Applied Data Trends, Inc. v. Energy Technologies, Inc.
Claim Number: FA1005001327165
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”).
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.
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 firstname.lastname@example.org. 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.
Complainant requests that the Domain Name be transferred from Respondent to 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).
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.
Complainant has failed to establish all the elements required to entitle it to the relief which it seeks.
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.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury
Jeffrey M. Samuels Dennis
Dated: August 3, 2010
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