Industrial Magnetics, Inc. v. AUTOMATIC EQUIPMENT CORP.
Claim Number: FA1410001585410
Complainant is Industrial Magnetics, Inc. (“Complainant”), represented by Marshall G. MacFarlane of Young, Basile, Hanlon & MacFarlane PC, Michigan, USA. Respondent is AUTOMATIC EQUIPMENT CORP. (“Respondent”), represented by Keith R. Haupt of Wood Herron & Evans LLP, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <industrialmagnetics.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2014; the National Arbitration Forum received payment on October 27, 2014.
On October 17, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <industrialmagnetics.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 October 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@industrialmagnetics.com. Also on October 27, 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 November 17, 2014.
A timely Additional Submission was received from Complainant on November 21, 2014. A timely Additional Submission was received from Respondent on November 26, 2014. Both have been considered by the Panel.
On November 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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 owns the “IMI INDUSTRIAL MAGNETICS, INC. ESTABLISHED 1961” mark, registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,284,113, registered Aug. 28, 2007). The USPTO registration includes a distinctiveness limitation as to “Industrial Magnetics.” Complainant asserts that it has common law trademark rights in the United States for the INDUSTRIAL MAGNETICS mark, which is used in connection with permanent magnetic and electromagnets for industrial applications. Complainant’s alleged common law rights predate Respondent’s registration date of the <industrialmagnetics.com> domain name. The <industrialmagnetics.com> domain name is confusingly similar to the INDUSTRIAL MAGNETICS mark as the name differs only by the deletion of a space and the addition of a generic top-level domain.
Allegedly, Respondent has no rights or legitimate interests in the <industrialmagnetics.com> domain name. Respondent does not appear to be commonly known by the disputed domain name pursuant to the WHOIS information. Complainant states that it has not authorized Respondent to use the INDUSTRIAL MAGNETICS mark. Complainant’s exhibits show that the disputed domain name resolves to a website offering the sale of various magnet related goods that compete with Complainant’s own offerings.
Complainant asserts that Respondent has engaged in bad faith registration and use. Notably, Respondent is using the disputed domain name to advertise goods in competition with Complainant in the magnetics field. Because Complainant’s own business is disrupted by this use, a finding of Policy ¶ 4(b)(iii) is warranted. Further, because Respondent is intentionally attracting Internet users to this website for commercial gain, using the confusingly similar <industrialmagnetics.com> domain name, Policy ¶ 4(b)(iv) is also implicated.
B. Respondent
Respondent alleges that Complainant has no rights to the phrase “industrial magnetics.” The federal trademark registration cited by Respondent disclaims the phrase “industrial magnetics” due to “genericness”. Respondent states that Complainant has provided insufficient evidence of common law trademark rights. Respondent asserts that Complainant’s mere corporate registration in 1962 in the State of Michigan is not sufficient to prove trademark rights. Further, Complainant’s assertion that phrase “industrial magnetics” has become well known and associated with Complainant is not supported by documentary evidence.
The term “industrial magnetics,” which comprises the disputed domain name, is a generic phrase to which no entity in the industrial magnetics industry may claim exclusive rights. The phrase is used widely in the industrial magnetics industry among companies, researchers, and scientists. See Response, at Attached Exhibits 4-6.
Respondent registered the <industrialmagnetics.com> domain name in 2000 and has used it to sell industrial magnetic products and services since that time. Respondent’s continuous use of the disputed domain name to advertise its own industrial magnetic products and services over the course of fourteen years is sufficient to establish rights or legitimate interests in the name. Respondent is making a legitimate fair use of the domain name because the <industrialmagnetics.com> domain name’s use corresponds with the domain name in connection with the industrial magnetics industry.
Respondent has not engaged in bad faith use and registration. The disputed domain name is comprised of a generic phrase. Respondent has used the domain name for fourteen years to market Respondent’s own industrial magnetic products and services.
Under the recognized Laches defense, this fourteen year delay precludes Complainant from now asserting rights and harm from Respondent’s registration and use of the disputed domain name.
Complainant has engaged in reverse domain name hijacking as Complainant knew the phrase “industrial magnetics” was generic and therefore Complainant did not have a colorable claim under the Policy.
C. Additional Submissions
Both parties submitted timely Additional Submissions and the Panel has considered both.
1. Complainant’s Additional Submission
Complainant argues that, even if it disclaimed the exclusive right in relation to its federally registered mark, Complainant may still establish rights in the mark. Complainant has common law rights in the INDUSTRIAL MAGNETICS mark. Complainant began operating under the trade name “Industrial Magnetics Inc.,” in 1962. Further, Complainant shows that it has spent a significant amount of money over the years advertising the trade name and mark.
Complainant also says that Respondent’s contention that the disputed domain name is comprised of generic or descriptive terms is not relevant under Policy ¶ 4(a)(i).
Respondent’s use of the confusingly similar domain name to promote goods in competition with Complainant demonstrates no rights in the mark and is certainly establishes Respondent’s bad faith under Policy ¶ 4(a)(iii).
In conclusion, Complainant asserts that laches is not a recognized defense under the UDRP as the UDRP is not equitable.
Complainant concludes by denying that it has or is engaged in reverse domain name hijacking, asserting that it has satisfied all elements of the UDRP.
2. Respondent’s Additional Submission
Respondent first asserts that Complainant has failed to deal with the evidence that “industrial magnetics” is generic, and merely describes products sold by both of these parties and every other seller in this line of business. “[G]enericness” is, says Respondent, relevant under UDRP ¶4(a)(i).
Respondent also attacks the Complainant’s assertion that it has a common law mark, arguing that common law arguments cannot convert generic terms into protected marks. Much of the Respondent’ presentation consists of an attempt to argue that there is insufficient evidence of the existence of common law mark. Of course, Respondent does admit that the alleged mark and the domain name are identical or confusingly similar.
The remainder of the Respondent’s submission deals with continued rebuttal of Complainant’s assertion that it has no rights in the name and the issue of latches. It points out that Respondent has been competing with Complaint since 1961 and selling products identified generically as “industrial magnetics,” along with others in the industry. For fourteen years, Respondent has used the domain name, <industrial magnetics.com>.
Respondent goes on to assert that there is no evidence of “bad faith” other than the similarity of the mark and the domain name and the admitted fact that the parties engage in the same business.
There is no difficulty in finding, as a matter of fact, that the mark and domain name are very similar. However, the similarity results because the domain name, <industrialmagnetics.com>, and the mark, “IMI INDUSTRIAL MAGNETICS, INC. ESTABLISHED 1961”, each contain the words “industrial magnetics,” a generic term which, as a matter of fact, was disclaimed by Complainant in its trademark application process.
The phrase cannot be considered a common law mark, because the phrase has never and probably could never acquire a secondary meaning, for it consists of two words that can only be – factually or legally – considered to be words which merely describe, in generic terms, those magnets used in industry. Common law marks are explained and defined in the secondary literature as terms which have become secondary identifiers. Put differently there is nothing secondary about this term. See, e.g., McCarthy on Trademarks and Unfair Competition (4th Ed. Updated Dec. 2014), at ¶4:12.
Given these findings, the Panel finds that Complainant has failed to meet its burden of proof under ¶(4)(a) (i) that the mark and domain name are neither identical nor confusingly similar. Therefore, further factual or legal analysis of the Complainant’s allegations is unnecessary. Complainant has failed to make a prima facie case under the first provisions of Policy ¶ 4(a)(i).
When Complainant fails to make a prima facie case under Policy ¶ 4(a)(i), no further analysis is required.
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.
As set out above, the Complainant has failed to make a prima facie case that its mark and the domain name are identical or confusingly similar, merely because the mark incorporates a phrase identical to the domain name where that mark has “disclaimed” its trademark rights in that very portion of the mark. Further, generic terms are not protected secondary identifiers.
Complainant has no rights to or in the phrase “industrial magnetics.” Relating to the federal trademark registration, Respondent has shown that the registration disclaims the phrase “industrial magnetics” and that the Examining Attorney with the USPTO held that the phrase was generic for Complainant’s goods.
Complainant has provided insufficient evidence of common law trademark rights. Complainant’s mere corporate registration in 1962 in the State of Michigan is not sufficient to prove trademark rights. Complainant’s assertion that the phrase “industrial magnetics” has become well-known and associated with Complainant is not supported by documentary evidence.
Complainant does not have common law rights in the mark, and therefore has failed to satisfy Policy ¶ 4(a)(i). See Thomas Alarm Sys., Inc. v. cHEXx Partners, FA 1303478 (Nat. Arb. Forum Mar. 12, 2010) (finding the complainant had failed to prove secondary meaning when its “sole allusion to common law ownership of that trademark is its provision to the panel of articles of incorporation indicating that Complainant has been in business since 1984”); see also Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support the claim of secondary meaning).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) and declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 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)).
While Respondent argues the phrase “industrial magnetics” comprising the domain name is generic in nature, Complaint argues that this argument is not applicable under Policy ¶ 4(a)(i) and must be considered under Policy ¶¶ 4(a)(ii) and (iii). The Panel declines to follow the cases incorporating this line of reasoning where the Complainant has so clearly failed to prove that it holds a mark which can be confused with the two generic words of this domain name.
This issue has not been considered.
Latches and Reverse Domain Name Hijacking
These issues have not been considered.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED.
Accordingly, it is Ordered that the <industrialmagnetics.com> domain name REMAIN WITH Respondent.
R. Glen Ayers, Panelist
Dated: December 5, 2014
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