Heat Trace Solutions, Inc. v. Thermal Technologies
Claim Number: FA0905001265198
Complainant is Heat Trace Solutions, Inc. (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heattracesolutions.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 May 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 3, 2009.
On May 28, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <heattracesolutions.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 June 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 29, 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 June 29, 2009.
On July 2, 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.
On July 3, 2009 a timely Additional Submission in compliance with Supplemental Rule 7 was received by the Forum from Complainant.
On July 13, 2009 an Additional Submission was received by the Forum from Respondent. This was more than 5 calendar days after the receipt by the Forum of Complainant’s Additional Submission, which Complainant certified had been sent to Respondent in accordance with Rule 2(b). However, Respondent said it received Complainant’s Additional Submission for the first time by email from the National Arbitration Forum on July 6, 2009. Counting from that day, and having regard to the definition of Calendar Days, the Panel is prepared to treat Respondent’s Additional Submission as timely, in compliance with the Forum’s Supplemental Rule 7(c).
Complainant requests that the domain name be transferred from Respondent to Complainant.
For more than 30 years Disco Associates, Inc. has made and sold heat
trace equipment, which, inter alia,
regulates the temperature of residential roof panels and gutters and helps
prevent icing of fire protection systems in large commercial buildings such as
refineries and offices. Complainant was incorporated in
For a year prior to its incorporation and thereafter, Complainant has supplied its heat trace equipment under the common law trademark
A Declaration by Mr. Bain, attached to the Complaint, says that tens of thousands of brochures were sent out, beginning in 2006, for the purpose of getting the new name and products out in the industry. Examples of those brochures are provided.
Complainant cites FBomb Clothing c/o Jordan v. Domainly.com, FA 1245522, (Nat. Arb. Forum Mar. 16, 2009) as establishing that registering a business with the California Secretary of State, applying for a business license and sending invoices which use the mark was enough to establish common law trademark rights under the Policy.
Respondent’s sole principal is Mr. Mike Gurr, who became a customer of
Complainant in 2005, frequently ordering Complainant’s products and dealing
with Complainant’s personnel. He and Mr.
Bain shared a mutual friendship for several years. Subsequently, Respondent
began competing directly with Complainant in
Respondent registered the disputed domain name on December 15, 2007, with Mr. Gurr as technical contact. Since registration the disputed domain name has resolved to Respondent’s website at <tpanels.com>, which offers roofing deicing systems which compete with those of Complainant.
Complainant says the disputed domain name is confusingly similar to Complainant’s common law mark and that Respondent has no rights or legitimate interest in the disputed domain name, which was registered and is being used in bad faith.
Complainant says Respondent registered the disputed domain name with knowledge that Complainant had common law trademark rights in the disputed domain and did so for the purpose of confusing Complainant’s customers, diverting traffic intended for Complainant and depriving Complainant of the use of the disputed domain and its mark online. These circumstances establish both bad faith and the absence of rights or legitimate interests on the part of Respondent.
Respondent contests Complainant’s claim to common law trademark rights and Complainant’s assertion that Respondent was aware that Complainant was asserting such rights, saying the words “heat trace” are generic. The addition of “solutions” may make the mark descriptive but not distinctive. HEAT TRACE SOLUTIONS is incapable of acting as a common law trademark without a showing of significant secondary meaning, which Complainant has failed to do. The brochures attached to the Complaint refer to Disco Associates, Inc., not to Complainant. Although the Complaint says it attaches customer invoices, none are attached. Mr. Bain’s Declaration, attached to the Complaint, does not establish secondary meaning enuring to the benefit of Complainant.
Respondent should be considered as having rights or legitimate interests in the disputed domain name because Respondent has operated a business selling “heat trace” equipment since 2004. It elected to use a descriptive domain to expand and promote its business and has been using the disputed domain name in the bona fide offering of goods for sale over the Internet, and was doing so before it received notice of this Complaint.
Because Respondent had a legitimate reason for registering the disputed domain name and because no secondary meaning existed at that time (even if it may have since arisen), no bad faith can be found. See General Growth Properties, Inc. Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, D2003-0845 (WIPO Jan. 15, 2004) (citing John Ode d/b/a ODE and ODE - Optimum Digital Enterprises v. Internet Limited, D2001-0074 (WIPO May 1, 2007)).
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding
principle of Rule 12 enables the Panel both to disregard unsolicited
submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into
account unsolicited submissions received outside those time limits. See Darice, Inc.
In this case the Panel has had regard to the parties’ Additional Submissions.
Complainant’s Additional Submission seeks to refute claimed misrepresentations in the Response; to establish that Complainant has common law rights in its claimed mark and to re-argue its case on legitimacy and bad faith.
Complainant says the term “heat trace,” as is made clear by Wikipedia, refers to the electrical cables running the length of a pipe that produce heat when energized, not to extruded aluminum products such as those marketed by Respondent on its website. The assertion that the term “heat trace” is descriptive of Respondent’s aluminum products is further evidence of bad faith registration on the part of Respondent. The disputed domain name does not describe Respondent’s products. It merely forwards to Respondent’s website traffic which Respondent knows is meant for Complainant. In intentionally singling out and diverting traffic only from the mark HEAT TRACE SOLUTIONS to Respondent’s principal website, Respondent is acknowledging the distinctiveness of the mark.
Complainant says Respondent’s claim that it has “manufactured” and supplied “Heat Trace Products” since October 2004 is false. Annexed invoices show Respondent was, in fact, purchasing the heat trace from Complainant. Respondent is making intentional misrepresentations to the Panel when denying that Mr. Gurr has any knowledge of Complainant’s mark.
Complainant says it is undisputed that Respondent has been a long term customer of Complainant and had knowledge of Complainant’s enterprise Heat Trace Solutions, which was organized as an LLC with the Utah Department of commerce long before Respondent registered the disputed domain name. Respondent has gone to great lengths over the years to imitate Complainant’s business and steal Complainant’s trade secrets through deceptive business practices, going so far as to send an employee to Complainant to impersonate a job applicant to learn about Complainant’s operations.
Complainant says it has spent tens of thousands of dollars marketing its products using the term HEAT TRACE SOLUTIONS. Respondent is intentionally denying Complainant the use of that mark in a bad-faith effort to divert traffic to Respondent’s own competing website.
In reply to Respondent’s argument that Complainant’s Mark HEAT TRACE SOLUTIONS is generic and therefore “incapable of acting as a common law trademark without a showing of significant secondary meaning”, Complainant says the addition of the term “solutions” with an otherwise generic or descriptive term has been held regularly to produce a composite term in which trademark rights are recognized. See Network Solutions, LLC v. K.A. and Kahlid Ali, D2008-1733 (WIPO Jan. 5, 2009); Credit Management Solutions, Inc. v. Collex Resource Management, D2000-0029 (WIPO Mar. 17, 2009); FairPay Solutions, Inc. v. thedomainismine, FA 783310 (Nat. Arb. Forum Oct. 11, 2006); AdminSolutions, Inc. v. Daidalos Software Engineering, FA 098247 (Aug. 28, 2001); see also USPTO registered trademarks NETWORK SOLUTIONS (Reg. No. 2,873,572 issued Aug. 17, 2004), ENERGY SOLUTIONS (Reg. No. 3,445,190 issued June 10, 2008), COLD SOLUTIONS (Reg. No. 3,244,350 issued May 22, 2007).
It is unnecessary to set out the substance of Respondent’s Additional Submission, save to say that Respondent denies Complainant’s accusations of bad faith, as does Respondent’s employee; that Respondent denies Complainant’s narrow definition of “heat trace” and provides instances of descriptive use of the expression “heat trace solutions” by other suppliers of heat trace products, including one supplier, Nelson, whose products are featured on the Disco Associates Inc. web site.
Complainant has failed to provide sufficient evidence to establish that it has common law trademark rights in the expression HEAT TRACE SOLUTIONS.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
It has long been established, as in FBomb Clothing c/o Joel Jordan v. Domainly.com, FA 1245522 (Nat. Arb. Forum Mar. 16, 2009), cited by Complainant, that a trademark registration is not necessary to establish rights in a mark. Rather, a complainant can establish common law rights if it shows that the claimed mark has acquired secondary meaning as a source identifier of its business products and services. Hiatt v. Pers. Fan & Official Site Builders: we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007).
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent. British Heart Foundation .v. Harold A. Meyer III, AF 0957 (eResolution Nov. 13, 2001).
The less distinctive a mark (i.e.,
the more descriptive or generic are the word or words making up the mark), the
greater the scrutiny required to sustain a complainant’s assertion of common
law trademark rights. See Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Dec. 28, 2006) (citing
As stated in Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO May 3, 2001):
“The mark AMERICAN BACKGROUND is obviously descriptive of Complainant's services. Therefore, to establish common law rights, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Here, the only evidence presented is the bald claim that the mark has been used since 1992, and that Complainant’s gross sales have exceeded $7 million. The only evidence of the nature and manner of use is a web page dated January 11, 2001. Given the extremely weak character of Complainant's mark, I find that the evidence of secondary meaning is inadequate to prove any enforceable rights in the mark.”
The expression “heat trace solutions” is descriptive of a range of ways of overcoming the kind of problems (such as freezing) for which heat trace products are used. The Panel accepts the general proposition that the addition of the word “solutions” to an otherwise generic or descriptive term is capable of producing a composite term in which trademark rights may be recognized. However, of the cases cited by Complainant in support of that proposition, neither Network Solutions, LLC v. K.A. and Kahlid Ali, D2008-1733 (WIPO Jan. 5, 2009) nor Credit Management Solutions, Inc. v. Collex Resource Management, D2000-0029 (WIPO Mar. 17, 2009) concerned a mark containing the word “solutions.”
AdminSolutions, Inc. v. Daidalos Software Engineering, FA 98247 (Aug. 28, 2001) involved the registered mark ADMINSOLUTIONS. Since the mark was registered, the USPTO must have considered and accepted evidence that the mark was distinctive. In FairPay Solutions, Inc. v. thedomainismine, FA 783310 (Oct. 11, 2006) common law rights were held to have been established in the mark FAIRPAY SOLUTIONS but the decision does not describe the evidence before the Panel upon which that finding was based.
In FBomb Clothing, supra, the learned panelist accepted as establishing common law rights complainant’s registration of its fictitious business name with the San Diego County Recorder; its California State Seller’s Permit; a sample manufacturer’s invoice; and screenshots of its website as they appeared in 2002 and 2008.
Here the only evidence of use of the HEAT TRACE SOLUTIONS logo mark as depicted earlier in this decision appears on examples of brochures issued by Disco Associates, Inc.
Assuming for present purposes that the design part of the logo adds nothing by way of distinctiveness to the words, the only evidence before the Panel of use of those words by Complainant is in Annex F to the Complaint, part of a brochure which uses the words “Heat Trace Solutions & DISCO Associates, Inc” and describes them as the “Heat Trace Experts.”
The Response pointed out that there were no invoices attached to the Complaint, as claimed. In its Additional Submission, the Complainant included Invoices and Order Entry Invoice Detail Reports of Disco Associates Inc. detailing its dealings with Respondent over several years. None bore the claimed mark and none mentioned Complainant.
Complainant has provided a copy of its Utah Business Registration dated December 14, 2006 and a Declaration by Mr. Bain, the registered agent for Disco Associates, Inc, asserting that “we” had been doing business as Heat Trace Solutions for almost a year before Complainant’s incorporation; that Heat Trace Solutions assumed much of Disco Associates’ residential sales activities while its parent company Disco Associates Inc. focused on commercial sales; that in 2006 “we” began sending out tens of thousands of brochures; and that since 2006 Complainant has generated hundreds of thousands of dollars in revenue and come to be well-known in the industry.
In his second Declaration, Mr. Bain makes similar assertions.
This Panel is not prepared to accept that either Complainant or its parent, Disco Associates Inc. has established secondary meaning in the name “Heat Trace Solutions” based merely upon assertions, Annex F to the Complaint and the use by Disco Associates Inc. of a logo mark containing those words on brochures.
There is no evidence before the Panel that the words Heat Trace Solutions have become distinctive of Complainant or its products. To the contrary, there is evidence of the current use of those words descriptively by other suppliers of heat trace products.
Having found that Complainant has not presented to the Panel sufficient evidence to establish that it has common law trademark rights in the expression Heat Trace Solutions, it is inappropriate for the Panel to consider the other elements required to be proved under the Policy, since the existence or otherwise of a trademark and the other issues between the parties may come to be determined by a court.
Complainant having failed to provide sufficient evidence to establish that it has rights in a trademark; the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: July 15, 2009
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