national arbitration forum

 

DECISION

 

Kingspan Holdings (IRL) v. Thermo Technologies

Claim Number: FA1009001348354

 

PARTIES

Complainant is Kingspan Holdings (IRL) ("Complainant"), represented by Alfred C. Frawley of Preti, Flaherty, Beliveau & Pachios, LLP, Maine, USA.  Respondent is Thermo Technologies ("Respondent"), represented by Dr. Fariborz Mahjouri, Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thermomax.com>, registered with Network Solutions, Inc. on August 29, 1995 (the “Domain Name”).

 

PANEL

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.

 

Clive Elliott as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2010; the National Arbitration Forum received payment on September 24, 2010.

 

On September 24, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@thermomax.com.  Also on October 5, 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 October 22, 2010.

 

On November 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.

 

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant contends that it is the registered owner of the trademark THERMOMAX and that it and its predecessor has used it continuously since 1981 on machines for use in commercial refrigeration and solar heating.

 

Complainant asserts that although the Domain Name has been registered by Respondent, it has listed inaccurate registration information in that the address given is incomplete and it has availed itself of Network Solutions’ private registration service. 

 

Complainant states that the Domain Name is identical to the trademark that Complainant and its predecessor has used for nearly 30 years in the United States and throughout the world to designate the source of machines for use in commercial refrigeration and solar heating. 

 

Complainant asserts that the Domain Name resolves to a web page of Thermo Technologies which is a direct competitor of Complainant.  Complainant contends that Respondent is intentionally and misleadingly diverting consumers from Complainant and has set about to tarnish the service mark THERMOMAX.  Complainant also contends that Respondent adopted the Domain Name with full knowledge of the priority rights that Complainant and its predecessor has, and had, in the mark.

 

Complainant states that it contacted Respondent by email advising Respondent that Complainant’s customers were confused about the connection, or affiliation between Complainant and Respondent.  Complainant says that Respondent has been unresponsive.

 

Complainant claims that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor, the Complainant and that in using the Domain Name Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

 

Complainant asserts that its products are sold under the THERMOMAX name and that products competitive to those sold by Complainant are offered on Respondent’s site.

Complainant contends Respondent is exhibiting bad faith and is free riding on Complainant’s long-standing and well-established market position through initial interest confusion.

 

Complainant contends that Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet traffic to the website of a direct competitor demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

 

B. Respondent

 

Respondent contends that it has been authorized to promote Thermomax products in Northern America since March 2, 1993 and, as well as importing Thermomax products since that date, it has also developed a market for the products.  Respondent asserts that it registered Thermomax on March 6, 1996, and has maintained the registration since then, and has also registered Thermomax for the 1995 Thomas Register directory. 

 

Respondent also states that it registered the Domain Name with Network Solutions, LLC on August 29, 1995 to promote solar technologies and applications.  It contends that this website consists of over 1500 files serving educational communities and the general public free of charge.  Respondent advises that its contact information and phone numbers are published on the website.

 

Respondent asserts that it is not a competitor to the Complainant as Complainant has stated, but in fact promotes Complainant’s products.  Respondent argues that it is a project developer and installer whilst Complainant is a manufacturer.  Respondent advises that it promotes solar energy in general, as well as Complainant’s products through publications and presentations, and through the Domain Name Respondent teaches principles of internet and e-commerce classes at Howard Community College and the Johns Hopkins University.

 

Respondent advises that it designed and installed the first Thermomax solar system at the Baltimore Gas and Electric energy management building in 1993, and that since 1993 it has imported solar thermal products and promoted solar technologies.

 

Respondent advises that since August 23, 2007, Complainant has stopped supporting customers served by Respondent and Complainant has dishonored any warranty commitment for imported and sold products.  

 

Respondent submits it is committed to supporting its customer base by offering after sale services through the Domain Name and its email address and that the Domain Name is the only responsive means for helping and cultivating its existing customers. 

 

Respondent contends that since 1993, it has designed and installed solar collectors and is serving thousands of customers using the Internet, and that its email addresses use the Domain Name and in turn are stored in their customers’ address directories.  Respondent also contends that since its physical address has changed three times it believes that the only reliable communication course with its customers is its email addresses.  In addition its e-commerce activities, banking accounts, invoicing, and tax payments are performed through the Domain Name.

 

Respondent submits that whilst Complainant, which is a British entity, promotes its products in Europe by using Thermomax.co.uk and Thermomax-Group.com internationally, it did not promote or invest in the Domain Name.  Respondent contends that it has invested heavily in promoting the Domain Name and that as well as having its email addresses listed with many Government agencies (such as GSA, SRCC, and CCR), organizations and directories, it also used the Domain Name email addresses in all design documents, customer service guides, invoices, warranty commitments and user manuals which it creates.

 

Respondent advises that it has used the Domain Name since the Internet became available for educational and commercial uses and that it expanded from a single page in 1995 to over 1,500 files in 2010.  During this time Respondent advises that it participated in national solar energy conferences using the Domain Name and email addresses, the service contract received from the Pentagon uses the Domain Name,  and Complainant’s own factory has corresponded with Respondent through the Domain Name.

 

Respondent advises that also during this time Complainant has changed its product lines to serve Germany’s market demand and that imported products were modified for the US market and manufactured from the same production lines but with different names.  Respondent asserts that Complainant has relocated its manufacturing facilities, has replaced its original management and engineering team and is now not familiar with the evolution of the products.  Respondent believes that this is the reason why Complainant is not supporting its existing customer base and introducing a new product line.  Respondent submits that it purchased and maintains an inventory to support its existing customer base and believes it will be a disservice to its customers who have installed solar collectors if the Domain Name is transferred to Complainant.

 

Respondent submits that it is not in competition with Complainant and that whilst Complainant’s products, as well as other solar thermal energy products, are included in the Domain Name website, it is also loaded with many useful design tools and solar thermal applications.  Respondent states that there is no charge for using data gathered and presented in the website and that as well as the website being visited heavily by .edu, .mil and .gov domains, it has received many requests from publishers looking to obtain permission to use the information and photos posted on the website.

 

Respondent believes that it has had a good business relationship with Complainant and Complainant’s Business Development Manager.  It had been given the impression that Complainant’s Managing Director was impressed with Respondent’s activities when it visited its facilities, and is therefore surprised about Complainant’s request.

 

Respondent contends that it has never used the Domain Name in bad faith, and that as well as supporting educational organizations and professional trades through its web presentations, it also works closely with Complainant’s representatives and forwards all relevant business opportunities to them.

 

Respondent denies that it has ever thought to sell or transfer the Domain Name to a party for financial gain.

 

Respondent advises that Complainant has also initiated another legal proceeding to try and shutdown Respondent’s website on September 28, 2010 based on copyright publication.  It assets that this complaint was dismissed on September 29, 2010 after the issue was investigated by the legal department of the webhosting company.

 

 

C. Additional Submissions

 

No further response was received from Complainant.

 

 

FINDINGS

Complainant establishes that the Domain Name is identical to a trademark in which it has rights but fails to establish that Respondent has no rights or legitimate interests in respect of the Domain Name or that it has been registered and is being used in bad faith. Accordingly the complaint is denied.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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.

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has rights in the THERMOMAX mark by virtue of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,959,310 filed May 15, 2002; issued June 7, 2005).  The Panel finds that Complainant’s registration of its THERMOMAX mark with the USPTO proves Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), dating back to May 15, 2002, when the mark was filed.

 

There is effectively no dispute that the Domain Name is identical to Complainant’s THERMOMAX mark. On this basis the Panel has no difficulty in finding that the requirements of Policy ¶ 4(a)(i) are met.

 

Rights or Legitimate Interests

 

Complainant needs to establish a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP   ¶ 4(a)(ii)).  

 

Respondent argues that it registered the Thermomax name with the State of Maryland Department of Assessments and Taxation on March 6, 1996 (Reg. No. T0090235) and has continually maintained the registration since.  Respondent also contends that it registered the Thermomax name for the 1995 Thomas Register Directory and provides evidence of such registration.  Therefore, the Panel is satisfied that Respondent is known by the Domain Name. This supports its contention that it has rights in the Domain Name according to Policy ¶ 4(c)(ii).  See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).

 

Respondent alleges that it has rights and legitimate interests in the Domain Name, being or having been authorized to promote Thermomax products in North America since March 2, 1993. It provides a document showing this agreement between Complainant and Fariborz Mahjouri, Respondent’s administrative contact.  Respondent contends that it has imported Complainant’s THERMOMAX products and developed a market for those products since 1993. 

 

Respondent asserts that it registered the Domain Name to promote solar technologies and applications and that its website resolving from the Domain Name consists of over 1,500 files serving educational communities and the general public, free of charge.  Respondent counters Complainant’s allegation that Respondent is a competitor, asserting instead that it is a project developer and installer that promotes solar energy in general and Complainant’s products through publications and presentation. 

 

Respondent further argues that it has designed and installed solar collectors since 1993 and is serving thousands of customers using the Internet.  Respondent asserts that its email addresses use the Domain Name and are stored in its customers’ address directories.  Respondent contends that due to changes in its physical address, its email addresses are the only reliable way that its customers and various governmental agencies and entities can communicate with Respondent. 

 

On the basis of the above, the Panel is satisfied that Respondent’s activities in connection with the Domain Name are a bona fide offering of goods or services and/or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). 

 

Further, it should be noted that Respondent registered the Domain Name on August 25, 1999. This predates Complainant’s filing of its USPTO trademark registration on May 15, 2002.  The Panel is of the view that Respondent’s predating registration of its Domain Name is indicative of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark).

 

Accordingly, Complainant fails to establish this element of the Policy¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Having found that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), it is open to the Panel to also find that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).

 

More particularly, the Panel finds that Respondent has not registered or used the Domain Name in bad as, on the material before the Panel, it appears that it has not engaged in any conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).

 

Relevant considerations are that Respondent contends (without challenge from Complainant) that it has a good relationship with Complainant, works with Complainant and forwards all relevant business opportunities to it.  Respondent further argues that it is not a competitor of Complainant and that its website is designed to educate people who have an interest in solar thermal energy applications. These are hardly the actions of a party engaging in bad faith conduct. If anything, it shows the opposite.

 

Accordingly, Complainant fails to establish this element of the Policy¶ 4(a)(iii).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief must be denied.

 

Accordingly, it is Ordered that the <thermomax.com> domain name is to remain with Respondent.

 

 

Clive L Elliott, Panelist

Dated:  November 19, 2010

 

 

 

 

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