Spacesaver Corporation v.
The Marvel Group, Inc.
Claim Number: FA0903001250368
PARTIES
Complainant is Spacesaver Corporation (“Complainant”), represented by David
H.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalweaponracks.com>,
registered with Godaddy.com, Inc.
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.
Alan L. Limbury as Panelist.
PROCEDURAL HISTORY
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 postmaster@universalweaponracks.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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).
FINDINGS
The
DISCUSSION
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.
The
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.
DECISION
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
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum