Fabricators & Manufacturers Association, International v. Domain Administrator / Namefind, LLC
Claim Number: FA1704001728625
Complainant is Fabricators & Manufacturers Association, International (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson, LLP., Illinois, USA. Respondent is Domain Administrator / NameFind LLC (“Respondent”), represented by Gerald M. Levine of Levine Samuel, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fabricator.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2017; the Forum received payment on April 24, 2017.
On April 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fabricator.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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@fabricator.com. Also on April 28, 2017, 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 May 19, 2017. Complainant's Additional Submission was received on May 24, 2017, and it was timely. Respondent's Additional Submission was received on May 30, 2017, and it was also timely.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Fabricators & Manufacturers Association, International, is a professional organization based in Elgin, Illinois designed to improve the fabrication industry. In connection with this organization, Complainant uses the THE FABRICATOR and THEFABRICATOR.COM marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (THE FABRICATOR—Reg. No. 1,969,713, registered Apr. 23, 1996; THEFABRICATOR.COM—Reg. No. 3,705,058, registered Nov. 3, 2009). Respondent’s domain name, <fabricator.com>, is confusingly similar to Complainant’s mark as it contains the dominant portion of Complainant’s marks—“fabricator”—as well as the generic top-level domain (“gTLD”) “.com” to make it resolve.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to register a domain name using Complainant’s mark. Respondent has failed to utilize the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent registered the confusingly similar domain name to intentionally trade on the fame of Complainant’s marks. Additionally, Respondent fails to offer any goods or services on the resolving page, and clearly registered the domain name for the sole purpose of selling it.
iii) Respondent registered and used the disputed domain name in bad faith. Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website. Further, Respondent’s registration of the <fabricator.com> domain name constitutes opportunistic bad faith. Additionally, Respondent offered the domain name for sale in excess of out of pocket costs. Finally, Respondent must have registered the disputed domain name with actual or constructive knowledge of Complainant’s marks because of the longstanding national fame and notoriety of the marks.
B. Respondent
i) Complainant’s rights do not extend to <fabricator.com> as, while similar, there exists the lack of “the” reflected in the disputed domain name that differentiates between <fabricator.com> and Complainant’s marks. Complainant cannot monopolize all domain names associated with the generic term “fabricator,” and hasn’t, as there are numerous other businesses who use the dictionary word in their names.
ii) Respondent does have rights and legitimate interests in <fabricator.com> because Respondent was utilizing the domain name in connection with a bona fide offering of goods or services. Respondent is in the business of selling domain names, and the disputed domain name is part of Respondent’s portfolio of names. Further, the domain name is generic and is not a deliberate attempt to confuse consumers.
iii) Respondent registered and uses the <fabricator.com> domain name in good faith. While Respondent acquired the domain name to resell at a later date, it did not register it for the sole purpose of selling it to Complainant. Further, Respondent did not offer the domain name for sale; rather, Complainant approached Respondent and Respondent responded to Complainant’s $5,000 offer. This Complaint filed by Complainant is also a perfect example of a Classic Plan B proceeding. Additionally, there exists no evidence that Respondent registered the domain name to prevent Complainant from acquiring the domain name, and further, Complainant even has its own registration of a domain name, <thefabricator.com>. Moreover, Complainant’s argument that Respondent attempts to create a likelihood for confusion is baseless, and Complainant does not provide evidence to support the mere assertion. Lastly, Respondent did not have any knowledge of Complainant or its marks, and Respondent only first heard of Complainant when it approached Respondent to initiate purchase negotiations.
C. Additional Submissions
a. Complainant
Complainant reasserts its Policy ¶ 4(a)(i) arguments.
Complainant reasserts its Policy ¶ 4(a)(ii) arguments.
Complainant reasserts its Policy ¶ 4(a)(iii) arguments.
b. Respondent
i) Complainant Lacks Standing to Maintain this Proceeding
Respondent does not dispute that Complainant is the registered mark owner of THE FABRICATOR, but it does dispute that Complainant has any right to monopolize the dictionary word “fabricator.” It also disputes that “fabricator” is the dominant element of the mark. This is so because the mark is indivisible. Neither the article “the” nor the noun “fabricator” is distinctive in its own right. The mark is distinctive only in its indivisible wholeness. It is because Complainant combines the dictionary word with an article that it fails to satisfy paragraph 4(a)(i) of the Policy.
ii) Respondent Has a Legitimate Interest in the Subject Domain Name
Respondent is in the business of acquiring generic domain names and reselling them for profit. It cites SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc., 1726464 (Forum May 23, 2017) (<sog.com>) (“At the time of registration, Respondent held the reasonable view that it was entitled to register the Domain Name because no one party had a monopoly on such a commonly used acronym [or in this case, dictionary word].”) and some other UDRP case precedents supporting its arguments. Respondent does not invoke paragraphs 4(c)(ii) or 4(c)(iii). Complainant’s argument that it “is harmed inasmuch as the Internet user stops his or her search for Complainant’s legitimate website” has no evidentiary support.
iii) Domain Name Not Registered in Bad Faith
Complainant (not Respondent) has the burden of demonstrating bad faith registration and bad faith use. There is no legal support for Complainant’s argument that offering a domain name “for an exurbanite(sic) price cannot be considered a legitimate interest.” Pricing the value of a domain name legitimately and lawfully acquired is not evidence of bad faith. Further, while it is inconceivable that an Internet user looking for Complainant’s publication would type <fabricator.com> into the search field, it is not inconceivable that <fabricator.com> would be of interest to a variety of other businesses without infringing Complainant’s rights.
iv) Plan B Complaint
Complainant admits it contacted Respondent with an interest in purchasing the disputed domain name. When it found the offering price unacceptable it took the different tack of announcing the domain name infringed its trademark. This is the classic example of a Plan B complaint. Complainant now offers a new argument that Respondent’s registration and use of <fabricator.com> for resale is “tantamount to bad faith” because “its business [has] no connection to the metal processing, forming and fabricating industry.” This argument has no basis in domain name law and Complainant does not cite a single case.
Complainant established that it had rights in the mark contained in the disputed domain name.
Disputed domain name is similar but not confusingly similar to Complainant’s protected mark.
Complainant does not have trademark rights to “the” and “fabricator” but rather “THEFABRICATOR” or “THE FABRICATOR” in its indivisible wholeness.
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 claims rights in the marks based upon registration with the USPTO (THE FABRICATOR—Reg. No. 1,969,713, registered Apr. 23, 1996; THEFABRICATOR.COM—Reg. No. 3,705,058, registered Nov. 3, 2009). Registration of marks with a trademark authority is sufficient to establish rights in the marks per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Panel notes that Respondent does not dispute that Complainant is the registered mark owner of THE FABRICATOR in its Additional Submission. The Panel therefore finds Complainant has rights in the marks.
Complainant claims that Respondent’s domain name is confusingly similar to Complainant’s mark as it contains the dominant portion of the Complainant’s marks—“fabricator”—, omits the space and the word “the,” and adds the gTLD “.com” to make it resolve. In support of its arguments in the Complaint and its Additional Submission it cites a few UDRP case precedents including: The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.)
Respondent contends that Complainant’s THE FABRICATOR mark consists of generic dictionary terms and cannot claim a monopoly on all domain names associated with them. It also contends that Complainants cannot claim exclusive use of generic terms in domain name registrations. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Forum May 25, 2000) (finding that the complainant failed to show that it should be granted exclusive use of the <soccerzone.com> domain name because the domain name contains two generic terms and is not exclusively associated with its business).
In rebutting Complainant's arguments in its Additional Submission, Respondent agrees that the disputed domain name and Complainant’s mark are similar; however, Respondent contends that Complainant does not have trademark rights to “the” and “fabricator” but rather “THEFABRICATOR” or “THE FABRICATOR”. It keeps claiming that registration of a mark does not give exclusive rights to the terms that make up said mark.
The Panel duly observes that it is well and long established rationale and principle of trademark laws across the countries that the exclusivity of a trademark right does not extend to non-distinctive terms, words, or devices which are subject to the free use of the public. Therefore, the Panel agrees with Respondent's contentions that Complainant does not have any right to monopolize the dictionary word “fabricator” alone because the mark is indivisible: neither the article “the” nor the noun “fabricator” is distinctive in its own right. The Panel agrees that Complainant's mark is distinctive only in its indivisible wholeness. See B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Forum June 5, 2001) (holding that the complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS). Further, where marks are similar, very small differences become extremely important. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."). As such, the Panel observes that Complainant does not have rights to the “fabricator” term alone, and thus cannot enforce them. Therefore, the Panel concludes that the Complainant fails to satisfy paragraph 4(a)(i) of the Policy.
Because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary. As such, the Panel decides not to inquire into Respondent’s rights or legitimate interests, its registration and use in bad faith, or the parties' other allegations where Complainant could not satisfy the requirements of Policy ¶ 4(a)(i). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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 (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)).
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 <fabricator.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: June 1, 2017
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