Discount Embroidery Supply v.
AllStitch LLC
Claim Number: FA1007001336136
PARTIES
Complainant is Discount Embroidery Supply (“Complainant”), represented by Mark
E.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discountembroiderysupplies.com> (“the Domain Name”), registered with GoDaddy.com,
Inc.
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.
Alan L. Limbury, Hon. James A. Carmody and
Jay Hines, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 19, 2010.
On July 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the Domain Name is registered with GoDaddy.com, Inc. and that the Respondent is
the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent
is bound by the GoDaddy.com, 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 July 23, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of August 12, 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@discountembroiderysupplies.com
by e-mail. Also on July 23, 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 August 12, 2010.
On August 25, 2010, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Alan L. Limbury, Hon. James A. Carmody and
Jay Hines 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
Complainant operates an internet-based
business selling into the home machine embroidery market embroidery machine
needles, embroidery thread, embroidery stabilizers, machine embroidery designs,
and sewing, quilting and machine embroidery notions.
Complainant says the Domain Name is
substantially similar to its registered trademark; that 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 the Domain Name redirects customers
to another website, www.allstitch.com. Respondent is not commonly known by the Domain
Name and does not use it to offer bona fide products or services. The Domain Name
misleadingly diverts customers from Complainant to Respondent. There has never
been a relationship between the two companies. Complainant’s trademark has been
tarnished because customers have come to expect certain business practices from
Complainant that are not offered by Respondent.
As to bad faith, Complainant says it regularly receives calls from
confused customers as a result of Respondent’s misuse of the Domain Name as
well as calls from customers trying to find products they have bought from Complainant
in the past but are unable to find via the Domain Name. This disrupts Complainant’s
business. By using the Domain Name, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s website by
creating a likelihood of confusion with Complainant’s mark as to the source of
Respondent’s web site and of the products and services on Respondent’s web
site.
Complainant refers to instances of use by Respondent of the term Discount Embroidery Supply, in circumstances said to be in violation of trademark laws.
B. Respondent
Respondent registered the Domain Name on June 3, 2004. Since September
2004 the Domain Name has resolved to a website under the Allstitch name promoting
Respondent’s embroidery products. In using the Domain Name to describe the
products available at its Allstitch online retail store and to target Internet
users looking for cheap embroidery supplies, Respondent has a legitimate
interest in the Domain Name, which was not registered and is not being used in
bad faith.
FINDINGS
Complainant has failed to establish all the
elements entitling it to relief.
DISCUSSION
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 has rights in the
The test of identity or confusing
similarity under the Policy is confined to a comparison of the disputed domain
name and the trademark alone: Wal-Mart
Stores
The Domain Name is not identical to Complainant’s trademark. Despite the descriptive character of each of the words comprising Complainant’s trademark and the use in the Domain Name of the plural “supplies” instead of the singular “supply”, the Panel finds that that the Domain Name is confusingly similar to the trademark.
Complainant has established this element of its case.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under ¶ 4(c) of the Policy. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant’s mark, consisting of descriptive words, is weak, albeit registered. As to Complainant’s customers regularly calling Complainant in confusion as to the relationship between the parties, the following well‑known passage from the judgment of Stephen J in the High Court of Australia in Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 is apposite:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be”. The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute,
your use 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;”
Respondent has shown that since September, 2004, it has operated a website to which the Domain Name resolves, at which embroidery supplies are offered. As to whether this offering was bona fide, the Domain Name is apt to describe Respondent’s business. Further, there is nothing to indicate that Respondent was or could have been aware of Complainant’s mark when registering the Domain Name and establishing its website.
In particular, there is no evidence before the Panel to establish that Complainant had acquired, through use, common law trademark rights in the expression “discount embroidery supply” prior to Respondent’s registration of the Domain Name in June, 2004, notwithstanding that in its January 2007 filing, Complainant claimed first use of its mark in 1998. Respondent has annexed a copy of Complainant’s declaration of continuous use of its mark for “at least” five years prior to July 13, 2007, which Complainant provided to the USPTO in order to overcome the examiner’s objection of descriptiveness. This is inadequate to establish in this Administrative Proceeding that any use by Complainant of the mark prior June, 2004 gave rise to common law trademark rights.
Accordingly, the Panel is satisfied that Respondent’s offering of embroidery supplies is and has always been a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) and that accordingly Respondent has rights and a legitimate interest in the Domain Name, which describes the goods Respondent offers on its website. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market). See also Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
Complainant has failed to establish this element of its case.
The Policy, paragraph 4(a)(iii), requires the Complainant to prove that “the disputed domain name has been registered and is being used in bad faith”. This conjunctive requirement was recognized as requiring proof of both bad faith registration and bad faith use in the very first case decided under the Policy, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, and has been widely followed since.
Here, Respondent could not have had Complainant’s mark in mind when registering the Domain Name because it has not been shown that Complainant then had any trademark rights. Further, since Respondent’s use of the Domain Name has been bona fide and descriptive of the goods Respondent provides, there is no bad faith use from which any adverse inference of bad faith registration can be drawn. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Accordingly Complainant has failed to
establish that the Domain Name was registered and is being used in bad faith.
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, Panel Chair
Hon. James A. Carmody, Panelist
Jay Hines, Panelist
Dated: September 6, 2010
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