Liverpool Lumber Co., Inc. and Joseph Ehle v. RESCUECOM
Claim Number: FA1105001389956
Complainant is Liverpool Lumber Co., Inc. and Joseph Ehle (“Complainant”), represented by Ashley D. Hayes of 1500 AXA Tower 1, New York, USA. Respondent is RESCUECOM (“Respondent”), represented by Edmund J. Gegan of Lynch & Robbins, PA, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <liverpoollumber.com> and <joeehle.com>, registered with GoDaddy.com, 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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on May 20, 2011.
On May 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <liverpoollumber.com> and <joeehle.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2011 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@liverpoollumber.com and postmaster@joeehle.com. Also on May 25, 2011, 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 13, 2011.
On June 14, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· Both the company and Joe Ehle have established their rights in the LIVERPOOL LUMBER CO INC and JOE EHLE marks by creating a secondary meaning in the marks via continuous use over the last few decades;
· Joseph Ehle claims to be the President and CEO of Complainant Liverpool Lumber Co., Inc.;
· Both marks have been used in conjunction with the lumber products business it runs and in conjunction with one another, the LIVERPOOL LUMBER CO INC mark since the 1940s and the JOE EHLE mark for the last 20 years;
· The Respondent’s disputed domain names are confusingly similar to its own marks;
· The Respondent’s <liverpoollumber.com> domain name is confusingly similar to its LIVERPOOL LUMBER CO INC mark., as the disputed domain name contains the identifiying portions of the mark while removing the spaces and the corporate information, “CO” and “INC.” and adds the generic top-level domain (“gTLD”) “.com.”;
· The <joeehle.com> domain name is identical to its JOE EHLE mark, as it includes the entire mark, absent the space between the terms, and the gTLD, “.com.”;
· The Respondent is not commonly known by either disputed domain name;
· The Respondent has provided no evidence to show that it is commonly known by the disputed domain names;
· The Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names;
· The disputed domain names, although resolving to different actual sites, resolve to sites dedicated to complaining about the Complainant’s business;
· The Respondent is using the disputed domain names in bad faith, as the disputed domain names resolve to sites offering complaints leveled at Complainant’s business.
B. Respondent
Respondent alleges that:
· Complainant fails to show its rights in the “JOE EHLE” mark;
· having the company under the family name for an extended period of time doesn’t establish rights in Complainant’s JOE EHLE mark;
· Joe Ehle’s name does not appear on the Complainants’ marketing material or building;
· it is making a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii), as the disputed domain names resolve to sites offering complaints related to both the Complainant and its business;
· the disputed domain names resolve to a site offering complaints and criticism related to Complainant’s business in an exercise of its First Amendment rights.
The Respondent has registered the two disputed domain names in connection to complaints and criticism related to the Complainant’s business.
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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Liverpool Lumber Co., Inc. and Joseph Ehle. Mr. Joseph Ehle is the President and CEO of Liverpool Lumber Co., Inc. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
As provided in the Complaint, there are two Complainants in this matter: Liverpool Lumber Co., Inc. and Joseph Ehle. Mr. Joseph Ehle is the President and CEO of Liverpool Lumber Co., Inc.
As previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and decides to treat them all as a single entity in this proceeding. (See in this sense: Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”, or, Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.
Accordingly, in this decision, the Complainants will be collectively referred to, as “Complainant.”
Complainant contends that they have established their rights in the LIVERPOOL LUMBER CO INC and JOE EHLE marks by creating a secondary meaning in the marks via continuous use over the last few decades. Also, as stated above Complainant Joseph Ehle claims to be the President and CEO of Complainant Liverpool Lumber Co., Inc. Complainant alleges that both marks have been used in conjunction with the lumber products business it runs and in conjunction with one another, the LIVERPOOL LUMBER CO INC mark since the 1940s and the JOE EHLE mark for the last 20 years. Complainant provides an affidavit where Mr. Joseph Ehle testified to the effect that the lumber company has been in his family since its opening in the 1940s. Complainants have also provided corporate registration documents from New York state including the date of formation. Except for the affidavit of Mr. Joseph Ehle, no other evidences was submiited to support the common law rights in either LIVERPOOL LUMBER CO INC or JOE EHLE marks.
Common law rights arise from actual use of a mark in connection with certain services and/or products. In addition, to successfully assert common law or unregistered trademark rights, a Complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services.
As, the Complainant asserts common law trademark in both LIVERPOOL LUMBER CO INC or JOE EHLE marks, the Panel shall consider the Complainant common law rights in each of the two marks.
Common law rights in LIVERPOOL LUMBER CO INC mark
In connection to LIVERPOOL LUMBER CO INC, the Complainant asserts that it acquired common law rights for services of sale distribution and installation of windows, doors, cabinetry, interior and exterior fabrications and other lumber related products and related design services. The evidence brought by the Complainant to support this assertion refers to the date of creation of the business back in 1940s, the advertisement and the sales under the alleged mark level of $8 million per year. All this data results, mainly, from Joe Ehle’s affidavit. Except for the registration information of the company LIVERPOOL LUMBER CO., INC and two ads by which the services of the company LIVERPOOL LUMBER CO., INC with its contact data are presented, none of the evidence brought, refers to the use of mark LIVERPOOL LUMBER CO., INC in connection to certain services, but to the name of the company LIVERPOOL LUMBER CO., INC selling these services. Moreover, after performing its own search on internet, the Panel found that no reference is made to LIVERPOOL LUMBER CO., INC as a mark for certain services but to LIVERPOOL LUMBER CO., INC as a company name with contact data delivering such services. It is also, the opinion of the Panel, that the Complainant failed to show that its alleged LIVERPOOL LUMBER CO., INC mark has become a distinctive identifier associated with the Complainant or its goods and services.
Therefore, on the basis of the evidences provided by the Complainant, the Panel finds that the Complainant has failed to establish its rights in the LIVERPOOL LUMBER CO., INC mark under Policy ¶ 4(a)(i).
Common law rights in JOE EHLE mark
Joe Ehle is the CEO and President of the company LIVERPOOL LUMBER CO., INC. The Complainant asserts common law trademark rights in JOE EHLE for the same services provided by the company, because he has been associated with the business for more than thirty years. The only evidence provided in support to this statement is Joe Ehle’s affidavit and an article in some “Business publication” , which mentions Ehle as the President and Owner of the company LIVERPOOLLUMBER CO.,INC. No mention whatsoever is made in connection to offering the company services under JOE EHLE trademark.
JOE EHLE’s name does not appear on the Complainants’ marketing material or building.
The Panel finds that the Complainant has failed to establish its rights in the JOE EHLE mark under Policy ¶ 4(a)(i). See Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services.”); see also Giambi & Giambi v. Meagher, FA 114745 (Nat. Arb. Forum Aug. 20, 2006) (finding that the complainants lacked common law rights because “[t]he surname of the Complainants must have some secondary meaning, identifying goods or services before it becomes a mark.”).
Conclusion
Establishing rights in the trademarks LIVERPOOL LUMBER CO., INC and JOE EHLE is essential under Policy ¶ 4(a)(i). The Complainant failed to establish such rights and therefore failed to prove the first element of the Policy.
As the Panel concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it failed to establish rights in the mark, the Panel declines 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)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <liverpoollumber.com> and <joeehle.com> domain names REMAIN WITH Respondent.
Beatrice Onica Jarka Panelist
Dated: June 26, 2011
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