Mt. Vernon Mills, Inc. v. River City Holdings, LLC
Claim Number: FA1005001325209
Complainant is Mt. Vernon Mills, Inc. (“Complainant”), represented by Douglas W. Kim, of McNair Law Firm, P.A., South Carolina, USA. Respondent is River City Holdings, LLC (“Respondent”), represented by Karen G. Biagi, of Evans & Hackett, PLLC Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <textraw.com>, registered with Tucows, 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2010.
On May 19, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <textraw.com> domain name is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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 email@example.com. Also on May 21, 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 complete on June 10, 2010.
Complainant’s Additional Submission was received on June 15, 2010 in compliance with Supplemental Rule 7. Respondent’s Additional Submission was received on June 22, 2010 in compliance with Supplemental Rule 7.
On June 16, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Also, Respondent has not been commonly known by the domain name, according to Complainant.
Finally, Complainant considers that the domain name was registered and is being used in bad faith.
Respondent considers that the Complainant has no rights in a trademark or service mark that is identical or confusingly similar to the disputed domain name. Respondent also considers itself to have legitimate rights in the disputed domain name and in the trademark in which Complainant claims rights. Finally, Respondent considers that the disputed domain name was not registered or used in bad faith.
C. Additional Submissions
In its additional submission, Complainant considers that Respondent should have known it did not have any rights in Complainant’s trademark other than the rights that were licensed in a distribution agreement, terminated in March 2010. Complainant also considers to have developed substantial common law rights at least as early as 2006. Furthermore, Complainant considers that the fact that a newspaper article identifying the previous source of the trademark rather than the current source has no bearing on its rights to the trademark. Complainant further considers that it maintained the quality control over the mark, since it exclusively controls the manufacture of the underlying goods. Complainant also considers that the Respondent has not, and cannot, benefit from its improper use of the TEXTRAW trademark upon termination of the distribution agreement. Finally, Complainant considers that while Respondent may not have acted in bad faith in registering the domain name, Respondent continues to act in bad faith by continuing to maintain the registration for the domain name despite the fact that it has no rights in the trademark.
In its additional submission, Respondent considers that Complainant does not own any right in TEXTRAW as a trademark under state trademark law. Respondent also considers that Complainant has not submitted any evidence of actual use of the trademark in which it claims to have common law trademark rights and that there are others using TEXTRAW as trade names, trademarks and as parts of domain names.
1. On September 8, 2006 Complainant purchased assets from the Georgia, USA corporation Textraw, Inc. which included the trademark registration for a trademark TEXTRAW which had been registered with the USPTO under number 2,710,148 on April 22, 2003.
2. On November 28, 2009 the TEXTRAW trademark was cancelled.
3. Complainant had no registered TEXTRAW trademark at the date of filing its complaint.
4. In March 2009 Respondent obtained the domain name <textraw.com> through Complainant.
5. Respondent makes no active use of the domain name.
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 does not show it has any registered trademark rights in the TEXTRAW mark. According to the Panel, it is not needed for Complainant to have a trademark registered with a governmental trademark authority to have rights in the mark, but rather that a complainant establish rights in the mark with sufficient evidence of common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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).
Complainant asserts common law trademark rights in its TEXTRAW mark in connection with artificial mulch for landscaping and synthetically treated ground coverings. Complainant states that on September 8, 2006 it purchased assets from the Georgia, USA corporation Textraw, Inc. which included the trademark registration for TEXTRAW mark which had been registered with the USPTO (Reg. No. 2,710,148 issued April 22, 2003) but that due to an administrative error, Complainant failed to renew that registration when it came due. However, Complainant asserts that it has common law rights in the expired mark based on its use of the mark in connection with goods and services.
To establish common law trademark rights, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. 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. See Uitgeverij Crux v. W. Frederic Isler D2000-0575 (WIPO October 30, 2000) (finding that where the complainant provided evidence to the effect that he has been using the mark CRUX in association with its business for a number of years prior to the Domain Name being registered, this constituted adequate grounds for a finding that he holds rights in the marks "CRUX Editions" and "Uitgeverij CRUX"); see also Skattedirektoratet v. Eivind Nag D2000-1314 (WIPO December 18, 2000) (finding that where the longstanding and extensive use of the non-generic term "Skatteetaten" made the term being understood by the more than 3 millions tax payers and by the public at large as a sign (identifier) referring to complainant, “Skatteetaten could be considered as an unregistered service mark).
The only evidence Complainant adduces to support its statement of having common law trademark rights is an article in the October 2006 edition of Southern Living magazine. This article deals with the product commercialized by the previous holder of the – at the time registered – TEXTRAW trademark, Textraw, Inc. Complainant claims to have attended various trade shows between 2006 and 2009 where products marketed under the TEXTRAW trademark were displayed. Complainant also asserts that between the time Complainant purchased the mark and other assets in 2006 until the end of 2009 Complainant sold approximately $1.6 million worth of its goods bearing the TEXTRAW mark which equates to over 70,000 units sold. Complainant further states that as of the date of the Complaint, Complainant still sells its goods under the TEXTRAW mark. However, as these statements remain without evidence, this raises serious questions about the existence of common law trademark rights in the TEXTRAW mark. Therefore, the ultimate decision as to whether Complainant does or does not have trademark rights in the TEXTRAW mark is better left to a court or trademark office tribunal, according to the Panel. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim” and “[t]he ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
Since Complainant fails to establish rights in the mark, the Panel can only conclude that Complainant has not satisfied Policy ¶ 4(a)(i). As a result, the Panel may decline 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)).
However, for the sake of completeness, the Panel finds it useful to analyze the other two elements of the Policy.
The Panel is of the opinion that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the disputed domain name lists the registrant as “River City Holdings, LLC”. The Panel finds that Respondent’s business name is not similar to the disputed domain name. There is also no indication that Respondent is commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further asserts that the identical disputed domain name resolves to an inactive website. According to the Panel, the lack of use of the disputed domain name is often not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
According to the Panel, this is sufficient to shift the burden of proof.
In response to the Complainant arguments, Respondent sets out – and this is confirmed by Complainant – that it obtained the domain name through the Complainant subsequent to an agreement between Complainant and Respondent. Respondent claims to have maintained a website linked to the domain name <textraw.com>, but that it removed the content pending completion of development of new content and also as a precaution to mitigate certain claims that had been threatened by Complainant. However, Respondent provides no evidence regarding the website it claims to have maintained before. As a result, Respondent does not prove to have a legitimate interest in the domain name <textraw.com>.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the registration of the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct.
1. Registration in Bad Faith
Respondent asserts that it did not register the disputed domain in bad faith as it never registered the domain name at all. Respondent argues that Complainant caused the domain name to be registered in the name of Respondent. This is not refuted by Complainant. On the contrary, Complainant states that it transferred the domain name to Respondent. As Complainant voluntarily transferred the domain name to Respondent or registered the domain name in Respondent’s name, Respondent cannot have registered the domain name in bad faith. See Hewlett Packard Co. v. Napier, FA 94368 (Nat. Arb. Forum Apr. 28, 2000) (finding that the complainant failed to establish that the respondent registered the domain name <openview.org> in bad faith where the complainant acquiesced to the respondent’s registration and use of the domain name); see also Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (finding no bad faith registration of the domain name where the panel found evidence that the respondent was authorized to register the disputed domain name by the complainant).
2. Use in Bad Faith
Complainant contends that Respondent is evidencing bad faith based on its offer to transfer the disputed domain name to Complainant for debt relief in the amount of approximately $183,000 which Complainant argues is effectively an attempted sale of the disputed domain name grossly in excess of the out-of-pocket expenses incurred by Respondent to register the disputed domain name. However, Complainant does not adduce any evidence to corroborate the statement that Respondent offered the domain name for sale. Respondent claims that it offered to sell Complainant its artificial pine straw business and not merely the disputed domain name. Respondent does not provide any evidence to corroborate this statement either. From the facts presented to the Panel, the Panel cannot conclude that Respondent offered to sell the domain name to Complainant for value in excess of the registration fee. As there is no evidence that the domain name would have been used with a primary purpose to offer it for sale, this can be no ground for showing bad faith use (See Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting, D2001-1391 (WIPO Jan. 24, 2002) (finding that it is not necessary to resolve the issue of whether the respondent made an offer to sell the disputed domain name or an offer to sell the its business, because, even if the Respondent was offering sell the disputed domain name, in the absence of a finding that the respondent was aware of the complainant, its mark or its domain name at the time of registration, the conclusion cannot reasonably be drawn that sale at a profit to the complainant was the primary purpose of the respondent in registering the disputed domain name.)
Complainant further argues that the disputed domain name fails to resolve to an active website. Respondent recognizes this and claims that that it removed the content that was accessible through the domain name pending completion of development of new content and also as a precaution to mitigate certain claims that had been threatened by Complainant. However, Respondent provides no evidence regarding the website it claims to have maintained before, although it should have had no difficulty in doing so. As a result, Respondent fails to rebut the evidence provided by Complainant that the disputed domain name fails to resolve to an active website. As a result, the Panel finds that Respondent’s failure to maintain an active website resolving from the disputed domain name could in certain circumstances constitute bad faith pursuant to Policy ¶ 4(a)(iii). However, in the instant case there are no circumstances indicating that Respondent’s failure to resolve to an active website constitutes bad faith, especially given the fact that the disputed domain name is not infringing a trademark in which Complainant has established rights. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Flip Petillion, Panelist
Dated: June 30, 2010
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