Milwaukee Glass Block, Inc. v. William Wirth
Claim Number: FA1108001401974
Complainant is Milwaukee Glass Block, Inc. (“Complainant”), represented by Benjamin R. Imhoff of Andrus, Sceales, Starke & Sawall, LLP, Wisconsin, USA. Respondent is William Wirth (“Respondent”), represented by Donald J. Ersler of Donald J. Ersler, S.C., Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milwaukeeglassblock.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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2011; the National Arbitration Forum received payment on August 9, 2011.
On August 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <milwaukeeglassblock.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@milwaukeeglassblock.com. Also on August 15, 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 September 6, 2011.
Complainant submitted an Additional Submission which was received and determined to be compliant on September 7, 2011.
On September 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges it has continuously used the MILWAUKEE GLASS BLOCK mark for the business of glass block sales and installation since at least January 1, 1981.
Complainant alleges that, in the course of over thirty years of business under the MILWAUKEE GLASS BLOCK mark, Complainant has developed considerable secondary meaning and consumer good will between that mark and Complainant’s business.
Complainant states it has had an online presence since at least 2004, including operating a web site at the milwaukeeglassblock.com domain from March 2004 to March 2005. Complainant alleges that due to an error by a marketing firm hired by Complainant, and through no action or intention of Complainant, Complainant’s registration of the disputed domain name lapsed in March 2005. Complainant alleges that the disputed domain name was immediately registered by Respondent before Complainant became aware of the lapse. Complainant states it has continued its online presence by operating a web site available at the <milwaukeeglassblock.net> domain.
Complainant alleges that the disputed domain name resolves to a “parking” page from GoDaddy.com. The web page is identified as “milwaukeeglassblock.com” and lists ads for competitors of Complainant down the left-hand side. Therefore, the web page found under the disputed domain name lists ads for glass panels; glass blocks; acrylic blocks; pavers; pane, glass block, and acrylic block windows; movable/modular walls; bathtub installations; and mold resistant panel insulation. These are all competitive or related products and services to those offered by Complainant.
Complainant alleges that the disputed domain name is identical to Complainant’s MILWAUKEE GLASS BLOCK mark, but for the addition of the gTLD “.com” and that such addition would be insufficient to distinguish a domain name from a Complainant’s mark.
Complainant alleges that Respondent, Domains by Proxy, has not used the disputed domain name in connection with any bona fide offering of goods or services. To Complainant’s knowledge, the disputed domain name, while in the possession of Domains by Proxy, has only resolved to either an inactive web page, or to a “parking” page sponsored by GoDaddy.com.
Complainant alleges that at least one of the ads on this page is for a direct competitor of Complainant, North American Glass Block (hereinafter “NAGB”). Complainant argues that Respondent has further made no publicly known demonstrable preparations to use the disputed domain name for any purpose besides the current use of the domain in a “parked” status to display advertisements of competitors of Complainant.
Complainant alleges that Respondent, Domains by Proxy, is not commonly known by the disputed domain name. The WHOIS Report for the disputed domain name identifies Domains by Proxy as the Registrant of the domain name and further lends no support that the Respondent is in any way known as milwaukeeglassblock.com.
Furthermore, Complainant alleges that Domains by Proxy is known to be in the business of providing privacy protection to domain name Registrants. By engaging the services of Domains by Proxy to register the disputed domain name in Respondent’s name, Respondent’s customer is purposefully disassociating their own identity from the disputed domain name. Therefore, this is further evidence that Respondent’s customer is not commonly known by the milwaukeeglassblock.com domain name.
As noted above, the disputed domain name currently resolves to a “parked” webpage that displays ads for direct competitors and related products and services with links to the websites of these competitors. As is the case with parked web pages, Respondent likely generates click-through fees from these links. Operating such a website is not a legitimate noncommercial or fair use under the Policy.
Furthermore, Complainant alleges that the webpage includes not visible source identifiers besides the domain name itself in the address bar and a title line at the top of the web page: “WELCOME TO: milwaukeeglassblock.com.” and that with these being the only two sources of identification of the website, consumers are likely to believe that Respondent’s website originates with or is sponsored by Complainant. Attempts to create confusion by passing oneself off as a competitor is not a legitimate use or fair use under the Policy.
Complainant further alleges that the web page under the disputed domain name includes, in the upper right hand corner, the statement:
Want to buy this domain? Our Domain Buy Service can help you get it.
Complainant argues that this statement clearly indicates the Respondent’s intention to sell the disputed domain name. An offer to sell a domain name reveals a lack of rights and legitimate interests on the Part of Respondent.
Complainant alleges that the disputed domain name was registered by Respondent immediately after the registration of the same domain name by Complainant lapsed and that such “opportunistic registration of the domain name that had been previously registered by Complainant” is evidence of bad faith registration and use.
Complainant informs that before commencement of this Action, Complainant sought to resolve this matter directly with Respondent through a series of communications. Based upon these communications, Complainant was contacted by counsel for Respondent’s customer. As the Respondent’s customer’s counsel was located in the same city as Complainant, Milwaukee, Wisconsin, it is further presumed that the Respondent’s customer is also located in the Milwaukee area. As such, Respondent’s customer is aware of Complainant’s business due to Complainant’s long established business in the area, secondary meaning, and consumer good will.
Complainant alleges that actual knowledge of Complainant’s rights in the mark is evidence of bad faith registration and use.
Complainant also argues that Respondent’s customer is either the current or former owner of a direct competitor of Complainant, Security Glass Block, Inc. As a direct competitor of Complainant, Respondent’s customer has actual knowledge of Complainant and complainant’s mark. Therefore, the registration and use of the disputed domain name, in the face of actual knowledge of Complainant’s rights in the mark, is in bad faith in order to prevent Complainant from using their identity on the Internet.
B. Respondent
Respondent argues that Complainant owns two Wisconsin trademarks. The first state trademark was filed on July 14, 2010 and the second state trademark was filed on June 15 2011. Respondent alleges that according to the State of Wisconsin information brochure, filing of a trademark in the state of Wisconsin, “offers no absolute protection from future conflicts” and “registration of a mark does not give exclusive right to that mark,”. Respondent further alleges that no trademark rights are available for a generic trademark. Respondent argues that complainant sells glass block in the Milwaukee metropolitan area and that there are about a half-dozen other companies, including Security Glass Block, that also sell glass block in the Milwaukee metropolitan area. Respondent concludes that Complainant’s mark - Milwaukee Glass Block - is not register able as a trademark, because the mark describes the general category, which is glass block, sold in a particular locality, which is Milwaukee.
Respondent informs that Security Glass Block has been in the business of selling glass block in the Milwaukee metropolitan area, since March 1990 and that Bill Wirth is the former owner of Security Glass Block located in Milwaukee, Wisconsin. There are about a half-dozen other entities that also sell glass block in the Milwaukee metropolitan area. Mr. Wirth owned Security Glass Block, when he initially purchased the disputed domain name in March 2005. Respondent informs Mr. Wirth employed DomainsbyProxy to protect his privacy from others,
as is commonly the practice of many domain name owners. Respondent alleges Mr. Wirth also has never received fees or any other remuneration for the ownership of the disputed domain name. Respondent informs Mr. Wirth sold Security Glass Block to Jim Coster in November 2006. Since that sale, Security Glass Block has, and continues to employ Mr. Wirth as a consultant due to his
expertise in the business. Mr. Wirth also has a continuing interest in Security Glass Block. In February 2011, Mr. Wirth was asked by Jim Coster, if he would be willing to help redesign and update the Security Glass Block website. The website was outdated and required a redesign. Mr. Wirth found a professional web developer to do the work. Mr. Coster also asked Mr. Wirth if he still owned the disputed domain name, to which Mr. Wirth replied in the affirmative. Mr. Wirth then renewed the disputed domain name, with the intent that it be incorporated into the redesigned and updated Security Glass Block website. The disputed domain name would be used to direct traffic from potential consumers seeking glass block in the Milwaukee area to the redesigned and updated Security Glass Block website.
At about the same time, or shortly before Mr. Coster also started using Google Adwords to draw potential glass block customers to the Security Glass Block website. Shortly after the renewal of the disputed domain name, Milwaukee Glass Block started threatening Security Glass Block with legal action. As a direct result of those threats by Milwaukee Glass Block, the Security Glass Block website was redesigned and updated, without incorporating the disputed domain name. Mr. Wirth’s thought was that he could go back to the web developer to incorporate the disputed domain name once the dispute with Milwaukee Glass Block was resolved.
Mr. Wirth purchased the disputed domain name solely for advertising his
business, not in bad faith, not to sell, nor for any other improper purpose. GoDaddy appears to have a standard practice of listing domain names, such as
disputed domain name on a webpage with an offer for its sale and with other
advertising. Mr. Wirth does not have control of the business practices of GoDaddy. Mr. Wirth did not offer the disputed domain name for sale, GoDaddy did.
There is also advertising listed on the GoDaddy/ milwaukeeglassblock.com webpage, but, contrary to the Complainant’s assertion, Mr. Wirth does not receive fees, royalties, click through fees or any other remuneration for this advertising. Mr. Wirth has no control over the content of GoDaddy’s webpage, nor did he ever ask, or in any other way suggest, that they offer his domain for sale, or to display any ads in conjunction with his domain name.
On the advice of Respondent’s legal counsel, and in the interest of settling this dispute, a letter dated August 23, 2011 was sent to Complainant’s legal counsel offering to sell the disputed domain name however; an acknowledgement of
that letter has not been received from Complainant’s legal counsel. For the purpose of clarity, it is important to note that at no time prior to the Complainant’s claim (first lodged with DomainsbyProxy on March 18th, 2011), has the Respondent ever attempted to sell the domain to anyone. When originally made aware of the Complainant’s claim, on March 30, 2011, and on the advice of Respondent’s legal counsel, Mr. Wirth suggested, in his own March 30th email response to DomainsbyProxy, that the Complainant was free to make an offer for the domain, if he so chose. This should not be confused with an unsolicited offer to sell the domain, but instead a response to the Complainant’s claim and a willingness on the part of Mr. Wirth to consider the possibility of a mutually agreeable settlement. Nothing more. In summary, the Complainant offers numerous false accusations, with no evidence whatsoever, that the disputed domain name was purchased by Mr. Wirth in bad faith or for any improper purpose.
C. Additional Submissions
- Complainant’s additional submission
Complainant alleges that Respondent’s attack against the insufficiency of Complainant’s Wisconsin State Trademark Registrations, misses the point that these state trademark registrations are one example of the memorialized consumer good will, and provide corroborating evidence for the Complainant’s Statements of operating under the MILWAUKEE GLASS BLOCK name and mark since January 1, 1981.
Complainant submits additional exhibits to support the consumer good will and acquired distinctiveness established in the MILWAUKEE GLASS BLOCK name and mark.
Further, Complainant alleges that the Security Glass Block web site provided by Respondent does not use the phrase “Milwaukee glass block” anywhere, and certainly not in a descriptive sense. This is further evidence that the specific word combination in which Complainant has rights, is not a generic combination of terms, and Complainant’s mark does not prevent competitors from adequately describing their goods and services.
Complainant alleges that Respondent asserts that he had intent and had made preparations to use the disputed domain name for a bona fide offering of goods or services, but that he did not support this assertion “by providing concrete evidence.”
Complainant alleges that Respondent never denies Complainant’s assertion that Respondent is not known by the disputed domain name. Respondent also submits no evidence or even assertion to this fact.
Complainant alleges that Respondent has not denied Complainant’s assertions that the “parking” of the disputed domain name at a website with links to the websites of third party competitors of Complainant is not a legitimate noncommercial or fair use and that Respondent has further provided no evidence to support such a conclusion of noncommercial or fair use.
Complainant alleges that Respondent’s Exhibit F is an explicit offer to sell the disputed domain name to Complainant for $15,000, plus the costs incurred by Respondent in responding to Complainant’s allegations, and a release from any claims of trademark and/or trade name infringement against Mr. Wirth or Security Glass Block. According to Complainant, this statement clearly indicates the Respondent's intention to sell the disputed domain name. An offer to sell a domain name reveals a lack of rights and legitimate interests on the part of Respondent.
Complainant alleges that Respondent’s makes the claim that he purchased the disputed domain name “solely for advertising his business.” But that this claim is not supported by the record, as Respondent held the disputed domain name for over six years, without linking the domain to the Security Glass Block website.
Complainant further argues that Respondent’s other statements do not serve as a defense but rather reinforce Complainant’s allegations of bad faith registration and use of the disputed domain name.
- Respondent’s additional submission
Respondent’s additional submission basically repeats the arguments brought in his defense. Respondent alleges that Complainant did not make a prima facie case of Respondent’s lack of rights or legitimate interests on the disputed domain name.
Respondent addresses Complainants claim regarding the fact that the disputed domain name was not used by Respondent for six years. Respondent notes that Complainant was free to obtain the name of the owner of the disputed domain name and file a domain dispute complaint at any time during the previous six years. However, Complainant did not bother doing so. Respondent argues that the Complainant is guilty of laches in this matter. Respondent argues that the Complainant’s laches nullifies any bad faith argument alleged by the Complainant during those six years. Respondent argues it has every right to use the disputed domain name to direct potential purchasers of glass block in the Milwaukee area to the Security Glass Block website, as Security Glass Block also conducts its glass block business in Milwaukee.
Respondent’s alleges its offer to sell the disputed domain name to Complainant was an attempt to settle this domain name dispute and any other potential related arbitration or litigation.
Complainant asserts that it has established common law rights in the MILWAUKEE GLASS BLOCK mark. Prior panels have held that a complainant does not need to hold a registered trademark in order to establish rights in a mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims that it has common law rights in the MILWAUKEE GLASS BLOCK mark as the mark has developed secondary meaning and sufficient consumer good will related to Complainant’s business. In its Complaint and Additional Submission, Complainant states that it has continuously used the MILWAUKEE GLASS BLOCK mark for its glass block sales and installations since at least January 1, 1981. Since 2000 in particular, Complainant claims that it has performed over 1,000 in-person estimates and at least 1,000 installation jobs per year and that such efforts have resulted in approximately $1,000,000 in yearly sales. Additionally, Complainant’s points out that its MILWAUKEE GLASS BLOCK mark is prominently featured on its vehicle fleet, and therefore, Complainant’s mark is constantly in the public eye as Complainant’s employees travel to job sites. Complainant provides evidence of its Wisconsin State Trademark Registrations for the MILWAUKEE GLASS BLOCK mark registered on July 14, 2010 and June 15, 2011. The Panel considers the state trademark registrations as additional evidence that Complainant has rights in the MILWAUKEE GLASS BLOCK mark for the purposes of Policy ¶ 4(a)(i). See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).
Complainant also asserts that it has maintained an online presence since 2004, including operating the <milwaukeeglassblock.com> domain name from March 2004 until March 2005, when it unintentionally let the disputed domain name lapse. Since that time, Complainant has continued its online presence at the <milwaukeeglassblock.net> domain name. In Complainant’s Additional Submission, Complainant provides a copy of a brochure that Complainant claims it has used since 2000. Complainant points out that the brochure depicts a work vehicle with Complainant’s MILWAUKEE GLASS BLOCK mark prominently displayed. Furthermore, Complainant asserts in the Additional Submission that it received awards from the consumer review company, Angie’s List, in 2001, 2003, 2005, 2006, and 2008–2010 and provides evidence of the awards in Complainant’s Additional Submission Exhibit BB. Complainant further argues in its Additional Submission that Respondent does not dispute the evidence or conclusion that Complainant’s mark has acquired distinctiveness. The Panel finds that Complainant has developed secondary meaning in the MILWAUKEE GLASS BLOCK mark and established common law rights under Policy ¶ 4(a)(i) through its continuous and ongoing use of the mark in connection with its glass block sales and installation business since 1981. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
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.
Complainant argues that Respondent’s <milwaukeeglassblock.com> domain name is identical to its MILWAUKEE GLASS BLOCK mark but for the deletion of the spaces between the words of the mark and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel concludes that the addition of a gTLD and the deletion of spaces is inadequate to distinguish a disputed domain name from Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel finds that Respondent’s <milwaukeeglassblock.com> domain name is identical to Complainant’s MILWAUKEE GLASS BLOCK mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <milwaukeeglassblock.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel may find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel will address both requirements jointly.
Respondent alleges that Complainant’s mark is comprised by common, generic and mere descriptive terms and that, therefore, not able to be registered as a trademark. Although the Panel has found that Complainant has established common law rights and secondary meaning over the mark MILWAUKEE GLASS BLOCK it is undisputable that such terms are closely related to the parties’ services and locations. The Panel finds that even though the Complainant has some rights over such mark, he could not oppose to a rather descriptive use of the terms that form the disputed domain name. Registering a domain name with descriptive terms can determine interests in the domain name and is not, per se, an evidence of bad faith.
Respondent alleges that it purchased the <milwaukeeglassblock.com> domain name solely for advertising his business, Security Glass Block. Respondent claims that Security Glass Block has been in the business of selling glass block in the Milwaukee metropolitan area since March 1990 and that Respondent, Mr. Wirth, is the former owner. Respondent claims that he sold his company to Jim Coster in November 2006 and that since that sale, Security Block Glass has continued to employ Mr. Wirth as a consultant. In February 2011, Respondent states that Coster asked if he would redesign and update the Security Glass Block website and asked if Respondent still owned the <milwaukeeglassblock.com> domain name. Respondent states that he then renewed the disputed domain name with the intent that it be incorporated into the redesigned Security Block Glass website to garner potential customers seeking glass block in the Milwaukee area. The Panel finds that Respondent registered the disputed domain name for the purpose of furthering his own business and that this is a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent maintains that it has no control over the resolving website’s content since it is the GoDaddy, Inc. policy to list such domain names with advertising. The Panel finds that Respondent is not responsible for the competing third-party links on the resolving website according to Policy ¶ 4(a)(ii). See Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum Apr. 20, 2007) (Finding the respondent’s parking of <archivers.com> domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant and also provided by rival organizations,” thus the panel was unable to draw the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links.)
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel also finds that Respondent did not register or use the disputed 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent contends that the <milwaukeeglassblock.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MILWAUKEE GLASS BLOCK mark. Respondent claims that the generic terms describe the general category to which the underlying products belong and that Complainant and many others sell glass block in the Milwaukee area. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, and, therefore, the Panel also finds that Respondent did not register or use the <milwaukeeglassblock.com> domain name in bad faith under Policy ¶ 4(a)(iii). 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).
Respondent argues that on the advice of legal counsel, in order to settle this dispute, he sent a letter to Complainant on August 23, 2011offfering to sell the disputed domain name. However, Respondent states that acknowledgement of the letter has not been received from Complainant’s legal counsel. For the purpose of clarity, Respondent notes that at no time prior to Complainant’s claim has he attempted to sell the domain name to anyone. The Panel finds that Respondent’s dealings constitute an effort to settle the dispute and not an unsolicited offer to sell the <milwaukeeglassblock.com> domain name. See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors); see also Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).
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 <milwaukeeglassblock.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: September 28, 2011
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