Jahnke & Sons
Construction, Inc. v. Trachte Building Systems, Inc.
Claim Number: FA0910001292233
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@trainingtower.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
(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.
DISCUSSION
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.
DECISION
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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