Key Metals, Inc. v. Alan Gamble
Claim Number: FA1407001571541
Complainant is Key Metals, Inc. (“Complainant”), represented by Jennifer L. Mozwecz of Shams, Rodriguez & Mozwecz, P.C., Illinois, USA. Respondent is Alan Gamble (“Respondent”), represented by Adam R. Mordecai of Primmer Piper Eggleston & Cramer PC, New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keymetals.com>, registered with Network Solutions, LLC.
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.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2014; the National Arbitration Forum received payment on July 24, 2014.
On July 24, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <keymetals.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 July 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2014 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@keymetals.com. Also on July 31, 2014, 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 August 19, 2014.
An Additional Submission was submitted by the Complainant, and this submission was received on August 26, 2014. This Additional Submission was timely filed, and therefore the contents therein shall be taken into account in this decision.
On August 27, 2014 the Respondent sent as well a timely additional submission, and therefore it is established that this submission meets the requirements of Supplemental Rule 7(a) and therefore it will be taken into account in the decision-making of this case.
On August 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil J. 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.
1. Complainant has rights in the KEY METALS mark under Policy ¶ 4(a)(i).
a. Complainant distributes cold finished steel; hot rolled steel; structural, tool, plate, and sheet steel; steel reinforcing rods and mesh; and a variety of other steel products.
b. Complainant provided evidence of its registration for the KEY METALS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,531,852 filed February 26, 2013 registered May 20, 2014).
2. Respondent has no rights or legitimate interests in the <keymetals.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent’s disputed domain name resolves to a website likely to cause confusion as to Complainant’s affiliation with Respondent’s resolving website. Respondent aims to tarnish Complainant’s reputation and profit off of the use of Complainant’s KEY METALS mark.
3. Respondent registered and is using the <keymetals.com> domain name in bad faith.
a. Respondent’s use of the disputed domain name competes with Complainant, thereby disrupting Complainant’s business.
b. Respondent is intentionally attempting to attract, for commercial gain customers to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.
i. Consumers seeking Complainant’s services have mistakenly e-mailed Respondent, and Respondent has benefitted financially from these mistaken e-mails.
c. From 2011 through 2012, Respondent had no content on the resolving website and the disputed domain name directed to another metal distributorship business owned by Respondent.
B. Respondent makes the following contentions:
1. Respondent registered the <keymetals.com> domain name in 2005 in connection with its formation of the company, Key Metals, LLC.
2. By virtue of Respondent’s LLC registration, Respondent has held exclusive rights to the KEY METALS mark in Massachusetts and New Hampshire since 2005 and 2006, respectively.
3. Respondent’s last order of metal sold on March 26, 2008, and since that time Respondent has not engaged in any product sales. Respondent holds various intellectual property rights and operates the disputed domain name to demonstrate the technologies that respondent has developed.
4. To avoid confusion, Respondent provides a disclaimer on the resolving website and further provides a link to Complainant’s official website.
5. Complainant has not demonstrated that the disputed domain name is confusingly similar.
6. Complainant has failed to fulfill its burden under Policy ¶ 4(a)(ii).
a. There is no proof of actual confusion in the market place between Complainant’s mark and Respondent’s disputed domain name.
b. Respondent has owned and operated the disputed domain name since 2005, and has thus been commonly known by the Key Metals name since the company formation also in 2005.
7. Respondent did not register the <keymetals.com> domain name in bad faith.
a. Complainant cannot show that respondent registered the disputed domain name in bad faith, since it was registered in conjunction with Respondent’s Key Metals, LLC in 2005.
b. Since 2008 Respondent has used the disputed domain name in relation to marketing and displaying the technology and IP that Respondent has developed for the metals industry.
c. Respondent is not using the disputed domain name to purposefully disrupt Complainant’s business.
d. Respondent is not commercially profiting from the use of the disputed domain name. Since Respondent’s last sale of metal through the disputed domain name in 2008, no Internet users or entity viewing the disputed domain name has purchased metal from Respondent through Key Metals, LLC thinking that it was buying products from Complainant.
C. Additional Submissions
In light of the statements made by the Respondent, Complainant submitted an Additional Written Statement pursuant to Rule 7(a) of the National Arbitration Forum Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules).
Likewise, in light of the Additional Submission made by the Complainant, the Respondent submitted an Additional Written Statement pursuant to Rule 7(a) of the National Arbitration Forum Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules).
The Additional Submissions have been taken into account by the Panel in reaching its decision.
The Panel finds that the Complainant is the owner of the trademark KEY METALS, registered with the USPTO under Reg. No. 4,531,852, filed February 26, 2013; registered May 20, 2014.
The Panel also finds that Respondent’s <keymetals.com> domain name was created on November 2, 2005, which predates Complainant’s registration and filing date of the KEY METALS mark with the USPTO. However, the Panel notes that it is possible to claim rights regardless of registration date, or even without a trademark registration, through establishing common law rights in the given mark. Complainant claims that it has used the KEY METALS mark since at least 1959 in association with its steel business.
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 Complainant has demonstrated with a copy of the respective certificate of registration that it is the present owner of the trademark KEY METALS, registered with the USPTO as of May 20, 2014 to cover “steel” in international Class 6, and “distributorship services in the field of cold finished steel, hot rolled steel; structural, tool, plate and sheet steel, steel reinforcing rods and mesh, stainless steel bars and sheets and industrial supplies” in international Class 35.
Panel is satisfied that the disputed domain name is confusingly similar, if not legally identical, to Complainant’s alleged trademark. The disputed domain name take the trademark KEY METALS and merely add a non-distinctive gTLD, “.com” without adding any other element to distinguish the domain name from the trademark in any significant way so as to avoid confusion. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
As to the particular issue of the trademark rights, which are fundamental to determine whether the Complaint satisfies the requirement contained under Policy ¶ 4(a)(i), the Panel establishes that although in principle a USPTO registration is sufficient to establish rights in a mark, in the present case it is imperative to elaborate on the trademark rights of the Complainant considering that the trademark KEY METALS was applied for registration in 2013 and registered in 2014, while the disputed domain name was registered in 2005 (i.e. as much as eight years before) simultaneously with the formation of the company Key Metals, LLC.
The Policy requires Complainants to have rights in a trademark or service mark that is subject to abuse by Respondent. ICANN Policy ¶ 4(a)(i). The Panel finds that a trademark registration is not necessary to prove rights in a mark if Complainant presents sufficient evidence showing continuous use and the establishment of secondary meaning in the mark to establish common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Certainly, the Policy does not require that a trademark be registered by a governmental authority for such rights to exist. Under U.S. law, trademark infringement actions may be brought on the basis of unregistered marks. 15 U.S.C. 1125(a). See, e.g.,Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir. 1999). Similarly, UDRP cases have held that UDRP proceedings can be brought on the basis of unregistered marks, provided that there are common law rights in the mark. See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").
In other similar cases Panels have determined, in connection with What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? the following:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
That said, the Panel finds that in the specific case at hand, the Complainant failed to demonstrate the common law trademark rights that would be the only basis to find that Policy ¶ 4(a)(i) has been satisfied. Indeed, considering that the disputed domain name was registered eight years before the application and registration dates of the trademark in which the Complainant bases the case, the Complainant should have submitted evidence to demonstrate that it had common law rights over the trademark KEY METALS. The Complainant filed evidence of the trademark registration granted in 2014; of the screenshot of Respondent’s website; of the confusion that the website of the Respondent has caused to certain people; of the disclaimer that presently appears on the Respondent website, but no evidence was submitted to demonstrate that the Claimant had common law rights over the trademark KEY METALS back in 2005 when the domain name <keymetals.com> was registered.
Without prejudice to Complainant’s ability to lay claim to trademark rights at a future time, Panel finds that for the purposes of these administrative proceedings, Complainant has failed to fully satisfy the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
No findings required.
Registration and Use in Bad Faith
No findings required.
WITHOUT PREJUDICE DECISION
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <keymetals.com> domain name REMAIN WITH Respondent.
Luz Helena Villamil J., Panelist
Dated: September 4, 2014
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