Enduris LLC v.
Claim Number: FA0901001245314
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.
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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
The Complainant is the owner of the
Respondent is “an unincorporated,
not-for-profit, local government risk-sharing pool organized under
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.
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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