Questar Gas Company v. Robert Linden / Thermal-Wise Insulation
Claim Number: FA1203001433714
Complainant is Questar Gas Company (“Complainant”), represented by Tracey Harrach, Utah, USA. Respondent is Robert Linden / Thermal-Wise Insulation (“Respondent”), represented by Ned E. Ostenso, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermalwiseinsulation.com>, registered with Network Solutions, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2012; the National Arbitration Forum received payment on March 8, 2012.
On March 9, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <thermalwiseinsulation.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2012 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@thermalwiseinsulation.com. Also on March 14, 2012, 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 April 3, 2012.
Complainant’s Additional Submission was received April 9, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 16, 2012 and deemed complaint with Supplemental Rule 7.
On April 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides natural gas and related services to over 900,000 customers in the United States. Since at least as early as March 2007, Complainant has used the THERMWISE mark in connection with goods and services related to energy conservation. This mark has been registered on the Principal Register of the U.S. Patent and Trademark Office as a standard character mark since November 2008.
Respondent registered the disputed domain name, <thermalwiseinsulation.com>, on April 21, 2011. Complainant contends that the disputed domain name is confusingly similar to Complainant’s THERMWISE mark. Complainant further contends that the home insulation services advertised by Respondent using the disputed domain name overlap with or are similar to services provided by Complainant, creating a likelihood of confusion.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name, on the grounds that the domain name is being used to advertise services that compete with those offered by Complainant under its THERMWISE mark.
Finally, Complainant asserts that the disputed domain name was registered and being used in bad faith. In support thereof, Complainant alleges that Respondent registered and is using the domain name to market services that compete with those offered by Complainant, disrupting Complainant’s business; and that Respondent registered the domain name knowing of the likelihood that confusion would occur.
B. Respondent
Respondent states that he originally registered the disputed domain name on March 2, 2009, explaining that the April 2011 registration date referred to by Complainant is actually the date on which the registration was transferred from one registrar to another. Respondent states that he does business as Thermal-Wise Insulation, LLC, and has registered this name with the Minnesota Secretary of State.
Respondent argues that “therm” should be distinguished from “thermal,” in that “therm” refers to a unit of measurement commonly used by natural gas companies such as Complainant, while “thermal” refers to heat generally. He notes that the disputed domain name also contains the word “insulation,” and on these grounds contends that the disputed domain name is not confusingly similar to Complainant’s mark.
Respondent claims further that he has rights or legitimate interests in the disputed domain name, on the grounds that he has used the name in connection with a bona fide offering of services, has been commonly known by the domain name, and uses the domain name primarily for an informational website. He notes that he operates in western Wisconsin and eastern Minnesota, a market area that is geographically remote from Complainant’s operating area of Utah, Wyoming, and Idaho; and that the services he offers are different from those offered by Complainant.
Respondent denies having registered or used the domain name in bad faith, primarily on the ground that he registered and is using the name solely to use for his insulation company. He denies having had any previous knowledge of Complainant or any intent to disrupt Complainant’s business.
Respondent states further that Complainant recently brought suit against Respondent in the U.S. District Court for the District of Utah for trademark infringement and other claims, but that this action was dismissed in March 2012.
Finally, Respondent requests that the Panel make a finding of reverse domain-name hijacking, on the ground that Complainant must have known that it could not demonstrate bad faith registration and use.
C. Additional Submissions
In its Additional Submission, Complainant notes (inter alia) that Respondent registered the disputed domain name subsequent to the date on which Complainant’s trademark registration was granted. Complainant takes issue with Respondent’s attempt to distinguish “therm” from “thermal,” claiming that the two words share the same root and are closely related in meaning.
Complainant also disputes Respondent’s claim that he was unaware of Complainant’s mark, arguing that “any reasonable search for ‘thermalwise’ or ‘thermalwiseinsulation’ would have identified Complainant’s [THERMWISE] Registration.” Complainant further states that in view of its prevalent use of the THERMWISE mark since at least as early as 2007, a cursory Internet search performed in 2008 or 2009 would have identified Complainant’s THERMWISE mark and website.
Complainant states that the Utah lawsuit was voluntarily dismissed by Complainant when Respondent moved to dismiss for lack of personal jurisdiction, but states that Complainant has since filed a similar action in the U.S. District Court for the District of Minnesota.
The Panel finds it unnecessary to consider Respondent’s Additional Submission. Paragraph 12 of the Rules vests the Panel with the discretion to decide whether to receive supplemental material from the parties.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds, for the reasons explained below, that Complainant has not met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name. As that finding is dispositive of the present matter, the Panel declines to reach the question of registration and use in bad faith.
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.
The disputed domain name is comprised of three components (disregarding punctuation and the top-level domain suffix): “thermal,” “wise,” and “insulation.” In the Panel’s view, “thermal” and “wise” represent the more significant components, while “insulation” is used in a generic sense. Complainant’s trademark consists of two components, “therm” and “wise.” The fact that “therm” can be used in a more specific sense, while relevant, does not eliminate the similarity between “therm” and “thermal.” The Panel therefore finds <thermalwiseinsulation> to be confusingly similar to Complainant’s THERMWISE mark. The Panel reaches this conclusion without reference to the nature of the goods or services offered by the parties or the content of the parties’ respective websites, neither of which is relevant to the narrow question of identicality or confusing similarity under paragraph 4(a)(1) of the Policy. See, e.g., Mejeriforeningen Danish Dairy Board v. Cykon Tech. Ltd., D2010-0776 (WIPO July 14, 2010) (“The question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is ‘confusingly similar’ to the Complainant’s mark.”).
Complainant bears the burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name. While there is obviously some similarity between Complainant’s THERMWISE mark and Respondent’s company name and domain name, it is not so obvious that Respondent is infringing upon Complainant’s mark. To the contrary, there appears to be a legitimate trademark dispute between the parties, and the Panel is reluctant to adjudicate such a dispute given the limitations inherent in this streamlined process. See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ¶ 4.1(c) (Oct. 24, 1999), available at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm (noting that “the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)”). “The Policy covers only cyber squatting and cyber piracy, that is, instances ‘where the domain name registrant’s business activities (to the extent that they exist at all) are merely a pretext designed to camouflage the registrant’s intent to exploit the trademark value of a domain name.’” Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004) (quoting Palace Holding SA v. Priston Entmt. Ltd., D2003-0705 (WIPO Dec. 5, 2003)).
The fact that Complainant has elected to pursue similar or at least related claims against Respondent through litigation currently pending in federal court lends further support to the Panel’s election not to adjudicate the parties’ trademark dispute in this forum. See Palace Holding SA, supra (“Making an award here would do little more than afford a temporary tactical advantage to one of the parties in that ongoing dispute.”). The Panel therefore finds, for purposes of this proceeding, that Complainant has not met its burden of proving a lack of rights or legitimate interests as required by paragraph 4(a)(2) of the Policy.
The Panel’s resolution of the preceding issue being dispositive of the present matter, the Panel declines to address the question of registration and use in bad faith (and, for the same reason, the claim of reverse domain-name hijacking).
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thermalwiseinsulation.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: April 18, 2012
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