Bevolo Gas & Electric Lights, Inc. v. French Quarter Lanterns
Claim Number: FA1204001440239
Complainant is Bevolo Gas & Electric Lights, Inc. (“Complainant”), represented by Craig Dillard of BoyarMiller, Texas, USA. Respondent is French Quarter Lanterns (“Respondent”), represented by Christy R. Bergeron of Kingsmill Reiss, L.L.C., Louisiana, USA.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <frenchquarterlanterns.com> registered with Tucows.com Co., and <frenchquarterlighting.com>, registered with Everyones Internet, Ltd. d/b/a Softlayer.
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.
Honorable Nelson A. Diaz (Ret.) (Chair), Honorable R. Glen Ayers, and Honorable Patrick C. Guillot (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 19, 2012.
On April 20, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <frenchquarterlanterns.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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”).
Also on April 20, 2012, Everyones Internet, Ltd. d/b/a Softlayer confirmed by e-mail to the National Arbitration Forum that the <frenchquarterlighting.com> domain name is registered with Everyones Internet, Ltd. d/b/a Softlayer and that Respondent is the current registrant of the name. Everyones Internet, Ltd. d/b/a Softlayer has verified that Respondent is bound by the Everyones Internet, Ltd. d/b/a Softlayer 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@frenchquarterlanterns.com, postmaster@frenchquarterlighting.com. Also on April 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 18, 2012.
On May 22nd, 2012 and May 23rd, 2012 Additional Submissions were received from the Complainant complying with Supplemental Rule 7.
On May 24, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz (Ret.) (Chair), Honorable R. Glen Ayers and Honorable Patrick C. Guillot (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Bevolo Gas & Electric Lights, Inc., has used the FRENCH QUARTER mark in association with lighting fixtures since 1947.
Complainant owns the FRENCH QUARTER mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,650,187 filed November 10, 2008; registered July 7, 2009). In 2004, Lagniappe Lighting, Inc., which registered the disputed domain names as “French Quarter Lanterns,” became an authorized distributor for Complainant’s products by registering the <frenchquarterlanterns.com> domain name and redirecting its own website to the disputed domain name. Respondent began using the <frenchquarterlighting.com> domain name in 2011.
On September 29, 2011, Complainant terminated the distributor relationship with Respondent.
On October 4, 2011, Respondent agreed to cease using Complainant’s mark in connection with any website that Respondent had owned.
Respondent has continued to market its products under the FRENCH QUARTER mark improperly and despite agreeing otherwise which is likely to adversely affect the goodwill associated with Complainant’s mark.
B. Respondent
Respondent, Lagniappe, began selling lighting fixtures in 2002 via an online store known as <lagniappelighting.com>. On August 20, 2003, Respondent registered the <frenchquarterlanterns.com> domain name. On March 3, 2004 Respondent registered the trade name “French Quarter Lanterns” with the Louisiana Secretary of State. Respondent sold lighting fixtures and goods via the <frenchquarterlanterns.com> domain name prior to associating with Complainant. In 2010, Complainant demanded that Respondent stop selling Complainant’s competitors’ lanterns and products “or else.” Complainant subsequently discontinued the parties’ seven year relationship and demanded that Respondent close its business. Respondent sought a judicial declaration that it is not violating trademark or other intellectual property rights by using the terms “French Quarter Lighting” and “French Quarter Lanterns.” The action is entitled Lagniappe Lighting, Inc. v. Bevolo Gas & Electric Lights, Inc., No. 4:11-CV-04538 (S.D. Tex. filed Dec. 23, 2011) and was filed in the United States District Court of the Southern District of Texas, Houston Division, on December 23, 2011. Complainant has since filed an Answer and Counterclaim in that proceeding. Respondent also sought an order cancelling Complainant’s trademark registration for FRENCH QUARTER, as well as money damages. Complainant also brought an action for damages and injunctive relief against Respondent in a matter that is entitled Bevolo Gas & Electric Lights, Inc. v. Lagniappe Lighting, LLC, 2012-1434 (La. Dist. Ct. 15th Dist. filed Mar. 13, 2012). The disputed domain names are not identical or confusingly similar to a trademark that Complainant has rights in because the term “French Quarter” is geographically descriptive. Respondent has rights and legitimate interests in the disputed domain names for its legitimate lighting fixture business. Respondent has not registered or used the disputed domain names in bad faith.
C. Additional Submissions
The Complainant responded to the original amended contentions with the same allegations as set forth in his original complaint. The additional submission contained exhibits and an additional case as part of the complainants arguments and allegations.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) and failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
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 asserts that it has protectable rights in the FRENCH QUARTER mark through its trademark registrations with the USPTO (Reg. No. 3,650,187 filed November 10, 2008; registered July 7, 2009). The Panel agrees and finds that Complainant has presented sufficient evidence of its rights in the FRENCH QUARTER mark under Policy ¶ 4(a)(i) and that such rights attached to Complainant on the filing date of November 10, 2008. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Further, Complainant argues that its company began in the French Quarter in 1945 when the founder, Andrew Bevolo, Sr. created a better manufacturing technique for gas lamps. Complainant asserts that over six decades later its lanterns can be found in many historic areas of Louisiana as well as in all 50 states and 29 countries. Complainant contends that it began using the FRENCH QUARTER mark in association with its lighting fixtures in 1947, which led to its trademark filing with the USPTO on November 10, 2008. Complainant claims that it has spent “significant amounts of time and hundreds of thousands of dollars developing its “French Quarter” mark . . .” Complainant argues that, through its efforts and long and continuous use of the mark, the FRENCH QUARTER mark has become directly associated with Complainant and its goods. The Complainant does not submit evidence of its usage of the FRENCH QUARTER mark in commerce. However, the Panel accepts Complainant’s arguments and find that it has established common law rights in its mark under Policy ¶ 4(a)(i) that date back to 1947. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
The Panel notes that Complainant does not present a confusingly similar or identical argument within its Amended Complaint. However, the Panel chooses to compare the disputed domain names to the FRENCH QUARTER mark to make such a determination under Policy ¶ 4(a)(i). In this regard, the Panel notes that the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names contain the entire FRENCH QUARTER mark, absent the space between the terms, while adding the descriptive terms “lanterns” or “lighting” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such omissions and additions to Complainant’s mark are not sufficient to render the domain names distinct from the FRENCH QUARTER mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds the Respondent’s <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names are confusingly similar to the FRENCH QUARTER mark under Policy ¶ 4(a)(i).
Respondent contends that the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names are comprised of a geographic term for a section of New Orleans, Louisiana and, as such, cannot be found to be confusingly similar to Complainant’s mark. The Panel finds 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 names are identical or confusingly similar 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 holds that Complainant has not established 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)); 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).
The Panel notes that Respondent does not directly argue that it is commonly known by the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names under Policy ¶ 4(c)(ii). However, Respondent notes that it registered the trade name “French Quarter Lanterns” with the Louisiana Secretary of State on March 3, 2004. Further, Respondent asserts that it began selling lighting fixtures from the <frenchquarterlanterns.com> domain name in 2003 and opened the storefront “French Quarter Lanterns” in October of 2005. The Panel notes that Respondent registered the disputed domain names under the trade name “French Quarter Lanterns,” per the WHOIS information on file. Based upon these arguments, the Panel finds that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)); see also 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).
Further, Respondent argues that it has rights and legitimate interests in the disputed domain names. Respondent first asserts that it has operated its websites selling lighting fixtures for many years, having registered the <frenchquarterlanterns.com> domain name in 2003. Further, Respondent argues that the distributorship termination letter that is referenced by Complainant does not state that Respondent agreed to giving up all uses of the “French Quarter” term and did not contemplate giving up the domain names at issue here. Respondent argues that it has continuously used the disputed domain names for the sale of lighting fixtures for more than eight years and, as such, has rights and legitimate interests in the domain names. Lastly, Respondent argues that Complainant did not object to the domain names either before or during the distributorship agreement between it and Complainant, but only after the agreement was terminated by Complainant. The Panel agrees and finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also 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 K&N Eng'g, Inc. v. Kinnor Servs., D2000-1077 (WIPO Jan. 19, 2001) (finding that the respondent had rights and legitimate interests in the domain name because “Respondent has been an authorized distributor of the Complainant's goods for many years”).
Respondent also argues that the terms of the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names are common and geographic in nature and, therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees with Respondent and the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
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 concludes that Respondent has rights or legitimate interests in the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names 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.”).
The Panel further finds that Respondent has not registered or used the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names in bad faith since Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other 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); see also 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent asserts that Complainant cannot show that Respondent registered and is using the disputed domain names in bad faith. Respondent notes that it has never attempted to sell the disputed domain names to Complainant or anyone else; Respondent has not used the domain names to prevent Complainant from reflecting its mark in a domain name; Respondent did not register the domain names to disrupt the business of Complainant; and Respondent did not register the disputed domain names to intentionally attract Internet users to its website instead of Complainant’s website. Throughout its Response, Respondent also notes that it had operated under a valid distributorship agreement with Complainant for many years and that at no time did Complainant question Respondent’s usage of the disputed domain names. The Panel finds that, under the circumstances presented here, Respondent did not register or use the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also Vanden Bos v. Proxyone Domain Trust, FA 170632 (Nat. Arb. Forum Sept. 10, 2003) (“Complainant knew from 1997 that Respondent used and promoted the <fusac.com> domain name in the United States and Complainant cannot show bad faith registration because Complainant approved Respondent's registration of the mark in a domain name, acquiesced to it and received the benefits from it.”).
Further, Respondent asserts that the <frenchquarterlanterns.com> domain name was registered on August 20, 2003 and the <frenchquarterlighting.com> domain name was registered on March 22, 2007, which Respondent states is prior to Complainant’s rights in the FRENCH QUARTER mark that was filed with the USPTO on November 10, 2008. The Panel declines to hold that Complainant has common law rights in its asserted mark prior to its filing date with the USPTO, the Panel holds that Respondent could not have registered the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain names in bad faith under Policy ¶ 4(a)(iii) where the domain name registrations predate Complainant’s trademark rights. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <frenchquarterlanterns.com> and <frenchquarterlighting.com> domain REMAIN WITH Respondent.
Honorable Nelson A. Diaz (Ret.) (Chair), Honorable R. Glen Ayers and Honorable Patrick C. Guillot (Ret.) Panelists
Dated: May 30th, 2012
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