Brinks Services Inc. v. S. Holt
Claim
Number: FA0409000324699
Complainant is Brinks Services, Inc. (“Complainant”),
7969 Engineer Road #106, San Diego, CA 92111.
Respondent is S. Holt (“Respondent”),
13300 Los Coches Road, El Cajon, CA 92020.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <brinksplumbing.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically September 7, 2004; the Forum received a hard copy of the
Complaint September 10, 2004.
On
September 8, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <brinksplumbing.com> is registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the name.
Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's Uniform
Domain Name Dispute Resolution Policy (the "Policy").
On
September 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 12, 2004, 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 postmaster@brinksplumbing.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 21, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name Respondent registered, <brinksplumbing.com>,
is identical to Complainant’s BRINKS PLUMBING mark.
2. Respondent has no rights to or legitimate
interests in the <brinksplumbing.com> domain name.
3. Respondent registered and used the <brinksplumbing.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
owned the domain name registration for <brinksplumbing.com>; however,
the domain name registration expired and an alleged competitor, Master
Plumbing, acquired it February 22, 2004, identifying the new domain name
registration’s administrative and technical contact as Mike Logsdon. Complainant attempted to contact Mr. Logsdon
but such attempts were unsuccessful.
Complainant
contacted the Operations Manager, Melissa Ramont, of the Better Business Bureau
in San Diego, California, and notified Ms. Ramont of Master Plumbing’s actions
with regard to the domain name registration for <brinksplumbing.com>. After Ms. Ramont contacted Master Plumbing,
Complainant was informed that Master Plumbing no longer owned the domain name
registration and that Mike Logsdon believed that the registration was now for
sale. However, Complainant performed a
WHOIS search of the disputed domain name registration and discovered that the
registration had not been transferred, but that it had been converted into a
private registration with Domains by Proxy, which conceals the identity of the
registrant for a fee.
Complainant’s
representative sent a letter to Domains by Proxy explaining the prior
events. Domains by Proxy then revealed
the true registrant on the WHOIS information as being Master Plumbing. Days later, the domain name registration
again changed to a new registrant, “FJJ,” and the administrative contact was
identified as “Jet Jackson,” the e-mail address was listed as famousjetjackson@hotmail.com,
and the telephone number changed to 800-555-1212, which is the national
toll-free directory assistance line.
Ms. Ramont
contacted Mr. Logsdon on behalf of Complainant and was informed that Mr.
Logsdon may be willing to sell the domain name registration to
Complainant. On August 26, 2004, a
representative of Complainant received an email from “FJJ” offering to sell the
domain name registration. On August 30,
2004, Complainant’s representative made an offer of $100. for the domain name
registration. On September 2, 2004, “FJJ”
responded by stating that it had already transferred the rights to the domain
name registration to another entity. On
September 4, 2004, the WHOIS registration information identified the registrant
of the domain name <brinksplumbing.com> as being “S. Holt,” the
Respondent in the instant proceeding.
Complainant
states that it is primarily a plumbing company, although Complainant also
states that it offers other services such as leak detection, flood work, mold
remediation, and water damage restoration services. Complainant has also stated that it “uses the term ‘Brinks
Plumbing’ in its advertising and marketing.”
Respondent
registered the domain name <brinksplumbing.com> February 22,
2004. The record fails to indicate how
the domain name is being used.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 stated above,
Policy ¶ 4(a)(i) requires Complainant to prove that the domain name <brinksplumbing.com>
registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has rights.
To establish
standing under the Policy, a complainant must prove its acquisition of valid
rights in a trademark or service mark.
In the instant case, Complainant has not directly asserted rights in the
BRINKS PLUMBING mark. However,
Complainant alluded to the fact that the BRINKS PLUMBING mark is, in fact, a
service mark when it stated, “[Master Plumbing] registered the domain name in
an attempt to prevent Brinks Services from using their service mark.” Also, Complainant
has stated that it “uses the term ‘Brinks Plumbing’ in its advertising and
marketing.” The previous statements are
the only references in the Complaint to the term “Brinks Plumbing” being used
as a service mark. A service mark is
any word, name, symbol, device, or any combination used or intended to be used
in commerce to identify and distinguish the services of one provider from
services provided by others and to indicate the source of the services. However, simply using a service mark does not
confer rights to the user under the Policy.
If such a peculiar idea became the rule, one would be able to adopt the
service mark of any third party, even if such use would infringe upon the third
party’s mark. Therefore, it is apparent
that there is a difference between using a service mark and acquiring rights to
such a mark. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (finding that in
order to bring a claim under the Policy, Complainant must first establish a prima
facie case.).
Under the
Policy, a complainant may establish rights in a service mark in one of two
ways. The user may register the mark
with an appropriate governmental authority or the user may assert and prove
common law rights to the mark. In the
instant case, no direct assertion bears on either option. Complainant has stated that the term “Brinks
Plumbing” has been used in its advertising and marketing, but Complainant has
not provided any extrinsic evidence to support this contention. More importantly, Complainant has not linked
the term “Brinks Plumbing” with any specific services that it is used to
identify. See McCarthy on Trademarks
and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name Complaint under the Policy);
see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names”).
Complainant did
not state that it owns any type of registration for the BRINKS PLUMBING mark
and Complainant did not provide evidence to suggest that it owns any such
registration. Moreover, Complainant did
not assert common law rights in the BRINKS PLUMBING mark and Complainant did
not provide evidence that suggests how long Complainant has made any such use
of the mark. Most notably, Complainant
has not stated any precise services connected with the mark’s use.
Complainant also
failed to assert or provide any evidence that the public has come to identify
the BRINKS PLUMBING mark with the unidentified services offered by
Complainant. See Restatement
(Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent.
Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of
being protected if it either (1) is inherently distinctive or (2)
has acquired distinctiveness through secondary meaning.); see also Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that simply operating
under a business name does not, per se, constitute secondary source
identification sufficient to warrant a finding of common law rights in a mark);
see also Empire
Home Servs., LLC v. Bryan, FA 117871 (Nat. Arb. Forum Oct. 22, 2002)
(finding that Complainant failed to demonstrate rights in a mark where it
merely alleged common law rights but failed to provide any evidence such as “date of first use, or any evidence demonstrating the use of the
mark in commerce”).
In Powrachute
Inc. v. Buckeye Indus., the complainant began manufacturing powered
parachutes in December of 1998 under the name “Powrachute Incorporated.” AF-0076 (e-Resolution, May 30, 2000). The respondent, who was also in the
parachute business, registered the domain names <powrachute.com>,
<powrachutes.com>, and <powrachute.net> in December of 1999. Id.
The complainant contended that the respondent registered domain names
that were identical to its corporate name.
Id. The Panel denied the
complaint on the grounds that the complainant never asserted that it had ever
registered a trademark or service mark for POWRACHUTE, nor had complainant
“contended, provided evidence, or given arguments to the effect that it [had] a
common law trademark for the name POWRACHUTE.”
Id.
Despite the
above history that suggests devious conduct by the Respondent and despite the
lack of a response in this case, Complainant is required to meet the burden
before it may prevail in the case. The
Panel may not ignore Policy standards that govern outcomes in this proceeding,
even where the Panel believes that with adequate proof the Complainant might
prevail. The Panel lacks the authority
to replace the standards implemented by ICANN, as expressed in the Policy
paragraphs. A fundamental goal for this
Panel is to maintain the integrity of the Policy that each element be proven.
Complainant failed to assert or provide evidence that Complainant has a valid
service mark under paragraph 4(a)(i) of the Policy and therefore, Complainant
has failed to meet its burden of proof to establish standing.
Due to
Complainant’s failure to establish standing under the Policy, it is unnecessary
for the Panel to analyze paragraphs 4(a)(i) and (iii) of the Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that 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).
Since
Complainant failed to establish standing under ICANN Policy, the Panel
DISMISSES the Complaint without prejudice to refiling.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 4, 2004
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