Superblock LLC v. Eastwind Groups Ltd.
Claim Number: FA0707001042587
Complainant is Superblock
LLC (“Complainant”), represented by Joshua Stein, 1418 North Avenue, Crystal Lake, IL 60014. Respondent is Eastwind Groups, Ltd. (“Respondent”), represented by Vanessa
MacAdam, of Eastwind Groups, Ltd. c/o Corporate Services, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME NAME
The domain name at issue is <superblock.com>, registered with Signature Domains, 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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2007.
On July 20, 2007, Signature Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <superblock.com> domain name is registered with Signature Domains, LLC and that the Respondent is the current registrant of the name. Signature Domains, LLC has verified that Respondent is bound by the Signature Domains, LLC 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 July 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 20, 2007.
On August 29, 2007, 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.
Complainant says it is "the owner of the registered standard character trademark/servicemark 'Superblock,'" which has been in continuous commercial use since February of 1999 and has been assigned serial number 77/071,259 by the United States Patent and Trademark Office." Complainant says it uses the mark in connection with the operation of a computer network consulting and computer software development company and that Complainant has promoted its products and services through a website featuring the Superblock mark, <superblock.net>, since its registration in February of 1999.
The Complaint annexes a Notice of Publication issued on July 11, 2007 by the United States Patent and Trademark Office under section 12(a) of the Trademark Act of 1946, as amended, specifying July 31, 2007 as the publication date for opposition to the application by Complainant to register the mark SUPERBLOCK.
The Complaint also annexes a printout of a web page headed <superblock.com> which lists sponsored links to sites offering concrete and brick pavers.
Complainant says the domain name <superblock.com> is identical to Complainant's trade and service mark, Superblock, if one omits the ".com" suffix. Complainant believes that the Respondent is neither commonly known by the domain name nor has any trademark or intellectual property rights in the domain name. Respondent is not using the domain name in connection with the bona fide offering of goods and services. Registration of the domain name <superblock.com> by Respondent violated and infringed upon Complainant's trademark rights to "Superblock." The domain name was registered in bad faith and is currently being used in bad faith to display advertisements from search terms related to the Complainant's trademark, SUPERBLOCK.
Complainant claims that Respondent is currently using the <superblock.com> domain name to divert Internet traffic to a website that offers a search engine and links to other websites featuring services that are in direct competition with Complainant's services. Respondent is capitalizing on the confusing similarity between <superblock.com> and the SUPERBLOCK trademark to redirect users to a website unconnected to Complainant.
Respondent registered the disputed domain name on March 15, 2001 to use for a web site for products and services related to superior quality construction blocks as well as other building construction and design products, and Respondent’s website is used for this purpose. Complainant filed its only trademark application (which provides no enforceable rights under the Policy) in December 2006. Complainant’s case is based on a mere purported common law trademark for a generic or, at best, descriptive term.
Respondent has rights and a legitimate interest to the disputed domain name because it incorporates the common generic term “super block” and is used as a web site for products and services related to superior quality concrete blocks as well as other building construction and design products.
Because Respondent registered the disputed domain name more than five 5
years before Complainant even filed for its trademark, it is impossible for
Complainant to meet its burden of proving bad faith registration of the disputed
domain name, since Respondent could not, at the time of registration, have had
knowledge of a non-existent trademark.
Even more outrageous is the fact that Complainant did not file as a
business within its jurisdiction of
Complainant has not alleged that Respondent registered the disputed domain name with Complainant in mind, the undisputed evidence being that Respondent registered the disputed domain name without such knowledge since the Complainant did not even exist at the time of registration. Nor is there any evidence of bad faith of any kind.
This Panel should follow the numerous ICANN decisions that have recognized the rights of registrants over those sought to be asserted by bullies who try to monopolize the use of common terms. Moreover, this Panel should declare that Complainant has abused this administrative proceeding and engaged in Reverse Domain Name Hijacking because it knew that Respondent registered in good faith the disputed domain name more than five years prior to Complainant even filing an application to register its generic term mark.
C. Supplementary submissions
There were no supplementary submissions.
Complainant has failed to establish the elements entitling it to relief and has engaged in reverse domain name hijacking.
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 first matter that must be proved under this element is that Complainant has trademark or service mark rights.
Paragraph 4(a)(i) of the Policy does not expressly require that a complainant demonstrate that it had rights in a trademark or service mark prior to the respondent’s registration of the disputed domain name. Instead, the Policy refers to the complainant’s ownership of trademark rights in the present tense. See PC Mall, Inc. v. Pygmy Computer Systems, Inc., D2004-0437 (WIPO Aug. 25, 2004). In recognition of this, a number of cases have held that a complainant can have rights in a trademark or service mark corresponding to the domain name even where those rights first arose after the registration of the domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001); Kangwon Land, Inc. v. Bong Woo Chun, D2003-0320 (WIPO July 4, 2003); AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003); Iogen Corp. v. Iogen, D2003-0544 (WIPO Sept. 7, 2003); Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO Oct. 8, 2003). Not all Panels have embraced this interpretation of Paragraph 4(a)(i). See Chiappata v. Morales, D2002-1103 (WIPO Jan. 20, 2003).
This Panelist adopts the preponderant view that paragraph 4(a)(i) of the Policy embodies no requirement that a complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005). Nevertheless, a complainant must show that, by the time it filed the Complaint, it had trademark rights. Complainant fails on this score.
Far from being, as claimed, "the owner of the registered standard character trademark/servicemark 'Superblock,'" Complainant is merely the applicant for registration of that mark, having filed its application with the USPTO in December 2006. Applications to register trademarks do not give rise to trademark rights. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 17, 2001) and Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001).
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent. See British Heart Found. v. Meyer, AF-0957 (eResolution Aug. 22, 2001).
Mere use of a domain name or a corporate name is insufficient. The use must be use as a trademark or service mark.
Despite Complainant's claim to have used SUPERBLOCK as a mark continuously on its website at <superblock.net> since February 1999, Complainant has provided no evidence of any use of that expression as a mark. In the absence of any evidence, the Panel is not prepared to find that Complainant has acquired, through use, common law trademark rights in the descriptive term "super block."
Complainant has failed to establish this element of its case.
Since Respondent has raised the issue of reverse domain name hijacking, it is nevertheless appropriate to consider briefly the other elements.
On the assumption, for this purpose, that SUPERBLOCK is indeed a trademark or service mark in which Complainant has rights, the disputed domain name is identical to it, the suffix ".com" being inconsequential. See Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Feb. 5, 2000); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000).
Respondent registered the disputed domain name on March 15, 2001 and has since used it in its descriptive sense for a website advertising building blocks and other building materials, goods unrelated to Complainants computer consultancy services. There is no evidence Respondent was aware of Complainant when Respondent registered the disputed domain name. The Panel is satisfied that before any notice to Respondent of this dispute, Respondent has used the domain name in connection with a bona fide offering of goods or services.
Complainant has failed to establish this element.
The essence of a Complaint under the Policy is an allegation of bad faith targeted at the Complainant. For that bad faith to be present the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, he cannot sensibly be regarded as having any bad faith intentions directed at the Complainant. See Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005) and Way Int’l Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003).
Here, Respondent registered the disputed domain name long before Complainant applied to register its claimed trademark and there is no evidence Respondent was aware of Complainant’s existence nor that it has registered or has used the disputed domain name in bad faith.
Complainant has failed to establish this element of its case.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: see Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Nov. 8, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 8, 2001) or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests, see Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 21, 2000); or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: see Zuckerman v. Peeris, DBZ2002-00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002-0754 (WIPO Nov. 27, 2002).
The following factors satisfy this panel that a finding of reverse domain name hijacking is appropriate in this case:
1. Complainant’s false assertion that it is "the owner of the registered standard character trademark/service mark 'Superblock'" when, as at the time of filing the Complaint, it is a mere applicant for registration, a statement apparently intended to mislead this panel;
2. Complainant's failure to provide any evidence of use of the expression "superblock" as a trade or service mark, indicating that Complainant was aware it had no common law trade or service mark rights in that expression;
3. Respondent's registration of the disputed domain name five years before Complainant applied to register a trademark at the USPTO, indicating that Complainant was aware Respondent did not register the disputed domain name in bad faith; and
4. Respondent's use of the disputed domain name descriptively for a website with advertising links associated predominantly with building materials as distinct from computer services of the kind provided by Complainant, indicating that Complainant was aware of Respondent's rights and legitimate interest in the disputed domain name.
Accordingly, pursuant to paragraph 15(e) of the Rules, the panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: September 11, 2007
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