Eastern Metal Supply, Inc. v.
Claim Number: FA0812001238822
PARTIES
Complainant is Eastern Metal Supply, Inc. (“Complainant”), represented by Evan
D. Brown, of Hinshaw & Culbertson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <easternmetalsupply.com>, registered
with Compana,
LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
CLIVE ELLIOTT as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 15, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 18, 2008.
On December 17, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <easternmetalsupply.com> domain name
is registered with Compana, LLC and that
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 December 23, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 12, 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@easternmetalsupply.com
by e-mail.
A timely Response was received and determined to be complete on January 12, 2009.
On 21 January 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Clive Elliott as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
1. Complainant
Complainant states it was founded and incorporated in
Complainant has asserted common law rights in its mark predating Respondent’s registration of the disputed domain name. Complainant contends Respondent’s <easternmetalsupply.com> domain name is identical to Complainant’s EASTERN METAL SUPPLY mark.
Complainant contends Respondent is not commonly known by the disputed domain name. Complainant maintains the WHOIS information lists Respondent as “Texas International Property Associates – NA NA,” and Respondent has not made a claim that it is commonly known by the disputed domain name.
Complainant has provided evidence in the form of a screen shot that Respondent is using the disputed domain name to display links to third-party websites, some of which compete with Complainant’s business. Complainant alleges Respondent receives compensation for its use of the confusingly similar disputed domain name.
2. Respondent
2.1 Respondent contends that the <easternmetalsupply.com> domain name is comprised of common, geographical and descriptive terms and as such cannot be found to be identical to Complainant’s mark. Respondent argues that the common terms in the domain name have many meanings apart from use in Complainant’s EASTERN METAL SUPPLY mark and that Complainant does not have an exclusive monopoly on the terms on the Internet.
2.2
Respondent maintains Complainant has not
provided sufficient evidence of secondary meaning in its EASTERN METAL SUPPLY
mark. In particular, Respondent contends
Complainant has not provided any evidence of sales invoices, advertisements or
revenues beyond Complainant’s Declaration from its CIO.
2.3
Respondent thus
asserts Complainant has not established common law rights in its EASTERN METAL
SUPPLY mark prior to Respondent’s March 25, 2005 registration of the disputed
domain name.
2.4
Respondent alleges Complainant is trying to
hijack the disputed domain name, which Respondent has operated for the past
four years. Respondent contends
Complainant has not established rights in its mark predating Respondent’s
registration of the disputed domain name and thus Complainant was aware
Respondent would prevail under the Policy.
FINDINGS
Having considered the Complaint, and given
the comments made below, the Panel finds that:
(1) relief
by way of the domain name being transferred from Respondent to Complainant is
denied; and
(2) Respondent’s
allegation of reverse domain name hijacking by Complainant is not made out.
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.
Respondent alleges that the <easternmetalsupply.com> domain name is comprised of generic terms. This point has merit. However, this argument is not directly applicable to Policy ¶ 4(a)(i), but will be discussed in greater detail in the analyses of Policy 4(a)(ii) and (iii).
More to the point, Respondent maintains Complainant has simply not provided sufficient evidence of secondary meaning in its EASTERN METAL SUPPLY mark. In particular, it contends Complainant has not provided any evidence of sales invoices, advertisements or revenues beyond Complainant’s Declaration from its CIO. This contention is well made. The Panel finds Complainant has not provided sufficient information to support its common law rights, if any, in the EASTERN METAL SUPPLY mark under Policy ¶ 4(a)(i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
Complainant thus fails to establish the first part of the test required under the Policy.
Respondent argues that the terms of the <easternmetalsupply.com>
domain name are geographical, generic
and of common use and therefore, Complainant does not have an exclusive
monopoly on the terms on the Internet. The
Panel accepts that the contested domain name is comprised of common terms, and
concludes that Respondent can establish rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope
Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004)
(finding that the respondent was using the <kaleidoscope.com> domain name
for a bona fide offering of goods or services because the term was
“generic” and respondent was using the disputed domain name as a search tool
for Internet users interested in kaleidoscopes); see also Qwest
Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s
rights in the QWEST mark are limited to its application to the
tele-communications industry,” where a variety of other businesses used the
mark in unrelated fields).
Respondent asserts Complainant has not established common law rights in
its EASTERN METAL SUPPLY mark prior to Respondent’s March 25, 2005 registration
of the disputed domain name. Having
found that Complainant has not established common law rights in its mark prior
to Respondent’s registration, Panel finds Respondent has rights and legitimate
interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See
Warm Things, Inc. v. Weiss,
D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or
legitimate interests in a domain name when its registration of that domain name
occurred before the complainant had established rights in its alleged mark); see also
Latent Tech. Group, Inc. v.
Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the
respondent does have a legitimate interest in the domain name where the
complainant applied for registration of the mark after the respondent
registered the domain name and the complainant has not proven any earlier use
of the mark).
This ground is not established by
Complainant.
Having found that Respondent has
rights or legitimate interests in the <easternmetalsupply.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.”).
The Panel further finds that
Respondent has not registered or used the <easternmetalsupply.com> domain
name domain name in bad faith because it finds that Respondent has not violated
any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that
would constitute bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001)
(finding that where the respondent has not attempted to sell the domain name
for profit, has not engaged in a pattern of conduct depriving others of the
ability to obtain domain names corresponding to their trademarks, is not a
competitor of the complainant seeking to disrupt the complainant's business,
and is not using the domain name to divert Internet users for commercial gain,
lack of bona fide use on its own is insufficient to establish bad
faith); see also 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 respondent registered and used the
disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent contends, with some justification, that the <easternmetalsupply.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s EASTERN METAL SUPPLY mark. The Panel determines that the disputed domain name contains commonly-used terms and that this indicates that Respondent did not register and use the <easternmetalsupply.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).
Respondent questions Complainant’s motives in
bringing this complaint.
Complainant has asserted common law rights in its mark predating Respondent’s registration of the disputed domain name. The Panel finds Complainant brought this Complaint based on a bona fide belief that it might prevail under the Policy. On this basis the Panel determines Complainant has not engaged in reverse domain name hijacking. See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (rejecting the respondent’s assertion of reverse domain name hijacking because there was no evidence that the complainant was using the Policy other than to declare its rights); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“The Panel concludes that Complainant did not begin this action in bad faith and that there is no support for reverse domain name hijacking.”).
Even if the Panel should find that Complainant
has failed to satisfy its burden under the Policy, this does not necessarily
render a finding of reverse domain name hijacking on behalf of Complainant in
bringing the instant claim.
On this basis any allegation of reverse
domain name hijacking is not established.
DECISION
Having not established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED. Equally, it is found that the allegation of
reverse domain name hijacking is not made out.
Clive Elliott, Panelist
Dated: 2 February 2009
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