Light Sources, Inc. v. Interlectric Corporation
Claim Number: FA1005001324913
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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, 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.
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.
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. 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.
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 Arbitration Forum
 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”.
 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).
 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”.
 See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at http://www.wipo.int/amc/en/domains/search/overview.
 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).