National Arbitration Forum




San Benito Shutter, Inc. v. Texas International Property Associates - NA NA

Claim Number: FA0807001215424



Complainant is San Benito Shutter, Inc. (“Complainant”), represented by Michael J. Hughes, of IPLO Intellectual Property Law Office, California, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.



The domain name at issue is <>, registered with Compana, LLC.



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.


Sandra J. Franklin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2008.


On July 16, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 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 by e-mail.


A timely Response was received and determined to be complete on August 18, 2008.


On August 26, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



            A.  Complainant makes the following assertions:


Respondent’s <> domain name is confusingly similar to Complainant’s SAN BENITO SHUTTER and design mark.


Respondent uses the <> domain as a host site linking various other sites, including some belonging to competitors of Complainant.


Respondent registered and used the <> domain name in bad faith.


B. Respondent makes the following assertions:


Complainant had to disclaim the entire phrase “San Benito Shutter” in its trademark registration, due to descriptiveness.


Respondent has rights and a legitimate interest in the <> domain name.


Respondent registered and is using the <> domain name in good faith, following a legitimate business model.



Complainant holds a U.S. Trademark Registration for SAN BENITO SHUTTER and design, issued in December, 2001.  The registration shows a shutter design and disclaims the words “SAN BENITO SHUTTER.”   Respondent registered the <> domain name in October 2005, and uses the domain as a host site linking to various other sites pertaining to shutters and/or to the geographical destination San Benito.



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


In its Complaint, Complainant states that it has a U.S. Trademark Registration for the mark San Benito Shutter and design.  It also refers to its company name San Benito Shutter, Inc. and its website at the <> domain name.  It did not allege or provide any information as to the extent of its use of the name.  Complainant generally claims use of the name, but also agreed in its trademark registration not to claim the exclusive right to use the words “SAN BENITO SHUTTER.”  In the face of such a disclaimer, this Panel cannot find that Complainant has defensible rights in those words.  Complainant’s U.S. Trademark Registration is for a design, which by itself cannot be the subject of rights or confusion in a domain name dispute, since designs are not discernible in domain names. 


Respondent’s argument that the terms of the disputed domain name are generic and geographically descriptive are borne out by a reading of the disclaimer requirement in the trademark file for Complainant’s registration, provided by Respondent. 


         This Panel finds that Complainant has not met its burden of showing rights in the words “SAN BENITO SHUTTER,” and therefore has no legitimate claim to the <> domain name.  See Game X Change, Inc. v. Modern Empire Internet Ltd., FA 1155839 (Nat. Arb. Forum May 6, 2008) (“the words ‘Game Exchange’ have been disclaimed together and ‘Game Exchange’ is essentially the entire substance of the disputed domain name.  Once the disclaimed expression has been discounted, there is nothing left in the trademark with which there can be said to be confusing similarity”); see also Minibar N. Am. Inc. v. Musk, D2005-0035 (WIPO Mar. 2, 2005) (“The words ‘Minibar Systems’ have been disclaimed together and ‘Minibar Systems’ is essentially the entire substance of the Domain Name.”).


To prevail, Complainant must establish all three required elements under the Policy.  Having failed to establish the very first element, the Complaint fails.



Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.



Sandra J. Franklin, Panelist
Dated:  September 9, 2008







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