Limbinator LLC v. The LIMBHOG Company, LLC
Claim Number: FA0911001292445
Complainant is Limbinator, LLC (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <limbinator.com>, <limbinator.net>, <limbinatorsaw.com>, <limbinatorsaws.net>, and <thelimbinator.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2009.
On November 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <limbinator.com>, <limbinator.net>, <limbinatorsaw.com>, <limbinatorsaws.net>, and <thelimbinator.com> domain names are 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 November 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 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, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 3, 2009.
Additional submissions were received on December 29, 2009, and January 5, 2010, and considered on December 10, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, Limbinator, LLC, hereinafter (“Complainant”) seeks
transfer of the domain names <limbinator.com>, <limbinator.net>, <limbinatorsaw.com>, <limbinatorsaws.net>, and <thelimbinator.com>, (“Limbinator domain names”), from
Respondent The LIMBHOG Company, LLC, (“Respondent”). Complainant contends that it begain its
commercial business selling hydraulic chain saws, and incorporated as a limited
liability company in Oklahoma on November 19, 2008. Complainant operates at limbinatorsaws.com
and advertises its services online. Complainant sells its chainsaws
pursuant to a non-exclusive license from purported patent holder Wendell
McCracken who provided Complainant with a non-exclusive license to sell saws
with certain features. Complainant
includes a letter from Mr. McCracken, without declaration. Complainant’s
saws bear the mark Limbinator and are advertised at trade shows across the
Complainant contends that it has continually used the mark since sometime in 2008, has sold hundreds of chainsaws nation wide, spending thousands of dollars in advertising on the internet, distributing thousands of mailers, sending thousands of emails and maintaining its website showcasing the mark in association with its products and services. Complainant contends that the mark Limbinator saws has become distinctive and well known in the chainsaw industry and associated with Complainant. Complainant contends that the mark has become famous and Complainant has acquired secondary meaning to the mark.
Complainant contends that Respondents engaged in bad faith registration and use of the disputed domain name based upon its marketing of products similar to those of Complainant, deliberately confusing customers and potential purchasers of the Complainant and stealing internet traffic in commerce meant for Complainant. Complainant further contends that Respondent has not been commonly known by the disputed domain names prior to Complainant, and Respondent has not carried on any legitimate business under the disputed domain names. Complainant contends that the disputed domain names wholly encompass the term Limbinator in which Complainant has common law rights and seeks transfer of all the domain names.
The Respondent contends in response that
Complainant’s Principal William Frank Casey, and Respondent formed a
limited liability company in June 2008, for the purpose of selling
hydraulically powered chainsaws. Respondent
contends that on November 18, 2008 the parties entered into an agreement
whereby Mr. Casey sold all of his right, title and interest in the LLC to Mr.
Capers. Respondent contends
that the following day, Mr. Casey immediately began a new venture marketing and
selling hydraulically powered extension chainsaws in competition with Mr. Capers business. On
January 30, 2009 Mr. Capers filed a lawsuit in the district court of
C. Additional Submissions
In Complainant’s additional submission, Complainant contends that the lawsuit filed by Respondent
in State court of Oklahoma does not involve the issues before the panel, and
that Respondent makes misrepresentations regarding the
subject matter of the
The Panel finds that Complainant has failed to establish that it has a registered trademark, or that it is the owner of a mark in which it has acquired secondary meaning sufficient to meet its burden of proof under UDRP Policy ¶4(a)(i). Since Complainant has failed to meet its burden to establish the first element of the Policy, the Panel need not analyze the other two elements of the Policy, and the relief requested by the Complainant is denied.
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.
Complainant’s only reference to any other court proceedings was that “Respondent tried in early 2009 to sue Complainant for trade secret theft and had its case dismissed unless Respondent would post a bond to cover Complainant’s attorney fees as the Court viewed the litigation to be frivolous.”
Respondent contends in its Response
that the disputed domain name at issue is the subject matter of pending
litigation in the
In situations where concurrent
court proceedings are pending, the panel may choose to proceed with the
arbitration filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb.
Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule
18(a) of the Policy “since the legal proceedings referred to by the parties
appear to be concluded and Orders made.
Moreover,… those Orders do not touch directly on the disposition of the
disputed domain name or on the parties’ intellectual property rights.”); see also Western Florida Lighting v. Ramirez,
D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite
concurrent court proceedings because “the Panel does not find that it is
necessary or advantageous to await a judicial determination of the issues raised
in the federal litigation in order to reach a decision strictly under the
Policy. This administrative proceeding
under the Policy concerns only control of the Domain Name, not any of the other
remedies at issue in the federal litigation.
It is not binding on the court, and it does not preclude the prosecution
of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v.
Preliminary Issue #2: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent contends that William
Frank Casey (“Casey”) is the principal owner of Complainant, Limbinator, LLC,
and that James Capers (“Capers”) is the principal owner of Respondent, The
LIMBHOG Company, LLC.
Respondent further asserts that Casey and Capers together formed C&C
Adventures, LLC (“Adventures”) in June 2008.
The purpose of Adventures, according to Respondent, was to develop and
market a hydraulically powered extension chain saw product. Respondent alleges that Casey registered the
<limbinatorsaws.com> domain name on November 5, 2008 in connection with
this objective. On November 18, 2008,
Casey and Capers entered into an agreement whereby Casey sold all of his
interests in Adventures to Capers.
Respondent asserts that the very next day, Casey started a new venture marketing and selling a hydraulically powered
extension chainsaw product in competition with the product sold by
Adventures. Respondent contends that
Capers filed a lawsuit in the
Complainant makes no mention of any business or contractual relationship in its Complaint. The only mention of any connection between Casey and Capers is contained in the Declaration of Dawn Casey, Casey’s wife, which is attached as Annex C to the Complaint. The Declaration mirrors the general assertions that Respondent made and indicates that there was some sort of a dispute between Casey and Caper over the patent rights relating to the hydraulic chainsaw.
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. The Panel finds that there is insufficient evidence of a relevant contract for it to not decide the dispute under the UDRP. Thus, the Panel proceeds with the case and considers the contentions of Complainant and Respondent as outlined below. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant does not hold a registration for the LIMBINATOR mark. However, the Panel may find that Complainant need not hold a registration for this mark in order to establish rights in the mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights through a sufficient showing of secondary meaning in the LIMBINATOR mark identified with Complainant. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
However, Policy ¶ 4(a)(i) requires more than a showing of mere standing, a showing of secondary meaning is required to demonstrate a complainant has achieved common law rights in the mark in question. See Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO April 3, 2001) (the complainant must prove secondary meaning in the mark); see also Snowboards-for-sale.com, Inc. v. Name Admin. Inc., D2002-1157 (WIPO Feb. 19, 2003) (complainant must prove secondary meaning to meet the requirement of Policy ¶ 4(a)(i)). To support a finding of secondary meaning, a panel may consider factors such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. These factors are considered in conjunction with all of the evidence and the nature of the claimed mark (i.e. whether it may be generic or descriptive). See Amsec Enterprs., supra; see also Control Techniques Ltd. v. Lektronix Ltd, D2006-1052 (WIPO Oct. 11, 2006) (citing the WIPO Overview of Panelist Decisions to find that “Relevant 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.”).
Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to sufficiently establish rights that rise to the level of secondary meaning identified with Complainant in the mark during the relevant time period. Thus, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish at least one of three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <limbinator.com>, <limbinator.net>, <limbinatorsaw.com>, <limbinatorsaws.net>, and <thelimbinator.com> domain names not be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: January 18, 2010
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