Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC
Claim Number: FA1502001604460
Complainant is Copper Wire Stripper Limited (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Joe Williams / BLUEDOGINTERNATIONALINC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copper-wire-stripper.com>, registered with ENOM, INC.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015.
On February 11, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <copper-wire-stripper.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 February 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2015 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@copper-wire-stripper.com. Also on February 11, 2015, 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 March 2, 2015.
A timely Additional Submission was received on March 6, 2015 pursuant to the Forum's Supplemental Rule 7.
On March 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Beatrice Onica Jarka as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
The Complainant contends:
· Complainant has registered the COPPER WIRE STRIPPER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,506,796, filed November 16, 2012, registered April 1, 2014). The mark is used on or in connection with a wire stripping machine that removes and cleans insulation from electrical wire.
· Complainant also asserts unregistered common law rights in the COPPER WIRE STRIPPER mark dating back to its registration of its official domain name <copperwirestripper.com> on February 6, 2010.
· The <copper-wire-stripper.com> domain name is confusingly similar to the COPPER WIRE STRIPPER mark.
· Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow for the use of the mark in domain names.
· Further, the website resolves to a webpage wherein competing products, and Complainant’s own products, are offered for sale.
· Respondent has registered and is using the domain name in bad faith. Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business, and Respondent is attempting to commercially benefit from a likelihood of confusion.
· Further, Respondent was on actual and/or constructive notice of Complainant’s rights in the COPPER WIRE STRIPPER mark.
Respondent’s Contentions
In its Response, the Respondent contends that:
· It does not dispute Complainant’s registered rights in the COPPER WIRE STRIPPER mark, but claims that Complainant has not established common law rights prior to registration because the mark had not acquired secondary meaning.
· It also claims that the domain name is not confusingly similar to the mark because the domain name consists of generic terms.
· It claims that it has rights or legitimate interests in the disputed domain name because it is being used in connection with a bona fide offering of goods or service under the business name “BlueDog International.”
· Because Respondent has rights or legitimate interests in the disputed domain name, it contends that it has not engaged in bad faith registration or use.
C. Additional Submissions
By its timely additional submissions, the Complainant responds to the Respondent’s arguments by asserting that:
· the Complainant's Mark has acquired considerable distinctiveness due to its continuous use in Canada for more than fifteen (15) years, considerable advertising expenditures and significant annual sales and now enjoys a high degree of recognition with the general public due to Complainant’s extensive longstanding use of its mark in commerce. Therefore, the Complainant retains enforceable trademark rights in Complainant’s Mark including the right to enforce its trademark rights against Respondent in the instant proceeding.
· From 2010 through 2012 Complainant, Copper Wire Stripper Limited, acted as Respondent’s supplier of copper wire strippers machines. Moreover, Respondent states that the business relationship between the Complainant and Respondent ended on or about December 27, 2012.
· On or about May 9, 2012, prior to conclusion of the party’s business relationship, by its own admission Respondent registered the disputed domain name fully aware of the rights retained by Complainant at the time of registration.
· Respondent states in its Response that it used the disputed domain name to sell Complainant’s Goods under Complainant’s Mark as well as other similar goods from different suppliers and therefore admits to using the domain for goods in direct competition with Complainant's Goods under Complainant’s Mark on the disputed domain
· Respondent, through its registration and continued use of the disputed domain name, clearly aims to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the goods offered on the website and that Respondent is profiting from the diversion.
The registration of the disputed domain name predates the rights of the Complainant in the trademark, which also consists of generic and descriptive terms which gives no exclusivity to the Complainant to the use of such terms.
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 has registered the COPPER WIRE STRIPPER mark with the USPTO (e.g., Reg. No. 4,506,796, filed November 16, 2012, registered April 1, 2014). Complainant states that it uses the mark in connection with a wire stripping machine that removes and cleans insulation from electrical wire. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark dating back to the filing date. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The Panel notes, however, that Respondent’s creation date of the disputed domain name is listed in the WHOIS information as May 9, 2012, thereby predating Complainant’s registration date. Complainant thus asserts unregistered common law rights in the COPPER WIRE STRIPPER mark as of the registration date for Complainant’s domain name on February 6, 2010. See Compl., at Attached Ex. 6.
Complainant further asserts that the COPPER WIRE STRIPPER mark has acquired secondary meaning. Complainant asserts that it has used the mark in commerce for copper wire stripping equipment in Canada for over fifteen years, and in that period the mark has gained a high degree of recognition with the general public. See Compl., at Attached Ex. 9. Complainant also claims it has spent a great deal of money on advertising the mark, and that such efforts have resulted in significant annual sales. No evidences of any kind had been submitted as to this matter, except for an affidavit signed by the principal of the Complainant - Carlo Dillegge. As evidence of sales under the mark and money spent promoting the mark are evidence to be considered when deciding if a mark has acquired secondary meaning, See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”), the Panel considers that Complainant has not provided enough evidence to establish secondary meaning in the COPPER WIRE STRIPPER mark and the Panel finds that Complainant cannot demonstrate common law rights.
Nevertheless, as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") “registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.”
In such sense, the Panel agrees with the Complainant’s arguementation that the <copper-wire-stripper.com> domain name is confusingly similar to the COPPER WIRE STRIPPER registered mark. The Panel notes that the disputed domain name is identical to Complainant’s mark and differs only by the addition of hyphens and the gTLD “.com.” The Panel notes Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000), which held that “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark." The Panel also notes that the addition of gTLDs, such as “.com,” cannot distinguish a domain name from the mark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to the COPPER WIRE STRIPPER mark.
While Respondent contends that the <copper-wire-stripper.com> domain name is comprised of common and generic terms and as such cannot be found to be identical or 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 name is 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)).
For all the above, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i),
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). Complainant contends that although it was a supplier for Respondent, it never granted Respondent the right to use the COPPER WIRE STRIPPER mark. Respondent does not contest the allegations of the Complainant in this sense. Therefore, the Panel agrees on this matter with the Complainant and notes that the registrant of record for the <copper-wire-stripper.com> domain name is “Joe Williams.” See Compl., at Attached Ex. 2.
Nevertheless, the Panel notes that the Respondent contends that the disputed domain name is comprised of common and generic terms and therefore the Complainant cannot claim exclusivity of such common and generic terms. Respondent further claims that without a claim to exclusivity to the COPPER WIRE STRIPPER mark, Complainant cannot assert that Respondent has no rights or legitimate interests in the disputed domain name.
Further, the Respondent does claim that the disputed domain name is being used to make a bona fide offering of goods or services. To support this claim, Respondent points out its status as a seller of copper wire stripping machines under the business name “BlueDog International,” and that Complainant was one of Respondent’s suppliers. Respondent claims that the copper wire stripping machines displayed on the resolving webpage were genuine offers for sale and were not Complainant’s products. Such offer was bona fide, according to Respondent. Prior panels have found that a respondent’s use of a resolving webpage that corresponds with the domain name can consist of a bona fide offering. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name).
This Panel finds that the content of the resolving webpage corresponds with the disputed domain name, and that Complainant lacks common law rights in its trademark.
As a consequence, the Panel is inclined to agree with the contentions of the Respondent and find that Respondent can establish rights or legitimate interests in the disputed domain name 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).
In conclusion, this 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)).
The Panel concluded prior, that Respondent has rights or legitimate interests in the <copper-wire-stripper.com> domain name pursuant to Policy ¶ 4(a)(ii), and that the registration of the domain name apparently predates the rights of the Complainant in the trademark, as no common law trademarks had been documented in this case by the Complainant .
Such findings are sufficient in the opinion of this Panel to conclude that Respondent did not register or use the disputed domain name 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.”).
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 <copper-wire-stripper.com> domain name REMAIN WITH Respondent.
Beatrice Onica Jarka, Panelist
Dated: April 4, 2015
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