Applied Data Trends, Inc. v.
Energy Technologies, Inc.
Claim Number: FA1005001327165
PARTIES
Complainant is Applied Data Trends, Inc. (“Complainant”), represented by Larry
Wayne Brantley, of Thomas/Kayden,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tacticaloffice.com>, registered with
WILD WEST
DOMAINS, INC., (“the Domain Name”).
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Jeffrey M. Samuels,
Dennis A. Foster and Alan L. Limbury as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 28, 2010.
On May 30, 2010, WILD WEST DOMAINS, INC. confirmed by e-mail to
the National Arbitration Forum that the Domain Name is registered with WILD WEST DOMAINS, INC. and that the Respondent
is the current registrant of the Domain Name.
WILD WEST DOMAINS, INC. has
verified that Respondent is bound by the WILD
WEST DOMAINS, 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 June 10, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 30, 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@tacticaloffice.com. Also on June
10, 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 July 13, 2010.
Complainant’s Additional Submission was received on July 19, 2010 in compliance with Supplemental Rule 7.
On July 22, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels, Dennis A. Foster and Alan L.
Limbury as Panelists.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is the proprietor of United States registered Service Mark
No. 2,746,940, registered on August 5, 2003 and Trademark No. 2,752,595,
registered on August 19, 2003, in each case for the mark TACTICAL OFFICE, with
a disclaimer as to the word “tactical” and a claimed first use of May 3, 1999.
The mark is used in connection with computer software for use in military
mission planning and information integration.
Complainant says the Domain Name is identical to its TACTICAL OFFICE
mark and that the Respondent has no rights or legitimate interest in the Domain
Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant says that, upon information and belief,
Respondent was well aware that the Domain Name includes Complainant’s federally
registered mark when it began using the Domain Name. Thus, if anyone has rights
and legitimate interests in the Domain Name, it is Complainant. While it
appears that, prior to any notice to Respondent of Complainant’s objection to
such use, Respondent may have used the Domain Name in connection with a bona
fide offering of goods, Respondent clearly adopted this Domain Name with full
knowledge of Complainant’s rights in the TACTICAL OFFICE mark and has
subsequently taken actions suggesting that Respondent understands and
acknowledges that it has no rights or legitimate interests in the Domain Name:
after learning of Respondent’s use of the TACTICAL OFFICE mark in connection
with products on Respondent’s web site and of the filing of a federal trademark
registration for TACTICAL OFFICE by Respondent’s owner, Complainant notified
Respondent that it was infringing Complainant’s rights in its TACTICAL OFFICE mark
and filed an opposition to that trademark registration. No answer to that
opposition was filed and registration was refused, following which Respondent
ceased use of the TACTICAL OFFICE mark and adopted the mark TACTICAL FIELD
OFFICE in connection with products on its website. These actions suggest
Respondent knows it does not have any legitimate rights or interests in the
Domain Name.
Respondent is not known by the Domain Name and does not maintain a
website using the Domain Name, which resolves to the tacticalpower.com web
site. Respondent is not making a legitimate noncommercial or fair use of the
Domain Name without intent for commercial gain to misleadingly divert
consumers. Respondent is intentionally diverting consumers that might be searching
for products of Complainant to a web site that includes Respondent’s products.
As to bad faith registration and use, Complainant says that, upon
information and belief, Respondent registered the Domain Name with knowledge of
Complainant’s use of its TACTICAL OFFICE mark and of its federal registrations.
Despite notice from Complainant that it considered Respondent’s use of that
mark in the Domain Name to infringe Complainant’s rights, Respondent has
continued to use the Domain Name.
Further, Respondent’s use is of the kind covered by the Policy,
paragraph 4(b)(iv).
B.
Respondent
Respondent is known for its extensive “TACTICAL”
product line. Respondent owns 492 domain names and 12
Respondent has
used and continues to use “TACTICAL OFFICE” to sell mobile office furniture
including modular desks, file storage, and lighting which may incorporate
mobile power conditioning units and mobile computer, network and/or
communications hardware excluding any software.
Respondent claims common law trademark rights in “TACTICAL OFFICE” by continuous use since October 2008. It registered the Domain Name on January 7, 2009 and filed its federal trademark application on February 2, 2009. Respondent had no communication from Complainant prior to its trademark application being published for opposition on October 20, 2009. By that time, Respondent already was selling product under its “TACTICAL OFFICE” trademark.
Registration of the Domain Name was not in bad faith. Respondent was merely expanding its product line and adopting a name/mark for this product in accordance with its established naming protocol.
Complainant and Respondent are not in competition. Each has established its own product lines, which are not competitive. If anything, Complainant is trading off the established good will of Respondent by adopting “TACTICAL” as part of its product name and trademark.
Respondent
continued using the Domain Name after communication from Complainant because
Respondent believed (and still believes today) that it had good legal right to
continue to use the Domain Name due to its legal rights in “TACTICAL” by virtue
of its 12 federal trademark registrations, 492 other “TACTICAL” domain names,
and its valid state/common law trademark rights in “TACTICAL OFFICE”.
Respondent
has 12 federally registered “TACTICAL” trademarks that follow its naming
protocol and which establish Respondent with the dominant reputation as the
seller of “TACTICAL” products from its 492 “TACTICAL” domain names. If anything Complainant appears to be guilty
of Reverse Domain Name Hijacking and Respondent requests such a finding.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
The Panel has had regard to Complainant’s Additional
Submission and summarises its principal points below.
Complainant says that any alleged rights that Respondent may have in
the TACTICAL mark are irrelevant to the questions whether it has any rights in
the Domain Name and whether the Domain Name is identical to the TACTICAL OFFICE
mark.
Complainant has been using its TACTICAL OFFICE mark in connection with
computer hardware since 2005.
Complainant first notified Respondent it was infringing Complainant’s
rights in August, 2009, not October, 2009.
Complainant denies that Respondent has any valid state/common law trademark
rights in the TACTICAL OFFICE mark.
Respondent has not denied that it adopted the Domain Name knowing full
well that Complainant used and had two federal registrations for this mark. Any
offering of goods under these circumstances was not a bona fide offering of
goods.
Respondent does not dispute that it does not maintain a website using
the Domain Name and instead routes consumers to its <tacticalpower.com>
web site. This demonstrates that Respondent is using the Domain Name with
intent for commercial gain to mislead consumers.
The fact that Respondent owns such a large number of domain names
suggests that Respondent did register the Domain Name for the purpose of trying
to resell it as many cybersquatters own large numbers of domain names.
Respondent has not been using its 492 TACTICAL domain names for 11
years. It does not maintain web sites at
the vast majority of them. Instead one is routed to the <tacticalpower.com>
web site. Such use is not use under the Policy
Respondent’s ownership of 492 TACTICAL domain names is irrelevant.
Respondent registered the Domain Name knowing full well that Complainant had
been using the TACTICAL OFFICE mark for years in connection with its business
and that it was known by that mark.
Respondent does not argue that it did not register the Domain Name in
order to prevent Complainant from reflecting its mark in a corresponding domain
name. Complainant submits that that is exactly what Respondent did in this case
and that it has a pattern of such conduct. In this regard Complainant refers to
some of Respondent’s domain names which correspond to the trademarks of others.
Complainant denied reverse domain name hijacking.
FINDINGS
Complainant has failed to establish all the elements
required to entitle it to the relief which it seeks.
DISCUSSION
Previous panels have chosen to
dismiss complaints under the Policy which centered upon legitimate trademark
disputes. See Stevenson Indus., Inc. v. CPAP-PRO Online,
FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution
of a legitimate trademark dispute, then Respondent must prevail, because such
disputes are beyond the scope of this proceeding.”). Other Panels have
determined their own jurisdiction and chosen to consider the Complaint and
issue an order. See Telebrands Corp. v. Khalid, FA
467079 (Nat. Arb. Forum May 31, 2005) (decided to proceed with the
dispute over the <telebrandspakistan.com> even though both the
complainant and the respondent had registered marks in TELEBRANDS and TELE
BRANDS PAKISTAN respectively, because the panel thought it would be unfair and
costly to treat the case as a trademark dispute when the “gravamen” of the
proceeding was the alleged misuse of the domain name in dispute).
In
this case, although Complainant and Respondent both assert rights to the
TACTICAL OFFICE mark, the Panel is able to
come to a decision without resolving that aspect of their dispute.
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.
The Panel finds that the Domain Name is identical to the
TACTICAL OFFICE mark, in which Complainant has rights. The gTLD “.com” is
inconsequential and may be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S.
Wilson, Sr., WIPO Case No. D2000-1525.
Complainant has established this element of its case.
Complainant bears the onus of proof
of absence of rights or legitimate interest in the Domain Name on the part of
Respondent. However, paragraph 4(c) of the Policy sets out three illustrative
circumstances as examples which, if established by the respondent, shall
demonstrate its rights to or legitimate interests in the domain name for
purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the
use by the respondent of, or demonstrable preparations to use, the domain name
or a name corresponding to the domain name in connection with a bona fide
offering of goods or services; or
(ii) the respondent (as an individual, business or other
organization) has been commonly known by the domain name, even if the
respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a
legitimate non-commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert customers or to tarnish the trademark or
service mark at issue.
It appears from the record that since 2000, Respondent has
operated a number of businesses under marks and domain names that incorporate
the term TACTICAL and that, in about October, 2008, Respondent registered the
Domain Name and started using it to sell mobile office furniture, as it still does. Respondent was first notified of this dispute when
Complainant communicated its allegations of trademark infringement in August,
2009.
While Complainant apparently made use of its TACTICAL
OFFICE mark in 1999, there is no evidence that Complainant's mark was widely
advertised and promoted as of 2000 nor even 2008, so as to support an inference
that Respondent knew of Complainant's rights in the TACTICAL OFFICE mark as of
Respondent's date of first use. The Panel is unable to conclude, as
alleged by Complainant, that Respondent registered the Domain Name with full
knowledge of Complainant's rights. While Respondent did not specifically deny
this allegation, its denial is implicit in the claim, which the Panel finds
plausible, that in adopting TACTICAL OFFICE as a domain name in 2008, Respondent
was simply following the naming protocol it had established in 2000. Accordingly
the Panel finds that before any notice to Respondent
of the dispute,
Respondent used the domain name in connection with a bona fide offering of goods and that it continues to do so.
The fact that Respondent chose not to respond to an
opposition filed by Complainant to Respondent's attempt to register TACTICAL
OFFICE as a trademark does not affect this conclusion.
Complainant has failed to establish this element of its
case.
For the same reason as mentioned under the previous
heading, the Panel finds that Respondent did not
register and is not using the Domain Name in bad faith.
Complainant has failed to
establish this element of its case.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as
“using the Policy in bad faith to attempt to deprive a registered domain‑name
holder of a domain name”. See also Rule 15(e). This is not such a case. Complainant could legitimately and in
good faith have believed that it had a case under the Policy. The Panel
declines to make a finding of reverse domain name hijacking.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury
Presiding
Panelist
Jeffrey M. Samuels Dennis
A. Foster
Panelist
Panelist
Dated: August 3, 2010
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