Pacific Bearing Corp. v.
Pacific International Bearing Sales Inc
Claim Number: FA0812001238265
PARTIES
Complainant is Pacific Bearing Corp. (“Complainant”), represented by Alexander
J. Mezny, of Holmstrom & Kennedy, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pacificbearingsales.com>, registered
with Network
Solutions, Inc.
PANEL
The undersigned certify 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.
G. Gervaise Davis, III, Anne M. Wallace, Dr. Reinhard Schanda, Chair,
as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 15, 2008.
On December 12, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <pacificbearingsales.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 December 18, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 7, 2009 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@pacificbearingsales.com
by e-mail.
A timely Response was received and determined to be complete on January 7, 2009.
On January 14, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed G. Gervaise Davis, III, Anne M. Wallace, Dr.
Reinhard Schanda, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has trademarked “Pacific Bearing” and
“Pacific Bearing Co.” in connection with sales of bearings. These marks have
attained to status of “incontestable” pursuant to 15 USC 1065. According to
Complainant such registration of the trademark and the reflection of this mark
in an active domain name is conclusive evidence of Complainant’s exclusive
rights in the mark for the goods and services listed in the registrations, and
displayed on the Internet. As a result, the validity of the Complainant’s
rights may not be challenged on the grounds that the mark is merely
descriptive.
The domain name at dispute is confusingly similar to “Pacific Bearing”
and “Pacific Bearing Co.” in that: 1) they are virtually identical; 2) they
both contain the same industry designation (“Bearing”) and a common distinctive
characterization (“Pacific”, which has also acquired secondary meaning and has
become descriptive as a result of Complainant’s long use of the name); 3)
customers led to <pacificbearingsales.com>
by a search engine or ad placement result would reasonably believe it to be a
website ultimately owned by Pacific Bearing Corp. and have actually so believed
and acted on that belief; 4) customers attempting to purchase from Complainant
or attempting to contact Complainant’s sales department might reasonably enter
the website designator <pacificbearingsales.com>.
According to Complainant the incorporation of a trademark in its entirety is
sufficient to establish that a domain name is identical or confusingly similar
to the Complainant’s registered mark.
Complainant registered its trademark of Pacific Bearing Co. in 1992.
Respondent was not even incorporated until 1997 and did not register <pacificbearingsales.com> until
August 18, 1999.
Both companies sell similar – and in many cases, identical – products
and also advertise in the same manner.
Complainant focuses on linear motion bearings; as such, these
Respondent’s products are competitive with approximately sixty-five percent
(65%) of Complainant’s sales.
If Respondent desired only to sell bearings on the internet and did not
have the intent to mislead Complainant’s customers, it would use “<pacificinternationalbearing.com>”
rather than “<pacificbearingsales.com>.”
Respondent is not known as “Pacific Bearing Sales.” As a result, the
Respondent is not making a legitimate non-commercial or fair use of the domain
name. This use of “<pacificbearingsales.com>”
is not very different from AltaVista of Yahoo! Search using “<googlesales.com>”
as a web address.
Complainant further contends that Respondent had actual notice of Complainant’s use of the “Pacific Bearing” and “Pacific Bearing Co.” marks. Respondent embedded the name “Pacific Bearing” in its web page as the sixth “Keyword” hidden on its web page to draw Pacific Bearing Corp.’s customers to its web site.
Complainant’s website had 80,667 visits and 511,640 page views in 2007.
The fact that Respondent chose “<pacificbearingsales.com>”
over “<pacificinternationalbearing.com>” indicates it had actual
knowledge and the bad-faith intent to disrupt the business of Complainant by
diverting customers and sales from Complainant. By using the domain name <pacificbearingsales.com>, the
Respondent intentionally attempted to attract, for commercial gain, internet
users to the Respondent’s website and also attempted to create a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of the Respondent’s website. A Google search at <google.com>
on February 5, 2008 for pacific bearing sales returned <pacificbeaeringsales.com> as the first result. A Google
search at <google.com> on February 5, 2008 for pacific bearing returned <pacificbeaeringsales.com> as the
third result.
Further “Pacific Bearing” and “Pacific Bearing Co.” are nationally
famous terms of which Respondent had actual knowledge. While Complainant makes
many direct sales (in part due to its website), Complainant has 158
distributors in
Further Respondent is also deemed to have had constructive notice of
Complainant’s prior registration, due to its trademark registrations. Where a
trademark search on the date of registration of the domain names would have
revealed Complainant’s registrations, a respondent has constructive notice of
the trademark. According to Complainant actual or constructive knowledge of the
Complainant’s rights in a trademark is a factor supporting bad faith.
Complainant
further contends that Respondent offered to stop using this website designator
but has failed to consummate its agreement.
B. Respondent
Respondent contends that it uses the domain name <pacifibearingsales.com> to promote sales in its core business. The domain name was created on August 18,
1999 and was last updated on February 26, 2008.
According to Respondent the terms “Pacific Bearing” and “Pacific
Bearing Co.” are not to be confused with <pacificbearingsales.com>
since the well settled test for likelihood of confusion weighs the following
factors: strength of the mark; proximity of the goods; similarity of the marks;
evidence of actual confusion; marketing channels used; type of goods and the
degree of care likely to be exercised by a purchaser; defendant’s intent in
selecting the mark; and the likelihood of the expansion of product lines. When
the goods produced by the alleged infringer compete for sales with those of the
trademark owner, infringement usually will be found if the marks are
sufficiently similar that confusion can be expected. When the goods are
related, but not competitive, several other factors are added to the calculus.
If the goods are totally unrelated, there can be no infringement because
confusion is unlikely.
According to Respondent a strong mark is inherently distinctive, for example, an arbitrary or fanciful mark; it will be afforded the widest ambit of protection from infringing uses. An example of such a mark is Xerox, Exxon, or the Nike Swoosh, neither term on its own related to the product. It cannot be reasonably argued that Pacific Bearing is an arbitrary or fanciful mark.
“Pacific Bearing” and “Pacific Bearing Co”
are at best descriptive, and therefore are only protected if they have acquired "secondary meaning."
When trying to determine whether a given term has acquired
secondary meaning, courts will often look to the following factors: (1) the
amount and manner of advertising; (2) the volume of sales; (3) the length and
manner of the term's use; (4) results of consumer surveys. Complainant
offers no evidence that of secondary meaning, instead offers only a conclusory
statement of such. There is absolutely
no evidence that the general public or consumer of bearings identifies the term
Pacific and Bearing exclusively with Complainant. Indeed the affidavit of Robert Schroeder
offers no evidence on the volume of sales, the length and manner of the term’s
use or any customer surveys. There is no
evidentiary connection between the assertion that
Complainant has many distributors to a secondary meaning. The statement without more is wholly
conclusory and bereft of any affirmative evidence on this issue.
The core business of Respondent is the sales of radial ball
bearings. Respondent also sells
castings, stampings and sophisticated machining. Respondent is a complex integrated sales
organization. Respondent advertises in
addition to its other product lines, the availability of linear products as a
distributor for several manufacturing companies. Linear products are a very small portion of
the overall sales of Respondent.
Respondent distributed and sold product for Complainant until November
2008 when it was informed of Complainant’s unilateral decision that it would no
longer sell product to Respondent.
Linear bearings are used in applications which require generally precise movements running parallel to the axis of a linear shaft. Many times the shaft is stationary and the movement of the linear bearing is provided by an independent source. Respondent does not sell to the "user" market.
Radial bearings are used in the widest variety of applications and by
far dominate over 95% of all "bearing applications. Radial bearings run
perpendicular to a rotating shaft. Radial bearings have the widest market
appeal because they are capable of both radial and thrust load carrying
capabilities.
Those companies whom Respondent represents offer the same ratio of
products to the market place. INA Bearing for example offers at least 95% of
its products in bearing products other than linear products and so do most of
the companies for which Respondent distributes.
Complainant has no particular right to try and stop other companies from
marketing linear bearing products. They were not the first company and
certainly do not dominate that market by any means.
Respondent is an importer and distributor for
numerous high precision bearing products made in Europe and
Respondent cannot compete for business with Complainant for three
reasons, 1) Respondent has no expertise in linear bearings, and 2) the
applications for linear bearings require design and engineering which
Respondent does not offer for linear bearings and 3) most importantly and from
a practical real use business perspective,
Respondent cannot offer other products as an alternative to Complainants
Simplicity products because selling through Respondent would not be a cost
effective alternative for the customer.
Simply put: Complainant and Respondent sell two distinctly different
product lines and sell to two distinctly different markets.
Complainant has offered inadequate
evidence establishing any confusion by the public. Indeed, it has offered evidence of only two
customers that contacted Complainant when they were looking for
Respondent. Two customers in the 17
years the two businesses have been in operation cannot by any consideration be
considered evidence of confusion. As set
forth above, the two businesses are entirely different. Complainant is a manufacturer of linear
bearings. Respondent distributes radial
bearings.
Again, the two companies have different core businesses, and therefore
share no markets. More importantly, Complainant
has offered no evidence on this issue.
In assessing the likelihood of
confusion to the public, the standard used by the courts is the typical buyer
exercising ordinary caution. Here the customer base of both companies is very
sophisticated. The customer seeks a specific
bearing for a specific use. Respondent is an importer and distributor for
numerous high precision bearing products made in Europe and
A
search of the term “pacific bearing” on Yahoo showed that Complainant is the
second, fourth, fifth, sixth and seventh result. The first result is an unrelated company Igus, that sells linear bearings and plastic products. A
search of the terms “linear bearing” performed on Yahoo also show that Igus is
the first result followed by Complainant.
Complainant is also the 9th listing on the page. A search of the term
“linear bearings” performed on Google again show that Igus is the first
result. Complainant is listed 6th. Respondent does not appear on the page.
Indeed Respondent does not appear on in the first 6 pages. A search of the term “Pacific Bearing”
performed on Google showed that Complainant is the first hit, and dominates the
page. Finally a search of the term “simplicity bearing” performed on Google
showed that Complainant is the very first hit, followed by distributors of the
product. Respondent has proffered
clear evidence that a customer looking for product of complainant will find
same with little difficulty.
Respondent further contends that “Pacific International Bearing Sales,
Inc.,” has been registered with the California Secretary of State since July 2,
1997. Complainant’s trademark, “Pacific Bearing Corp.” is not included in the
domain name and the other trademark, “Pacific Bearing,” has a registration date
1999 and precedes the registration date of “Pacific Bearing,” which is August
31, 1999. Therefore, Respondent did not
have constructive notice of this trademark and Complainant did not have any
“rights” to the name, “Pacific Bearing,” when the domain name was
registered.
Contrary to Complainant’s unfounded allegations, Respondent did not “attempt or mislead customers of Complainant.” Respondent registered and used the domain name in connection with a bona fide offering of goods and services as evidenced by the current website. There was no deliberate attempt by Respondent to register the disputed domain name in bad faith by using “Pacific Bearing” in its domain name as both words appear in its own company name and as mentioned earlier, all three words comprising the domain name appear in Respondent’s registered company name.
Respondent
distributes for several large manufacturers, such as
As a result Respondent has a legitimate interest in the disputed domain
name. Respondent is making fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the
Complainant’s trademark, “Pacific Bearing.”
It has the name, “Pacific International Bearing, Inc.” name emblazoned
in large font as the website headline banner on each page of the domain name as
well as the company name and contact information in
To prevail in a domain name dispute under the UDRP, the Complainant
must prove that the disputed domain name "has been registered and is
being used in bad faith."
None of the four circumstances listed in Paragraph 4(b) of the Policy
are present in this case. The
Complainant’s mark was registered after the registration of the domain name in
August 1999, even assuming for arguments sake that the Panel agrees the mark
“Pacific Bearing Co.” is sufficient, due to the weak nature of the mark,
Respondent did not have appropriate notice of it and therefore did not have the
requisite bad faith to sustain a transfer of the domain name.
Pacific International Bearing
Sales has been registered to conduct business in Alameda County California for
over 18 years. Respondent incorporated as Pacific International Bearing Sales,
Inc., on July 7, 1997. On August 18,
1997 Respondent commenced using the domain name
<www.pacificbearingsales.com>. At
no time has Respondent ever attempted to interrupt the business of Complainant,
or seek to obtain customers that would have otherwise sought business from
Complainant. Respondent and Complainant
has been in operation serving their respective clients with no problems since
1990. Respondent is authorized to
conduct business under the following fictitious names:
1) Pacific International Bearing Sales, Inc;
2) PIB; 3) PIB Sales; and 4) PIBS.
Respondent has its address clearly on each webpage. It is located in
FINDINGS
The Panel finds that:
1.
the Domain Name <pacificbearingsales.com>
is confusingly similar to the
Complainant’s marks.
2.
the
Respondent has established rights and legitimate interests in the Domain Name <
pacificbearingsales.com > and
3. the Respondent has not registered and is
not using the Domain Name
<
pacificbearingsales.com > in bad faith.
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.
The Panel finds that Complainant has rights in the
PACIFIC BEARING CO. mark (Reg. No. 1,681,783, issued April 7, 1992) due to its
registration with the United States Patent and Trademark Office (“USPTO”). 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.”).
Complainant contends that Respondent’s <pacificbearingsales.com> domain name is confusingly similar to its PACIFIC BEARING CO. mark. The <pacificbearingsales.com> domain name differs from Complainant’s mark in two ways: (1) the term “co.” has been removed from the mark; (2) the descriptive term “sales” has been added to the end of the mark; and (3) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that the addition of a descriptive term does not render a domain name clearly dissimilar to a mark which it incorporates, nor does the deletion of a term that identifies Complainant as a specific type of entity. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Further, the Panel finds that the addition of a gTLD does not sufficiently distinguish a domain name from the mark it incorporates, because every domain name must include a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel is of the view that these changes of the PACIFIC BEARING CO. mark do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s <pacificbearingsales.com> domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <pacificbearingsales.com> domain names is comprised of
common and descriptive terms and as such cannot be found to be confusingly
similar to Complainant’s mark, the Panel finds that such a determination is not
necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only
whether Complainant has rights in the mark and whether the disputed domain name
is identical or confusingly similar to Complainant’s mark. See Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007)
(finding that because the complainant had received a trademark registration for
its VANCE mark, the respondent’s argument that the term was generic failed
under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s
argument that each individual word in the mark is unprotectible and therefore
the overall mark is unprotectible is at odds with the anti-dissection principle
of trademark law.”).
While Respondent contends that Complainant's trademark registration
with the USPTO does not grant exclusive rights to the mark, the Panel finds
that this argument is inapplicable under Policy ¶ 4(a)(i)
as this portion of the Policy does not require Complainant to demonstrate
exclusive rights in a mark. See Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require the complainant to demonstrate ‘exclusive rights,’ but only that the
complainant has a bona fide basis for making the complaint in the first
place); see also Auto. Racing Prod., Inc. v. Linecom, FA 836787 (Nat.
Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark
registration established its rights in the mark under Policy ¶ 4(a)(i)).
The Panel holds that Complainant has not established a prima facie
case in support of its arguments that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See Terminal
Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent contends that it is commonly known by the terms
constituting the <pacificbearingsales.com>
domain name, as the terms “Pacific,” “Bearing,” and “Sales” all
appear in Respondent’s name. The Panel
notes that the WHOIS information lists Respondent as “Pacific International Bearing Sales Inc.” The Panel is of the view that Respondent is
commonly known by the <pacificbearingsales.com>
domain name pursuant to ¶ 4(c)(ii). 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).
Respondent
also contends that it is using the <pacificbearingsales.com>
domain name in connection with a bona
fide offering of goods and services under ¶ 4(c)(i), as it is maintaining a website at that domain name in which
Respondent is advertising and selling its products. Respondent also contends that Respondent’s
products do not actually compete with Complainant’s products, as they are
different kinds of bearings. The Panel
accepts Respondent’s assertions, and the Panel is of the view that Respondent is using the <pacificbearingsales.com>
domain name in connection with a bona
fide offering of goods and services under ¶ 4(c)(i).
See Funskool (India)
Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000) (finding a bona
fide use of the <funskool.com> domain name where the respondent
submitted an article that indicated that the respondent had been using the
similar <funschool.com> domain name to resolve to a popular gaming
website for school children prior to notice of the dispute); see also Modern Props, Inc. v. Wallis,
FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s
operation of a bona fide business of online prop rentals for over two years
was evidence that the respondent had rights or legitimate interests in the
disputed domain name).
Respondent contends that the <pacificbearingsales.com> domain name is comprised entirely of common terms to which Complainant does not have exclusive rights. The Panel determines that the disputed domain name contains commonly-used terms and that this indicates that Respondent, as well as Complainant, have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See LifeWatch Holding Corp. v. Network Earth, Inc., FA 96301 (Nat. Arb. Forum Jan. 26, 2001) (finding that Respondent could establish rights or legitimate interests in the <lifewatch.com> domain name where Complainant’s identical LIFEWATCH mark was composed of generic and descriptive terms, Respondent provided evidence that it was preparing to launch multiple websites providing a variety of “watch” services, and Respondent’s domain name provided a service unrelated to Complainant); see also iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the respondent had rights and legitimate interests in the <aleads.com> domain name because it used the term “leads” in the generic sense to refer to the sale of leads over the Internet).
The Panel finds that Complainant failed to meet the 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).
Since the Panel concludes that
Respondent has rights and legitimate interests in the <pacificbearingsales.com>
domain name pursuant to Policy ¶ 4(a)(ii),
the Panel also finds that Respondent did not register or use the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate
interests in the disputed domain name, his registration is not in bad faith.”).
Respondent also contends that it has only been using the <pacificbearingsales.com> domain name in a good faith effort to promote and conduct its business online, and that it has no business reason to attempt to mislead customers of Complainant. The Panel finds that Respondent’s registration and use of the <pacificbearingsales.com> domain name has not been in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business); see also DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).
Respondent contends that the <pacificbearingsales.com> domain name is comprised entirely of common terms to which Complainant does not have exclusive rights. The Panel determines that the disputed domain name contains commonly-used terms and that this indicates that Respondent did not register and use the <pacificbearingsales.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
DECISION
Because Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
G. Gervaise Davis, III, Anne M. Wallace, Dr.
Reinhard Schanda, Chair, Panelists
Dated: January 28, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum