Curt Manufacturing, Inc. v. George Sabin
Claim Number: FA0808001220025
Complainant is Curt Manufacturing, Inc. (“Complainant”), represented by Jeffrey
D. Shewchuk, of Shewchuk IP Services, LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <curt-mfg.com>, registered with Godaddy.com, Inc.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2008.
On August 12, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <curt-mfg.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 August 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 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 September 2, 2008.
An Additional Submission was received from Complainant on September 5, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 9, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.
On September 4, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first asserts that the domain name is identical or confusingly similar to a mark in which it has rights. Complainant’s “Curt” mark is wholly incorporated in the domain name, and Complainant’s website, <curtmfg.com> is virtually identical to the name, the sole exception being a hyphen, which must be ignored for this purpose. Complainant asserts rights in the mark since at least 1993. The “CURT” mark has received a federal trademark. Complainant next contends that Respondent has no rights or legitimate interests in the name. Specifically, Complainant asserts that Respondent’s domain name, which is virtually identical to that of Complainant, is being used to confuse Internet users and deceive them concerning the origin or source of the content of the website, which is extremely critical of Complainant’s products. Complainant contends that the name is not being used for any bona fide offering of goods and services, and its sole purpose is to harm Complainant’s products and create confusion among Internet users. Additionally Complainant asserts that the name is not being used for a noncommercial use since it appears to invite others who might be injured by Complainant’s products to contact a lawyer for purposes of filing a lawsuit. Finally, Complainant contends that the name was registered and is being used in bad faith, because Respondent is intentionally using the name to attract, possibly for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and website. As stated above, Complainant notes that because of the manner in which Respondent’s website criticizes Complainant’s products, it may be that Respondent is hoping to solicit one or more users for an individual or class action lawsuit against Complainant.
Respondent contends that the domain name is a parody, and the parody is
fully protected by the First Amendment. More specifically, Respondent claims
that one of Complainant’s hitch products failed, and nearly caused a fatal
accident on a congested freeway. The purpose of the website, according to
Respondent, is noncommercial and educational, namely advising
interested persons about the problems with Complainant’s products. While not
specifically engaging in an analysis of whether the name is identical or
confusingly similar to Complainant’s mark, Respondent contends that the name does
not cause confusion, because anyone who visits Respondent’s website will
clearly see that the content was not created by Complainant. Respondent also
points out that a disclaimer has been placed on the website advising visitors
that it is not affiliated with Complainant. Respondent also challenges the
jurisdiction of the National Arbitration Forum in this proceeding, as well as
the ability of Complainant’s counsel to appear in
C. Additional Submissions
In its Additional Submission Complainant asserts that Respondent has
not presented any facts to support its position. Complainant also notes that on
Respondent’s website there is a note to send an e-mail to what appears to be a
law firm website, <oklaw.us>. This suggests that visitors to Respondent’s
website who might have potential legal claims against Complainant could contact
that law firm. Complainant asserts further that the name is not a parody or
so-called gripe site such as <walmartsucks.com>. Citing Dykema Gosett PLLC v. DefaultData.com and Brian
Wick, FA 97031 (Nat. Arb. Forum May 29, 2001). Complainant states that
while parody and criticism are certainly permitted as part of the content of a
website, the domain name itself must be identifiable as parody, such as
<walmartsucks.com,” not <walmart.com>. In the Dykema case, the respondent registered as a domain name <dykemagossett.com>.
In its Additional Submission Respondent asserts that only the “CURT” mark has been trademarked, not “curtmfg” so that the domain name is not confusingly similar to the mark. Respondent reiterates that the website is a parody, as well as educational news, protected by the First Amendment.
The Panel finds that: the domain name is identical to, or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the name; and that the name was 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.
The domain name is clearly identical to or confusingly similar to the mark. The mark is wholly incorporated in the name. The addition of the generic “mfg” does not in any manner erase the confusion. So too, hyphens are ignored for this purpose. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). Additionally, the registered trademark “Curt” is clearly sufficient to provide rights in the mark for Complainant. The Panel therefore finds that the name is identical to or confusingly similar to a mark in which Complainant has rights.
Respondent is not commonly known by the name, and Respondent has not shown that it is using the name for the bona fide offering of goods or services. Respondent contends that it has an absolute right under the First Amendment to parody or criticize Complainant’s products, and of course that is true. However, prior panels have recognized that there is a difference between placing critical or satiric content on a website, which is clearly permissible, and identifying oneself as the Complainant in the domain name, which is not. As the panel explained in Monty & Pat Roberts, Inc. v. Keith D2000-0299 (WIPO June 9, 200): “The Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant… However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.” The same applies here. As noted in summarizing Complainant’s contentions, the panel in the Dykema case, which is quite similar to this one, reached the same conclusion. In that case the respondent used the name of a law firm as its domain name, without adding an additional phrase such as “sucks.” The panel determined there that even if the purpose of the website was to criticize or parody lawyers, the respondent could not identify itself as the law firm in the domain name. Additionally the Panel finds that the invitation to contact a law firm reveals a commercial purpose for the use of the domain name. Thus, the name is being used, for commercial gain, to divert Internet users from Complainant’s site to Respondent’s site through use of an extremely confusing and virtually (save the hypen) identical domain name. For these reasons the Panel determines that Respondent has no rights or legitimate interests in the name.
As noted above, the Panel determines that Respondent is attempting to cause likely confusion among Interest users as to the source of the domain name and Complainant’s website. It is using the name to divert Internet users, possibly for gain from lawsuits filed against Complainant, by confusing Internet users who may be searching for Complainant’s website. For this reason the Panel holds that the name was registered and is being used in bad faith. See Allianz of Am. Corp. v. Bond FA 680624 (Nat. Arb. Forum June 2, 2006). While Respondent contends that there is no bad faith in that its sole intent is to criticize Complainant’s products, activity which is protected by the First Amendment, the Panel determines that this freedom of speech applies to the content of the website, not to the domain name. As the panel stated in Diners Club Int’l Ltd. v. Infotechnics Ltd. FA 169085 (Nat. Arb. Forum Aug. 20, 2003): “Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.” This would be a different case if Respondent’s domain name were <curtmfgsucks.com> or something similar. But it is not. For these reasons the Panel determines that the name was registered and is being used in 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 <curt-mfg.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: September 23, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum