redirect consumers to its own competing website, <americanflags.com>.
Respondent is not in violation of the Policy with respect to Respondent’s registration and use of the disputed domain name.
Respondent is a major retailer of American flags, state flags, city flags, world flags, historic flags and military flags. From its web site, Respondent supplies flags to the U.S. military, schools, corporations, retail stores, churches, charitable and historic groups and consumers.
Respondent owns more than 100 generic flag-related domain names including <pennsylvaniaflags.com>, <georgiaflags.com>, <marylandflags.com>, and many other states all of which were registered in 2004. Respondent also owns several flag-related generic names including <flagkits.com>, <antiqueflags.com> and <oldflags.com>, all of which are designed to attract customers to those particular products on its web site.
Respondent registered the disputed domain name because of Gettysburg, Pennsylvania’s history, as it maintains a unique place in American History. Respondent registered this domain to sell historic flags marking the Civil War and not because there was an obscure store located in Albany, New York named Gettysburg Flag Works, of which Respondent had no knowledge before the claims recently made herein by Complainant. In that connection, Respondent sells flags that were both popular during the Revolutionary War and the Civil War including General Lee’s Headquarters Flag, the Bonnie Blue Flag, the 33-star Flag, the 34-star Flag and the 35-star Flag.
The expression “Gettysburg flag” is generic. The Gettysburg Flag is a 34-star flag with two major design versions. The official one is offered on Respondent’s web site while the other one is sold by a third party on eBay. There have also been several attempts by the City of Gettysburg, Pennsylvania, to adopt an official Gettysburg Flag. Upon adoption by the citizens of Gettysburg, Respondent will also carry that flag on its web site.
Respondent registered the disputed domain name before Complainant filed a trademark application for the mark GETTYSBURG FLAG, and for this reason Complainant had no rights under the Policy with respect thereto.
C. Complainant’s Additional Submission
Respondent’s argument that it registered the disputed domain name before Complainant applied for a registered trademark, and therefore it is not in violation of the policy, is not correct. Complainant used the mark GETTYSBURG FLAGS in commerce since at least as early as August 30, 1993, and such usage is sufficient to establish its rights to the mark for purposes of the policy prior to Respondent’s registration of the disputed domain name.
Respondent is incorrect when it argues that the phrase “Gettysburg flag” is generic and thus the domain name in dispute is a generic flag-related domain name.
Respondent’s assertion that it was unaware of Complainant’s Trademark at the time Respondent registered the disputed domain name is not credible.
Respondent argues that it registered the disputed domain name because of Gettysburg, Pennsylvania’s historic history as it maintains a unique place in American History” and “to sell historic flags marking the Civil War.” Yet, Respondent only recently started offering a 34-star flag for sale, as the archived versions of Respondent’s website from as late as August of 2007 show only eight (8) historic flags on sale, and a 34-star flag is not one that is for sale. Respondent only began selling a 34-star flag after Complainant contacted Respondent and explicitly asserted its rights in the GETTYSBURG FLAG mark. It was in August 2007 that Complainant obtained the registration for the mark GETTYSBURG FLAG and it was immediately after the registration that Complainant contacted Respondent asserting its rights in the mark.
Respondent has not registered any other domain names that also exude historical significance to attract customers seeking historic flags. For example, Respondent has neither registered nor is using any other domain names incorporating the names of other significant Civil War battles for its asserted purpose. The following domain names are not even registered: <williamsburgflag.com>; <williamsburgflags.com>; <harpersferryflag.com>; <harpersferryflags.com>; <fortsumterflag.com>; and <fortsumpterflags.com>.
D. Respondent’s Additional Submission
At no time prior to Claimant’s federal registration of the trademark GETTYSBURG FLAG did Complainant make any claim to Respondent that Respondent was infringing on Complainant’s “common law” trademark.
The expression “Gettysburg flag” is indeed a generic term.
Respondent’s registration and use of the disputed domain name was part of an overall business strategy pursuant to which respondent has registered domains for state, city, world, historic, military and other types of flags on a continuing basis, Gettysburg being just one of a portfolio of domain names the products of which are and have been sold on Respondent’s website since its inception.
The Panel has reviewed the parties’ submissions and based thereon makes the following factual findings:
1. Complainant and Respondent are competitors within the Internet environment and otherwise with respect to selling flags of various sorts, including national and state flags.
2. Both Complainant and Respondent market and sell flags by way of the Internet.
3. Complainant is the owner of United States trademark registration number 3,286,141 for the mark “GETTYSBURG FLAG” (“Complainant’s trademark”). This registration issued on August 28, 2007. The recited goods and services are: fabric flags and banners, paper flags and banners, and plastic flags and banners. This registration recites August 30, 1993 as the date of first use with respect to fabric flags and banners.
4. Complainant began contacting Respondent in September 2007 in an effort to cause Respondent to stop using the disputed domain name.
5. Respondent did not have on its website and did not offer to sell on its website a thirty-four star American flag until after August 2007.
6. Respondent has not registered domain names relating to specific civil war battles except for Gettysburg.
7. Complainant has used Complainant’s trademark continuously in commerce since 1993 in connection with at least the sale of fabric flags and banners.
8. Complainant registered the domain name <gettysburgeflag.com> on December 21, 1999.
9. Respondent registered Respondent’s domain name on October 4, 2004.
10. Respondent’s corporate name is “Precision Marketing Solutions, Inc.”
11. Respondent registered the domain name <ameircanflags.com> on June 17, 1998, and since that time has done business on the Internet through a corresponding domain name.
12. Respondent has at all times used the disputed domain name to redirect to its website at <americanflags.com>.
The Panel further finds that the disputed domain name is confusingly similar to Complainant’s trademark, Respondent has no rights or legitimate interest with respect to the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
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 disputed domain name is confusingly similar to Complainant’s trademark, “GETTYSBURG FLAG.” The disputed domain name differs from Complainant’s trademark in only two particulars, namely the addition of the letter “s” and the top level domain indicator “.com,” neither of which is sufficient to create a meaningful distinction for purposes of the Policy. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also 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).
Respondent argues that it registered the disputed domain name several years prior to the date on which Complainant filed for and thereafter received Complainant’s trademark, and therefore Complainant had no rights for purposes of paragraph 4(a)(1) of the Policy at the time Respondent registered the disputed domain name. However, the Panel finds this argument unpersuasive. The Panel finds that Complainant did have trademark rights for purposes of the Policy as of the date on which Respondent registered the disputed domain name, October 4, 2004. This decision is based upon two factors. Firstly, this decision is based on the date of first use for fabric and paper flags within Complainant’s trademark registration, which is August 30, 1993. 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.”). Secondly, this decision is based on the evidence supplied by Complainant about its continuous use of Complainant’s trademark in commerce since 1993, including without limitation Complainant’s use of its domain name <gettysbergflag.com> since 1999, which was five years in advance of Respondent’s registration of the disputed domain name. See Allard Enterprises, Inc., v. Advanced Programming Resources, Inc., 146 F. 3d 350, 46 U.S.P.Q. 2d 1865 (6th Cir. 1998)(“One of the bedrock principles of trademark law is that trademark or service mark ownership is not acquired by federal or state registration. Rather, ownership rights of flow only from prior appropriation in actual use in the market”). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Rights or Legitimate Interests
Respondent does not have rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name or a name that is similar in any way. Respondent’s name is Precision Marketing Solutions, Inc., and the disputed domain name is <gettysburgflags.com>. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Additionally, Respondent does not have rights and legitimate interest in respect of the disputed domain name because Respondent is using the disputed domain name to divert customers from Complainant. Respondent and Complaint are competitors in the narrow field of marketing and selling flags. Given this narrow field, and given that Complainant has been in operation since 1993 and has been using its domain name <gettysburgflag.com> since 1999, this Panel finds that Respondent had actual or constructive knowledge of Complainant at the time Respondent registered the disputed domain name and thereafter when it used the disputed domain name. Further, Respondent’s use of the disputed domain name, which differs from Complainant’s trademark only in the use of the letter “s” and the top level domain designator “.com,” and which redirects to Respondent’s website at the domain name <americanflags.com>, would necessarily divert customers from Complainant to Respondent. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Respondent argues that it does have rights or legitimate interest in respect of the disputed domain name for two reasons. Firstly, Respondent’s use of the disputed domain name is in furtherance of its legitimate business of supplying flags to the US military, schools, corporations, retail stores, churches, charitable and historic groups and consumers. Secondly, Respondent is not attempting to divert Complainant’s customers through use of the disputed domain name, and this for the following reasons: Respondent did not know about Complainant or Complainant’s trademark at the time Respondent registered the disputed domain name; Respondent cannot be using the disputed domain name to divert Complainant’s customers because the expression “Gettysburg flag” is generic; and Respondent and Complainant are not competitors because Respondent sells to a worldwide market and Complainant sells to a highly localized market in upstate New York.
This Panel is not persuaded by these arguments.
Certainly the sale of flags is a legitimate business, but this is insufficient.
As noted above, this Panel believes that Respondent had either actual or constructive knowledge of Complainant and in its trademark rights at the time Respondent registered the disputed domain name, and therefore Respondent’s selection of the disputed domain name could not have been innocent.
The Panel is not persuaded that the expression “Gettysburg flag” is a generic expression. The evidence provided by Respondent in support of its argument that the expression is generic is insufficient, consisting of assertions that the expression is generic, mentioning that a GOOGLE search on the term yielded 200,000 hits, and identifying a number of eBay offerings under this rubric. This is balanced unfavorably against Complainant’s evidence that the expression “Gettysburg flag” is not a generally recognized expression, consisting of an absence of authority acknowledging or recognizing the existence of a “Gettysburg Flag.”
Finally, this Panel finds that Respondent and Complainant are competitors notwithstanding the fact that, but for the Internet, Respondent may have a larger geographic market than Complainant. For present purposes, the geographic scope of the parties’ respective markets are in fact defined by the Internet, which is by its very nature worldwide, and as such, the scope of the respective geographic markets for purposes of the Policy are not different.
Registration and Use in Bad Faith
Respondent’s registration and use of the disputed domain name was in bad faith. As is discussed above, Respondent’s use of Respondent’s domain name was for the purpose of diverting Internet users from Complainant’s website to Respondent’s website, which constitutes bad faith under the Policy. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Further, Respondent has intentionally created, with actual or constructive notice of Complainant and its trademark rights, a substantial likelihood of confusion regarding the source of the Respondent’s Domain Name and corresponding website. As such, it is likely that Internet users would interchange and confuse the disputed domain name and Complainant’s domain name, which reflects Complainant’s identical mark. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Additionally, Policy ¶ 4(b) is non-exclusive about what constitutes evidence of bad faith. This Panel finds that two additional factors in this situation constitute evidence of bad faith, or are at least supportive of a finding of bad faith. The first of these additional factors is that Respondent did not offer a 34-star flag until after Complainant obtained federal registration for Complainant’s trademark and after Complainant contacted Respondent about the disputed domain name. The Panel finds that this demonstrates that Respondent’s explanation that the disputed domain name was registered to attract those interested in the “Gettysburg Flag” was created after the fact, which this Panel finds is evidence of bad faith, or is at the least supportive of a finding of bad faith.
The second of these additional factors is that Respondent does not have other domain names reflecting other significant Civil War battles, which this Panel finds demonstrates that Respondent did not register the disputed domain name “to sell historic flags marking the Civil War.” Rather, it appears that here too this explanation was created after the fact, which this Panel finds is evidence of bad faith, or is at the least supportive of a finding of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gettysburgflags.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin,
Esq., Kendall C. Reed, Esq., and the Honorable Ralph Yachnin, (Ret.), Panelists
Dated: June 10, 2008
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