Spacesaver Corporation v. The Marvel Group, Inc.
Claim Number: FA0903001250368
Complainant is Spacesaver Corporation (“Complainant”), represented by David
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalweaponracks.com>, registered with Godaddy.com, Inc.
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2009.
On March 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <universalweaponracks.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 March 5, 2009 the National Arbitration Forum informed the Complainant of certain deficiencies in the Complaint. On March 9, 2009 the Complainant submitted an amended Complaint.
On March 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 30, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 30, 2009.
On April 9, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant manufactures and sells weapons racks to law enforcement
agencies and the
The Respondent also manufactures and sells weapons racks that are substantially identical to the Complainant’s products. The Complainant asserts that the Respondent has had actual and constructive notice of the Complainant’s mark since at least 2004. The disputed domain name was registered on August 10, 2007. It leads to a website promoting the Respondent’s weapons racks using the word UNIVERSAL.
The Complainant says the disputed domain name <universalweaponracks.com> consists of the name of the Complainant’s product, the UNIVERSAL weapons rack, with the letter “s” transposed from the second word to the third.
The Complainant says the disputed domain name is identical or confusingly similar to its trademark; that the Respondent, which is not affiliated with the Complainant nor authorized to use its mark, and which is not selling the Complainant’s products by means of the domain name but rather its own, should be considered as having no rights or legitimate interests in respect to the domain name; and that the domain name should be considered as having been registered and being used in bad faith by reason of its use of the Complainant’s mark, within the Policy, ¶ 4(b(iv).
The Complainant seeks the transfer to itself of the disputed domain name.
In response to the requirement of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), ¶ 3(xi) that the Complaint identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the Complaint, the Complaint says “None”. The Complainant, through its attorney, certified that the information contained in the Complaint is, to the best of the Complainant’s knowledge, complete and accurate.
The Respondent says the abovementioned certification is false. The Respondent exhibits a copy of a Complaint in Civil Action No. 09-CV-95 filed against the Respondent by the Complainant (through the same attorney by whom it is represented in this administrative proceeding) in the United States District Court for the Western District of Wisconsin on February 20, 2009, claiming inter alia cyberpiracy by the use of the disputed domain name and seeking an order that ownership of that domain name be transferred to the Complainant.
The Respondent has also exhibited its Answer, Affirmative Defenses and Counterclaim(s) in those proceedings, filed on March 27, 2009. It seeks inter alia cancellation of any trademark registration that may issue consequent upon the Complainant’s pending application because the word “UNIVERSAL” does not and cannot function as a trademark in connection with weapon racks and because any such registration would have been procured by fraudulent or false means in the USPTO.
The Response also denies the Complainant’s contentions. It is unnecessary to set out this part of the Response. The Respondent seeks dismissal or suspension of these proceedings under the Rules, ¶18(a).
The Rules, ¶18(a) provide that in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.
Having considered the submissions of the parties and in particular the concurrent court proceeding and the false certification in the Complaint, I conclude that the Complaint was brought primarily to harass the domain name holder.
Pursuant to the Rules, ¶ 18(a) the Panel dismisses this proceeding.
Pursuant to the Rules, ¶ 15(e), the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Alan L. Limbury, Panelist
Dated: April 22, 2009
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