Tom’s Lawn, LLC dba Tom's Outdoor Living v. Nexcor, LLC
Claim Number: FA1301001481773
Complainant is Tom’s Lawn, LLC dba Tom's Outdoor Living (“Complainant”), represented by Thomas Butchko, Oklahoma, USA. Respondent is Nexcor, LLC (“Respondent”), represented by Danny Tuttle, Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsoutdoorliving.com> (the “Domain Name”), registered with Fastdomain, Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2013; the National Arbitration Forum received payment on January 24, 2013.
On January 24, 2013, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the name. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, 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 January 25, 2013 the Forum notified Complainant of certain deficiencies in the Complaint and on January 28, 2013 Complainant submitted an Amended Complaint to the Forum.
On January 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@tomsoutdoorliving.com. Also on January 29, 2013, 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 February 19, 2013.
On February 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a lawn and landscape company of Tulsa, Oklahoma, established in that State as a limited liability company in March 2005. On August 20, 2012 it filed in the office of the Oklahoma Secretary of State a trade name report to do business under two trade names, one of which was Tom’s Outdoor Living.
Respondent provides consulting services to businesses in the Tulsa area. It was hired by Complainant to provide such services in the areas of accounting, sales strategies and website development. Unbeknownst to Complainant, Respondent registered the Domain Name in the name of Respondent.
The Domain Name is identical to the business name Tom’s Outdoor Living, owned by Complainant. Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Respondent has never been known as Tom’s Outdoor Living and does not provide lawn care or landscape services. It is not using the Domain Name but has refused to provide the user name or password for the Domain Name and the hosting account, making it impossible for Complainant to make changes to its website, email or DNS records, significantly disrupting Complainant’s business.
As to bad faith, Complaint has requested Respondent to relinquish control of the Domain Name. Respondent is requesting in excess of $1,200.00 to transfer the Domain Name registration. Respondent is now either a consultant for or a partner in a competing lawn and landscape company in the same city.
To date, Respondent has not prevented Complainant’s company name from being reflected in the corresponding domain names; has not disrupted the business of Complainant, except to prevent changes to the website; and has not attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location.
B. Respondent
Respondent says it was a strategic partner of Complainant, providing strategic consulting and marketing services and having the authority to act on behalf of Complainant under Oklahoma law. Respondent registered the Domain Name pursuant to that authority.
There are accounts payable from Complainant to Respondent and Respondent is merely holding the Domain Name pursuant to the rights it possesses arising from Respondent’s strategic alliance with Complainant pending a final accounting and reconciliation of that strategic alliance.
Respondent says it has a legitimate interest in the Domain Name and denies bad faith registration and use.
Complainant has failed to establish the elements necessary to entitle it to transfer of the Domain Name. This is not a dispute appropriate for resolution under the Policy.
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.
It is undisputed that Complainant was incorporated in 2005 under the name Tom’s Lawn, LLC and that it filed in the office of the Oklahoma Secretary of State a trade name report to do business under the trade name Tom’s Outdoor Living in 2012. However, Complainant does not claim to own a trademark and has provided no evidence that it has registered the name Tom’s Outdoor Living as a trademark or service mark.
In Oklahoma, as elsewhere, registering a trade name does not confer trademark rights upon the registrant of the trade name. Nevertheless, it is a factor, along with others, which may be considered when determining whether Complainant has common law rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Accordingly, the Panel has the opportunity to consider all information that may suggest that a mark has acquired secondary meaning, including registration of a trade name with a state Secretary of State. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Here, Complainant has provided no evidence that, through use in connection with Complainant’s goods or services, the name Tom’s Outdoor Living has become a distinctive identifier associated with Complainant or its goods or services. Neither its trade name registration nor its corporate name suffice to establish such “secondary meaning”, in the absence of any evidence of length and amount of sales under the claimed trademark, the nature and extent of advertising, consumer surveys and media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7. Accordingly, in the absence of any evidence of secondary meaning, the Complaint fails and must be dismissed. See IGC Entertainment Corporation v. Chris Edwards and SPRING Hosting, NAF Claim Number: FA0708001061006.
It is therefore unnecessary to consider the other elements under paragraph 4(a) of the Policy. See 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)).
Even were the Panel to assume, for present purposes, that Complainant has established trademark rights in the name Tom’s Outdoor Living, this is a business and/or contractual dispute that falls outside the scope of the Policy, which was implemented to address abusive cybersquatting, not contractual or legitimate business disputes. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) and Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). For that reason also, the Complaint must be dismissed.
Complainant having failed to establish all three elements required under the ICANN Policy and because this dispute is not appropriate for resolution under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tomsoutdoorliving.com> Domain Name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: March 6, 2013
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