S.A. Bendheim Co., Inc. v. Hollander
Glass
Claim Number: FA0301000142318
PARTIES
Complainant
is S.A. Bendheim Co., Inc., Passaic,
NJ (“Complainant”) represented by Stephen
R. Buckingham, of Lowenstein Sandler P.C. Respondent is Hollander Glass, Houston, TX (“Respondent”) represented by Alan H. Levine, of Levine &
Mandelbaum.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <restorationglass.com>,
registered with Alldomains.com Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
P.
Jay Hines as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 18, 2003; the Forum received a hard copy of the
Complaint on January 21, 2003.
On
January 21, 2003, Alldomains.com Inc. confirmed by e-mail to the Forum that the
domain name <restorationglass.com>
is registered with Alldomains.com Inc. and that the Respondent is the current
registrant of the name. Alldomains.com Inc. has verified that Respondent is
bound by the Alldomains.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
February 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 24, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@restorationglass.com by
e-mail.
A
timely Response was received and determined to be complete on February 20, 2003.
On
February 28, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.
Complainant
filed a timely additional submission on February 25, 2003. Respondent filed a timely additional
submission on March 3, 2003. On March
7, 2003, Complainant filed a second supplemental declaration that is not in
compliance with NAF Supplemental Rule 7.
Nonetheless, the Panel has considered the contents.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
owns two Federal registrations, one for the word mark RESTORATION GLASS and one
for the composite mark RESTORATION GLASS & DESIGN. Complainant applied for registration of each
mark on December 27, 1995, claiming a date of first use of each mark of
September 1984. Registration No.
2,159,850 registered on May 26, 1998 pursuant to Section 2(f) of the Trademark
Act with a disclaimer of exclusive rights to use of the term “glass.” Registration No. 2,161,214 issued on June 2,
1998 pursuant to Section 2(f) of the Trademark Act with a disclaimer of
exclusive rights to use of the term “glass.”
Each registration covers “glass panels, panes and windows.” The Certificate of Registration for the RESTORATION
GLASS & DESIGN mark includes the statement: “Sec. 2(f) as to ‘restoration.’”
Complainant
claims to be the premier maker of glass panels and panes for use in historic
and landmark properties. The product
bearing the mark RESTORATION GLASS is handmade, antique glass crafted by a
centuries old cylinder method.
Complainant’s product has been installed in the White House, Monticello,
Mount Vernon, Faneuil Hall, and many other historic properties.
Complainant
alleges that Respondent is a direct competitor in the field of reproduced
antique sheet glass. Complainant
alleges that the domain name is identical to a mark in which it has
rights. Complainant alleges that
Respondent had both constructive and actual notice of Complainant’s
registration of the mark RESTORATION GLASS before registration of the domain
name. Accordingly, Complainant alleges
that Respondent’s use may not be considered a bona fide offering of goods and
services, nor a legitimate noncommercial or fair use.
Complainant
alleges that the bad faith registration and use of the domain name is
demonstrated by preventing Complainant from reflecting its mark in the .com
category, by disrupting the business of a competitor and by intentionally
attracting Internet users to the site for commercial gain by creating a
likelihood of confusion with Complainant’s mark.
B.
Respondent
Respondent
claims that the term “restoration glass” has been used since as early as 1976
to describe glass produced currently but purposely manufactured with
imperfections in order to resemble glass made in the eighteenth and nineteenth
centuries. Respondent claims to be a major distributor of the product, having
installed it in hundreds of restored buildings including the Smithsonian, the
old Patent Office, the Georgia Governor’s Mansion and others. Respondent produces a 1989 article from
“Popular Mechanics” entitled “Restoration Glass” and listing fifteen
distributors. Respondent also points to
its own advertising in 1995, 1996, 1997 and currently, the web sites of
approximately nine third parties and a March/April 2002 excerpt from
“Traditional Building” magazine.
Respondent
argues that issuance of the two Federal registrations on the basis of acquired
distinctiveness was based on a false claim that Complainant’s use was
substantially exclusive for, pursuant to the Trademark Act, the five years
before the date on which the claim of distinctiveness was made. Respondent admits receiving notice of
Complainant’s registration in June 1998, but argues that its legitimate
interests are shown by its descriptive use of the designation “restoration
glass” in its prior advertising.
Respondent claims it is making a legitimate fair use of a descriptive
term in the building restoration industry for a type of glass, without intent
to divert customers from Complainant, or to tarnish Complainant’s alleged mark.
Respondent
argues that its purpose was to acquire a domain name which might give it some
competitive advantage over all its competitors who sell restoration glass. Respondent claims that its action was fair
competition aimed at selling its own products, not disrupting Complainant’s
business. Finally, Respondent argues
that, while it has used the domain name to attract Internet users to its site
for commercial gain, it has not done so by creating a likelihood of confusion
with Complainant’s mark. Rather, its
web site and advertising make it clear that it is not selling a brand of glass
called “Restoration Glass,” but a product that everyone calls restoration
glass.
C.
Complainant’s Additional Submission
Complainant
argues that Respondent has not provided any documentary evidence establishing
pervasive descriptive use in the industry, particularly prior to Complainant’s
date of first use. Complainant produces
documents showing its trademark use in the 1980s. Complainant asserts that antique sheet glass was not widely
available prior to its introduction of its restoration glass, citing a December
1985 mention in “Interior Design” magazine.
Complainant argues that it would not have been granted its trademark
registrations if the Examining Attorney had not made a legal determination
after reviewing documentary proof that Complainant had made substantially
exclusive and continuous use of the mark for at least five years, and that the
registrations afford a presumption that the mark has acquired distinctiveness.
Complainant
addresses each of the third party web sites referred to by Respondent and
indicates that there was a connection to Complainant’s product in the
background to the “Popular Mechanics” article by Bob Vila and his corresponding
use on the “This Old House” web site, that Complainant had sent a cease and
desist letter to one of the web site owners, successfully asked another to
cease use and that two others were actual references to Complainant’s product,
one by an authorized European supplier of Complainant and the other by an
authorized wholesaler of the supplier.
D.
Respondent’s Additional Submission
Respondent
reiterates that the term “restoration glass” is the most apt if not generic
term for glass with imperfections used by people in the restoration
trades. Respondent discounts the fact
that some of the third parties using the term “restoration glass” descriptively
are customers of Complainant. They are
still making descriptive use of the term in the industry. Respondent points to four specific such
uses. Respondent argues that
Complainant knew of its descriptive use of the term during the pendancy of its
applications for Federal registration and failed to advise the Examining
Attorney.
Respondent
reiterates the fact that it responded to a cease and desist letter from
Complainant from June 1998 indicating that its use was fair use of a
descriptive term and that nothing further was heard from the Complainant.
E.
Complainant’s Second Supplemental Declaration
Complainant
asserts that the only party that has made any substantial use of its mark is
Respondent and explains that it did not take further actions against Respondent
in 1998 because the usage appeared to be limited to the specialty field of
stained glass, a small market for Complainant.
When Complainant became aware of Respondent’s expanded usage, it opted
for the less expensive mandatory administrative proceeding. Complainant notes that Respondent never
sought to oppose or cancel its Federal registrations.
FINDINGS AND 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.
The domain name and the mark are
identical. As the addition of the
generic top level domain is required for domain name registration, it is
irrelevant for the purposes of determining whether the mark and the domain are
identical. Hannover Ruckversicherungs Aktiengesellschaft v. Hyungki Ryu, FA
102724 (Nat. Arb. Forum January 7, 2002); Wembly
Nat’l Stadium Ltd. v. Thompson, D2000-1233 (WIPO November 16, 2000).
The Panelist also finds that the
Complainant has rights in the mark RESTORATION GLASS. Complainant has demonstrated long and extensive use of the mark
RESTORATION GLASS. The Panelist
believes that the wording “restoration glass” is descriptive. However, one can acquire rights in a
descriptive term by promoting it as a mark over a long period of time. Complainant has demonstrated that it has
established goodwill in the term in that the mark is recognized by others as a
source indicator for Complainant’s antique sheet glass product. By registering the mark pursuant to 2(f) of
the Trademark Act, Complainant admits that the term is descriptive, but that
due to its long use and promotion of the term, it has acquired secondary
meaning as a source indicator for its products.
Neither party has produced a copy of a
file history for Complainant’s registration, which would demonstrate what
arguments or evidence were submitted to the Examining Attorney to obtain
registration pursuant to Section 2(f) as to the term “restoration.” However, even if Complainant merely relied
upon its use of the mark for a term of five years prior to claiming acquired
distinctiveness under the Trademark Act, it is entitled to the presumptions
that the mark is valid, and that Complainant possesses the exclusive right to
use the registered mark in commerce on or in connection with the goods
specified in the registration.
Trademark Act '33, 15 U.S.C. '1115.
While Complainant may risk the loss of
its rights if the designation becomes the apt or generic name for the goods,
this is not the case here. There are
other terms available and being used to identify the genus of the goods, such
as antique sheet glass, period glass or reproduction glass. Further, it is not the role of the Panelist
to judge the strength of Complainant’s rights which is properly left to the
courts or the Trademark Trial and Appeal Board. Pet Warehouse v. Pets.com,
Inc., D2000-0105 (WIPO April 13, 2000); TPI
Holding Inc. v. J B Designs, D2000-0216 (WIPO May 22, 2000). The fact that there are some third parties
making descriptive use of the designation does not, in the context of this
proceeding, negate the fact that the Complainant has demonstrated that it does
have rights in the mark RESTORATION GLASS.
Respondent admits that it had actual
notice of Complainant’s Federal trademark registrations as of June 1998. It registered the domain name on September
15, 1999. Under the circumstances, it
cannot be said that the use of the domain name by Respondent in offering its
goods was bona fide. Chip Merch, Inc. v. Blue Star Elec., D2000-0474
(WIPO Aug. 21, 2000); Ticketmaster Corp.
v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001). Respondent has produced evidence of its use
of the designation “Restoration Glass” as early as 1995 and claims use since
1979, which predates the use claimed by Complainant in its registrations. However, fair use under the Trademark Act is
defined as use of a term which is descriptive of and used fairly and in good
faith only to describe the goods or services.
Trademark Act '33, 15 U.S.C. '1115. While Respondent’s web site defines
restoration glass as a generic term commonly used to describe glass produced to
replicate both the machine drawn and mouth blown antique products and makes descriptive
use of the term, such as “machine drawn or ‘machine antique’ restoration glass
is the glass of choice,” the domain name is not merely the address for the
site. The domain name is prominently
displayed at the top of the site in a specific stylized script with the letters
R and G larger than the remaining letters and with the subscript “an online
resource.” Such usage is not merely
descriptive usage, but usage in the nature of a mark to identify source.
Accordingly, the panel finds that Respondent
has not established that it is making a legitimate non-commercial or fair use
of the domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the mark at issue pursuant to Paragraph 4(c)(iii) of
the Policy.
While Respondent’s registration of the
domain name does prevent Complainant from reflecting its mark in a
corresponding domain name, there is no evidence that Respondent has engaged in
a pattern of such conduct. Thus, bad
faith within the meaning of Paragraph 4(b)(ii) of the Policy has not been
shown.
As indicated above, while Respondent has
made some descriptive use of the designation “restoration glass” other than as
a mark, it has also intentionally and with actual knowledge of Complainant’s
registrations, made use of the designation “Restoration Glass” in the nature of
a mark and not merely to describe its goods.
The respective parties are direct competitors. Respondent’s prominent use of the restorationglass.com
domain name in the format of a logo is not good faith use of a descriptive term
merely to sell the described goods, but indicates bad faith use and
registration, primarily for the purpose of disrupting the business of a
competitor under Paragraph 4(b)(iii) of the Policy. Surface Protection Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001); Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000). Likewise,
Respondent has intentionally attempted to attract Internet users to its site
for commercial gain by creating a likelihood of confusion with the
Complainant’s mark pursuant to Paragraph 4(b)(iv) of the Policy. Busybody,
Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000); G. D. Searle & Co. v. Celebrex Drug
Store, FA 123933 (Nat. Arb. Forum Nov. 21, 2002).
DECISION
For the foregoing reasons, the Panelist
concludes:-that the domain name registered by Respondent is identical to a mark
in which the Complainant has rights;-that Respondent has no rights or legitimate
interests in respect of the domain name; and-that the domain name has been
registered and used by Respondent in bad faith.
Accordingly, the Panelist finds that the
Complaint should be allowed and the domain name <restorationglass.com> transferred to the Complainant.
P. Jay Hines, Panelist
Dated: March 13, 2003
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