Enduris LLC v.
Claim Number: FA0901001245314
PARTIES
Complainant is Enduris LLC,
(“Complainant”) represented by Karen Koster Burr, of Allen,
Dyer, Doppelt, Milbrath & Gilchrist, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enduris.us>, registered with Godaddy.com,
Inc.
PANEL
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.
Prof. Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on January 29, 2009;
the Forum received a hard copy of the Complaint on February 9, 2009.
On January 30, 2009, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the domain name <enduris.us> 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 the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On February 12, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 4, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on March
3, 2009.
On March 11, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Prof. Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name registered by the Respondent
is identical to Complainant’s trademark in violation of usTLD Policy ¶ 4(a)(i)
and that the Respondent has no rights or legitimate interests in the disputed
domain name. Complainant further asserts that Respondent registered and is
using the disputed domain name in bad faith.
B. Respondent
Respondent contends that the domain name is not confusingly similar to
a trademark or service mark in which the Complainant has rights in violation of
usTLD Policy ¶ 4(a)(i). Respondent further asserts
that it has legitimate rights and interests in respect of the domain name and
that the registration and use of the disputed domain has not been in bad faith.
FINDINGS
The Complainant is the owner of the
Respondent is “an unincorporated,
not-for-profit, local government risk-sharing pool organized under
DISCUSSION
Paragraph 15(a) of 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant has established rights in the
ENDURIS mark through its
The panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) then the burden shifts to the Respondent to show that
it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Complainant asserts and Respondent admits that it was
commonly known as Washington Government Entity Pool (WGEP) until at least as
early as March 1, 2008 when Respondent changed its name to Enduris
However Respondent has provided evidence of the registration of its ENDURIS
In
addition, Policy ¶ 4(c)(ii) provides that rights or
legitimate interests can be shown by Respondent’s use of the domain name in
connection with a bona fide offering
of goods or services. Further Policy ¶ 4(c)(iv)
provides that a legitimate noncommercial or fair use of the domain name without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue is proof of rights to and legitimate
interest in a disputed domain name. Complainant has offered no proof that
Respondent adopted its domain name with the intent to commercially gain at
Complainant’s expense or otherwise divert any customers from Complainant.
Indeed as Complainant is engaged in the field of outdoor products and Respondent
is engaged in risk sharing services for local government agencies there is no
claimed or apparent overlap between the customers served by each entity. As Respondent has been operating its insurance
business under the WGEP name as well as its recently state registered trademark
and trade name ENDURIS WASHINGTON for at least a year, Respondent’s use of the
domain name as a non-profit risk-sharing service for local government agencies
in the state of Washington satisfies the requirements of the policy. See Warm
Things, Inc. v. Weiss,
D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent was making a bona
fide offering of goods or services at the <warmthings.com> domain
name as the respondent was operating in a field unrelated to the complainant or
its products); see also Graman USA Inc. v. Shenzhen Graman Indus.
Co., FA 133676 (Nat.
Arb. Forum Jan. 16, 2003) (finding that the respondent could maintain rights in
a similar mark as the complainant because the complainant and the respondent
were not in the same field of business, and therefore not competitors).
Complainant’s
argument that Respondent’s procurement of the domain name after Respondent’s
admitted knowledge of the Complainant’s ENDURIS mark and related registered
domains precludes Respondent from being able to acquire any rights or
legitimate interests in any available domain names reads too much breadth into
the scope of Complainant’s rights. Registering a trademark and a related domain
name for one or more TLD extensions can not be read as cutting off everyone
else’s rights in the same or similar marks in all other TLD extensions. While a
famous mark may be given expanded protection under certain circumstances, the
owner of a fanciful mark, as the Complainant characterizes the mark in question
to be, must normally purchase the actual cyber-property if the owner wants to
claim the right to exclude others. Complainant’s references to Respondent’s failure
to mitigate confusion presuppose the presence of confusion or the likelihood
thereof neither of which are supported by the proofs
provided in this matter. Further, issues of confusion and mitigation are
inapplicable to Policy ¶ 4(a)(ii) of the usTLD Policy.
The
Panel finds that Policy ¶ 4(a)(ii) has not been
satisfied.
Registration
and Use in Bad Faith
Complainant’s argument that Respondent’s actual or constructive knowledge of its existing trademark rights proves bad faith is unavailing. Complainant fails to prove that its mark is famous and Respondent’s use is causing any harm which Complainant seems unable to do since Respondent’s use is in another completely different field of business. Because Respondent has established rights and legitimate interests in the disputed domain name there can be no showing of registration and use in bad faith. 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.”). While a decision to register a domain name that does not specifically match one’s own trademark but is identical to the registered trademark of another is certainly grounds for criticism and often a basis for proving bad faith that behavior alone is not indefensible. When the disputed domain name is part of the registrants mark and is used for purposes different than the Complainant’s registered mark the UDRP proceedings can not be used to act for Complainant’s benefit where the Complainant decided, by not purchasing the domain in dispute, to act for himself. A Complainant has no duty to register domain names in every available TLD but it is up to the Complainant and not the UDRP panel to decide which TLD’s the Complainant is at least initially entitled to.
The panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
DECISION
As Complainant has failed to establish all three of the elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Prof. Darryl C. Wilson, Panelist
Dated: March 25, 2009
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