Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc.
Claim Number: FA0910001292233
Complainant is Jahnke & Sons Construction, Inc. (“Complainant”), represented by A. Justin Poplin, of Lathrop & Gage LLP, Kansas, USA. Respondent is Trachte Building Systems, Inc. (“Respondent”), represented by Joseph W. Byrne, of Boardman, Suhr, Curry & Field LLP, Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trainingtower.com>, registered with Network Solutions, Inc.
The undersigned certifies that he 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.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2009.
On October 30, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <trainingtower.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 25, 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 November 25, 2009.
The Complainant submitted an Additional Submission on November 30, 2009, which was in compliance with Supplemental Rule 7. The Respondent submitted an Additional Submission on December 7, 2009, which was in compliance with Supplemental Rule 7.
On December 7, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant, which trades under the name of “WHP Training Towers” designs, develops and sells products and materials used for fire response. It has design and construction facilities throughout the United States and in some parts of Canada. It has traded under the name TRAININGTOWERS.COM since 2001. This mark has appeared in promotional articles in various publications in the United States. It is well-known in the emergency response industry. The Complainant purchased the domain name <trainingtowers.com> in 1997 and commenced a commercial website on August 29, 2000.
The Complainant applied to the US Patent & Trademark Office (USPTO) for federal registration of the service mark TRAININGTOWERS.COM on May 28, 2008. On March 17, 2009, the Complainant was granted registration of the service mark TRAININGTOWERS.COM on the Supplemental Register. After the mark was granted registration, the Complainant discovered that the date of the first use of TRAININGTOWERS.COM was incorrectly stated in the original application and the USPTO accepted the Complainant’s request and issued a correction on August 29, 2009. The corrected registration certificate was issued on October 6, 2009.
The disputed domain name was registered by the Respondent on March 17, 2004. The disputed domain name reroutes users to the domain name <firefacilities.com> which is owned by a subsidiary of the Respondent.
The Complainant forwarded ‘cease and desist’ letters to the Respondent’s subsidiary on April 28, 2008 and May 7, 2009. Both in a telephone conversation on May 30, 2008 and in a letter on June 19, 2009, the Respondent denied that the disputed domain name was likely to cause confusion with the Complainant’s domain name and service mark.
The Complainant alleges that the disputed domain name is confusingly similar to the service mark in which it has rights. The only difference is the fact that the disputed domain name is <trainingtower.com> whereas the Respondent’s mark is trainingtowers.com.
The Respondent has no legitimate rights or interests in respect of the disputed domain name. It is not commonly known by that name. It is a competitor of the Complainant. The Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. It is the Respondent’s subsidiary which trades under the registered service mark of FIRE FACILITIES.
The Respondent is using the disputed domain name with intent for commercial gain misleadingly to divert consumers by using a domain name with a difference of only one letter from the Complainant’s registered mark. The disputed domain name is registered and is being used in bad faith in that it reroutes internet users to the Respondent’s own domain name which advertises goods and services of a competitor to the Complainant. The Respondent’s use of the disputed domain name is an instance of typo-squatting.
The Respondent supplied a statutory declaration made under penalty by the Respondent’s Executive Vice-President and Chief Operating Officer, James N Mastrangelo.
The Respondent’s primary business is the design, manufacture and erection of durable, pre-engineered and customized steel storage systems. The Respondent has 100% interest in Fire Facilities Inc. which operates in the fire training-building industry. Like the Complainant, it manufactures products such as training towers. It uses a website located at <firefacilities.com> to advertise and market its various fire-training products.
The Respondent registered the disputed domain name long before any notice of the current dispute with the Complainant. The disputed domain name has been continuously used by the Respondent, through its wholly-owned and controlled subsidiary, since April 23, 2004. It is currently being used to market and promote its various goods and services and has been so used since that date.
The Respondent alleges the Complainant has no rights in a trade mark or service mark identical to or confusingly similar to the Respondent’s because the Complainant’s registration is merely on the Supplemental Register.
The Examining Attorney at the USPTO, on October 9, 2008, refused registration on the Principal Register because the applied-for mark merely described a characteristic of the Complainant’s services in respect of “training towers”. The Attorney noted that “training towers” is an expression commonly used to describe a type of pre-rescue training structure.
The Respondent disputes that, because of the nature of the Supplemental registration recently granted by the USPTO, the <trainingtowers.com> designation is incapable of functioning as a support indicator. It has not achieved the status of the service mark. USPTO has determined that this designation does not currently function as a service mark and is not eligible for registration on the Principal Register. The Complainant’s mark is highly descriptive, if not generic.
Paragraph 815 of the US PTO’s Trademark Manual Examining Procedure reads in part: “A mark that is clearly eligible for the principal register may not be registered on the Supplemental Register”.
The Respondent disputes that there is a common law service mark in the disputed domain name. What the Complainant submitted in support of its claim to a common law mark are several pages from its website, a listing of customers, a small sampling of advertisements and some photographs of a trade show. The Complainant’s evidence does not establish that the <trainingtowers.com> designation has acquired a secondary meaning. There is no evidence that the designation was used in providing the Complainant’s goods to any of the customers listed in the exhibits to the Amended Complaint.
The Respondent has a legitimate interest in respect of the disputed domain name. Since April 23, 2004, it has continually used and is currently using through its Fire Facilities subsidiary the descriptive domain name in connection with a bona fide offering of goods and services, namely fire-fighting products including training towers.
The Respondent did not register the disputed domain name in bad faith. It registered and is using a domain name descriptive of one of its products. It did not register the disputed domain name for the purpose of selling, renting or otherwise transferring the registration to the Complainant or a competitor of the Complainant. It registered the disputed domain name for its own use and as a bona fide offering for the sale of its own goods and services, including training towers. It did not register the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, nor has it engaged in such a pattern of conduct. Nor has it registered the disputed domain name for the purposes of disrupting the business of the Complainant or a competitor.
C. Complainant’s Additional Submissions
The Complainant disputes the Respondent’s proposition that the mark TRAINING TOWERS.COM has not achieved the status of service mark. It quotes s.23 of the Lanham Act which, states, inter alia “that registration of a mark on the Supplemental Mark shall not constitute an admission that the mark has not acquired distinctiveness”. Registration of a mark on the Supplemental Register does establish that the Complainant has rights – See Consumernet Inc d/b/a Car Buying Tips v Car Buying Tips Inc. aka William Dearn (FA 158428 NAF July 15, 2003). Evans and Sutherland v Real Image (FA 96112 NAF Jan 29, 2001).
The Complainant goes into some detail of its dealings with the USPTO which do not need to be examined closely in view of the decision to which the Panel has come, i.e. that the Complainant has shown that it has a legitimate interest in the disputed domain name.
In essence, the Complainant disputed the Examining Attorney’s view noted earlier. The USPTO did not issue a ruling that the mark would not be registered in the Principal Register based on acquired distinctiveness. The USPTO accepted the Complainant’s request for registration on the Supplemental Register. The Complainant asserts that this registration shows that the mark is not generic, since generic marks are incapable of registration.
Redirecting users to another web page does not constitute legitimate rights or interests and is not a bona fide offering of goods and services – See HSI Fire & Safety Group LLC v Sid Inc. (FA 1266583 NAF July 14, 2009). There is no direct association between the Respondent and the disputed domain name which is one by which the Respondent has never been known. Typosquatting diverts internet users who inadvertently misspell the Complainant’s domain name and is likely to cause confusion. It constitutes bad faith.
D. Respondent’s Additional Submissions
The Respondent repeats the assertion that TRAININGTOWERS.COM does not achieve the status of a service mark. It bears no burden of proof, whereas the Complainant has the burden of proving legitimate trade mark or service rights in the disputed domain name.
Under UDRP precedent, federal supplemental registrations of themselves convey no trade mark or service mark rights upon the registrant – see Elizabeth Blair and Jennifer Miner and Caro Williams v. Shannon Lane (FA 0909001285345 NAF November 13, 2009) where the panel remarked that the only registration cited was the Supplemental Register which carries little, if any, weight under federal law. Also, Lodging Kit Company Inc. v. Natalie Soffer (FA 0909001283398 NAF November 5, 2009) saying, that without showing a secondary meaning, the complainant’s registration on the Supplemental Register does not confer rights in a mark for the purposes of the Para. 4(a)(i) of the Policy
Other NAF cases were cited as well as McCarthy on Trademarks, para. 19.36: “It has been held that a Supplemental Registration confers no substantive trademark rights beyond those under common law. Section 26 of the Lanham Act expressly excludes Supplemental Registrations from certain advantages gained by registration on the Principal Register. For example, the fact that a term is registered on the Supplemental Register does not entitle it to any statutory presumption that the term is a trademark and not a generic name: “In fact, it is not prima facie evidence of anything except that the registration issued”.
The attempt to prove a common law mark has not succeeded. The designation is merely descriptive of the Complainant’s services and is a generic term.
The Complainant’s web pages are littered with descriptive textual references to training-tower products. Both parties use the term “training towers” to describe their respective goods and services. The term is highly descriptive, if not generic, as was alluded to by the Examining Attorney in the trademark application. As was said in the Lodging Kit Company case, where a designation is a highly descriptive term “a party seeking to establish exclusive rights carries a heavy burden of proof for removing the term from the public domain”.
The Respondent again analysed the documents offered by the Complainant and submitted that they did not show enough evidence of a common law mark. It noted that there was no affidavit or declaration from the Complainant attesting to the significance of the evidence. There was no evidence of advertising expenditure or any recognition of TRAININGTOWERS.COM as a source indicator, no evidence of surveys or of the nature and extent of advertising, or of media recognition.
Even if the Complainant had shown that it has common law trademark rights now, it has not proved that it had those rights at the time when the Respondent registered the disputed domain name in 2004.
(a) The Complainant has no rights in a mark which is confusingly similar to the disputed domain name.
(b) The Respondent’s use of the disputed domain name constitutes a bona fide offering of goods and services which it has conducted since it acquired the disputed domain name on March 17, 2004.
(c) The Complainant has not proved that the disputed domain name was registered in bad faith.
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 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 and is being used in bad faith.
Authority from the leading text on trademark law in the United States shows that Supplemental Registration such as that the Complainant has for TRAININGTOWERS.COM does not per se confer trademark rights.
The Panel adopts those decisions under the Policy which have held that registration of a mark on the Supplemental Register is not evidence that a complainant owns rights that come within the meaning of “rights” in Para. 4(a)(i) of the Policy – See, for example, a decision of a very experienced 3-person panel in CyberTrader, Inc. v. Gregory Bushell (WIPO Case D2001-1019) and a thorough examination of the authorities in First American Real Estate Solutions L.P. v. Manila Industries, Inc. (NAF FA0607000758614).
This Panel adopts the reasoning of the Panel in the latter case in not following a decision which held that registration on the Supplemental Register did indicate sufficient rights under para. 4(a)(i) of the Policy. That decision, Action Sports Video v. Reynolds (WIPO Case D2001-1239) seems out of step with the preponderance of recent decisions on the point such as Elizabeth Blair & Jennifer Miner & Kara Williams & Shannon Lane (NAF – FA0909001285345) and Martha Stewart Living Omnimedia Inc. v. Joe Perez (NAF – FA0904001259275) and Advance News Service Inc. v. Vertical Axis, Inc / Religionnewsservice.com (WIPO D2008-1475).
It is of note in this case, as in the Advance News service decision, that the USPTO initially was not inclined to allow registration on the Principal Register. The Complainant, while contesting the Examining Attorney’s view, elected not to pursue registration on the Principal Register and elected registration on the Supplemental Register.
Even if Supplemental Register registration is not sufficient proof of a mark in which the Complainant has rights, it is still open to the Complainant to prove that it has a common law trademark.
The Complainant’s evidence of a common law trademark is meager and does not come within the normal standard of proving such a right. There was no statutory declaration filed on behalf of the Complainant to support its contentions.
The mark is for a product frequently used in fire-fighting training and which is manufactured by both the Complainant and the fully-owned subsidiary of the Respondent. The expression “training tower” applies to product sold by both parties.
Nor does the Panel find that the Complainant’s use of the expression TRAININGTOWERS.COM has acquired the necessary secondary meaning and distinctiveness to justify the finding of a common law mark. A party seeking to establish exclusive rights in a highly descriptive name carries a heavy burden of proof in removing the term from the public domain. See the Lodging Kit Company decision (cit. supra).
The detailed analysis presented in the Respondent’s Additional Submission satisfies the Panel that the Complainant has not shown “the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition” found necessary in other decisions under the Policy, e.g. Molecular Nutrition Inc. v. Network News and Publ’ns (NAF FA 0305000156715).
See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), Para 1.7 which notes that a complainant alleging a common law mark must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Recognised evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
The evidence produced by the Complaint does not come within this prescription. For example, only 78 advertisements were shown over nine years.
The Panel does not consider it relevant that the disputed domain name is owned by the parent company of the fire-fighting training equipment manufacturer.
Accordingly, the Panel concludes that there is insufficient evidence to show the Complainant has rights in a mark for the purposes of Para. 4(a)(i) of the Policy. Therefore, the Complaint must fail on this ground alone.
The Complaint must also fail on the other two limbs of Paragraph 4(a) of the Policy.
The Respondent has established that, since March 17, 2004, it has conducted business selling fire-fighting training equipment under the name “Training Tower”. There is insufficient proof of the Complainant’s reputation as at 2004 to show that it then had a reputation sufficient to justify a common law trademark, whatever the position might be now.
Although it is not strictly necessary to make
a finding in view of the Panel’s view on
The Complainant has given no explanation for its delay in filing the Complaint since the disputed domain name was registered five and a half years previously. Laches is not a defence under the Policy but a complainant’s delay of this dimension makes bad faith registration hard to prove.
Paragraph 3.5 of the WIPO Overview states that a domain name can not be registered in bad faith because a registrant could not have contemplated the complainant’s non-existent right. However, where the respondent is clearly aware of the complainant and the aim of the registration is to take advantage of the confusion between the disputed domain name and any potential future complainant rights, bad faith can be found. However, that situation has not been proved in this case.
The Complainant is required to prove separately both bad faith registration and bad faith use of the disputed domain name. In the Panel’s view, there is insufficient evidence to enable an inference of bad faith registration to be drawn.
Accordingly, the Complainant has not satisfied Para. 4(a)(iii) of the Policy.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, Panelist
Dated: December 22, 2009
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