Light Sources, Inc. v. Interlectric Corporation
Claim Number: FA1005001324913
PARTIES
Complainant is Light Sources, Inc. (“Complainant”), represented by George A. Pelletier, of Cantor Colburn LLP, Connecticut, USA. Respondent is Interlectric Corporation (“Respondent”), represented by Neal R. Devlin, of Know McLaughlin Gornall & Sennett, P.C., Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightsources.com>, registered
with NETWORK SOLUTIONS, LLC.
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 14, 2010.
On May 17, 2010, NETWORK SOLUTIONS, LLC
confirmed by e-mail to the National Arbitration Forum that the <lightsources.com> domain name
is registered with NETWORK SOLUTIONS, LLC and that Respondent
is the current registrant of the name. NETWORK
SOLUTIONS, LLC has verified that Respondent is bound by the NETWORK
SOLUTIONS, LLC 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 May 19, 2010, the Forum served the
Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of June 8, 2010 by which Respondent could file a Response to the
Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
postmaster@lightsources.com by e-mail. Also on May 19, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be deficient on June 8, 2010 because the Response was received without the
annexes separate from the Response.
On June 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Debrett G. Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant asserts trademark rights in the expression LIGHT SOURCES and
alleges that the disputed domain name is identical to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests
in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed
domain name in bad faith.
B. Respondent
Respondent broadly denies Complainant’s allegations in a Response which was adjudged by the Forum not to be in compliance with ICANN Rule 5(a). However for reasons which follow the Panel has exercised its discretion to consider the Response in spite of that deficiency.
Respondent submits that Complainant’s trademark and the disputed domain
name are generic since they are composed of the same, purely descriptive
terms. Respondent alleges that
Complainant has no exclusive right to those terms and therefore has no relevant
trademark rights.
Additionally, Respondent is critical of Complainant’s claim to common
law rights in LIGHT SOURCES said to be established through use. Respondent contends that Complainant’s evidence
of use is insufficient to prove secondary trademark meaning in an otherwise
descriptive and non-distinctive term.
FINDINGS
So far as relevant to the Discussion which follows, the factual
findings are that:
1.
Complainant
manufactures and sells lamps and other illumination devices.
2.
Complainant
has advertised those goods for sale under the trademark LIGHT SOURCES (or,
LightSources) since 1983.
3.
Respondent
has manufactured and sold devices for lighting since 1939.
4.
Respondent
registered the disputed domain name in 1995.
5.
There is
no relationship between the parties.
DISCUSSION
Response was submitted without the Annexes
separated from the Response and so did not comply with ICANN Rule 5(a). The Panel has discretion whether or not to
accept and consider this Response. Given
the technical nature of the non-compliance[1],
the fact that Complainant has not been prejudiced by the non-compliance, and
the fact that Response is serious and professionally prepared, Panel has in
this case exercised its discretion in favour of Respondent and so has taken
Response into account in reaching its decision.
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.
Policy ¶ 4(a)(i) requires a two-fold
enquiry. First, a threshold
investigation of whether a complainant has rights in a trademark, followed by
an assessment of whether the trademark and the domain name are identical or
confusingly similar.
If Complainant can
show that it has trademark rights in LIGHT SOURCES then there is no doubt that
the domain name <lightsources.com>
is identical to the trademark[2].
Complainant does
not own a registered trademark; however governmental trademark registration is
not necessary to establish rights under Policy ¶ 4(a)(i)
if common law rights established through use and reputation are proven[3].
Complainant alleges that it first made use of
the LIGHT SOURCES mark in relation to fluorescent lamps, tanning lamps, and
medical lamps in 1983. Complainant has
submitted advertising and informational brochures and leaflets in support
thereof, but Respondent submits that Complainant has failed to show that the
public identifies the trademark with Complainant’s goods.
Respondent alleges that the trademark is composed
of generic terms which Complainant has not monopolized. Respondent notes that Complainant was denied a
trademark registration for LIGHT SOURCES by the USPTO on April 27, 2010 because
of its non-distinctive character.
Panel first notes that a respondent’s registration and use of a generic domain name is regarded by former panels as a factor to be considered under Policy ¶4(a)(ii) and/or 4(a)(iii). Nonetheless, if the term in which a complainant asserts trademark rights under Policy ¶4(a)(i) is plainly composed of generic terms, then a panel will more closely scrutinize the evidence said to prove that trademark has acquired secondary meaning through use and reputation[4]. Moreover, whilst detailed consideration of the registrability criteria of trademarks filed with the USPTO is outside the scope of the Panel’s mandate, Panel points out that neither the USPTO, nor many other national trademark registration authorities, will accept purely descriptive trademarks for registration without substantial pre-filing evidence of use of the trademark.
The trademark is
essentially descriptive. With extensive,
well documented proof of use since 1983, Complainant might have shown common
law rights however the evidence said to support Complainant’s common law trademark
rights is flawed and lacking. It falls
short of the material this Panel would need to see in order to find that
Complainant enjoyed common law rights in the trademark.
For these reasons,
Complainant has not surmounted the first hurdle in proving its case and had
failed to show rights in a trademark under Policy ¶ 4(a)(i).
No findings required[5].
DECISION
Having failed to establish at least one of the three elements required
under the ICANN Policy, the Panel concludes that relief is DENIED.
Debrett G. Lyons, Panelist
Dated: June 25, 2009
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National
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[1] See, for example, J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628
(Nat. Arb. Forum Oct. 17, 2003) finding that where a respondent submitted a
timely Response electronically, but failed to submit a hard copy of the
Response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”.
[2] The gTLD is to be ignored since it adds no distinctiveness to the domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
[3] See,
for example, 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 British
Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”.
[4] See
generally, WIPO Overview of WIPO
Panel Views on Selected UDRP Questions, at http://www.wipo.int/amc/en/domains/search/overview.
[5] 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).