Progressive Lighting, Inc. DBA Lee
Lighting, Inc. v. Manja Klimenko
Claim
Number: FA0502000424539
Complainant is Progressive Lighting, Inc. DBA Lee
Lighting, Inc. (“Complainant”), 2420 Tech Center Pkwy., Lawrenceville, GA
30043. Respondent is Manja Klimenko (“Respondent”), 20301 E Walnut Drive North,
City of Industry, CA 91789.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <leelighting.com>, registered with Go
Daddy Software, Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 22, 2005.
On
February 18, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <leelighting.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 21, 2005 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@leelighting.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 25, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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. Respondent’s <leelighting.com>
domain name is identical to Complainant’s LEE LIGHTING mark.
2. Respondent does not have any rights or
legitimate interests in the <leelighting.com> domain name.
3. Respondent registered and used the <leelighting.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Progressive Lighting, Inc., is incorporated in the state of Georgia and has
provided a Certificate of Existence from the Secretary of State of
Georgia. The Certificate does not
mention Complainant’s business name, Lee Lighting.
Complainant is
licensed to do business as “Lee Lighting” in the states of North Carolina and
Texas. On January 14, 2005, Complainant
filed an Assumed Name Certificate for an Incorporated Business or Profession in
Tarrant County, Texas, to do business as “Lee Lighting.” On January 28, 2005, Complainant changed its
name from “Progressive Lighting, Inc. DBA Progressive, The Lighting Showroom
Company,” to “Progressive Lighting, Inc. DBA Lee Lighting, Inc.” in the state
of North Carolina, as evidenced by an Amended Certificate of Authority from
North Carolina’s Secretary of State’s Office.
Complainant claims
to use the Lee Lighting name to market and retail residential lighting in the
states mentioned above.
Respondent
registered the disputed domain name, <leelighting.com>, on October
3, 2001. The domain name does not
resolve to a website.
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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Under Policy
Paragraph 4(a)(i), a complainant must establish rights in a trademark or
service mark. Generally, trademarks and
service marks are defined as words, names, symbols, or devices that are used in
commerce to identify and distinguish goods or services from those sold or made
by others. See 15 U.S.C. §
1127.
Complainant has
not filed, nor been granted, either a federal or state trademark registration
for the LEE LIGHTING mark.
Nevertheless, panels have found that trademark rights may exist
independently of government registration of a mark. 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 SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
Trademark rights
are contingent upon the distinctiveness of a mark, in relation to the goods or
services that the mark is used in connection with. See U.S. Search, LLC v. U.S. Search.com, Inc., 300 F.3d 517,
524, 63 U.S.P.Q.2d 2013 (4th Cir. 2002) (holding that ''the distinctiveness of
a mark is measured in connection with the particular goods or services
that are being offered. The distinctiveness of a mark cannot be determined in
the abstract, but only by reference to the goods or services upon which the
mark is used.'').
Distinctiveness
may arise as the result of either a mark’s inherent nature (i.e. suggestive,
fanciful or arbitrary marks) or through a showing of acquired distinctiveness
through use (i.e. secondary meaning). “The general
rule regarding distinctiveness is clear: 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.” Two Pesos Inc.
v. Taco Cabana Inc., 505 U.S. 763, 769 (1992), citing Restatement
(Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft
No. 2, Mar. 23, 1990).
In the instant
case, Complainant has simply asserted, “The name [Lee Lighting] is used to
market and retail residential lighting in [North Carolina and Texas].” Complaint at ¶ 4[c]. The fact that the name Lee Lighting contains
a word that directly refers to the products sold by Complainant, presumably
under the Lee Lighting mark, leads the Panel to conclude that the Lee Lighting
mark is merely descriptive. Therefore,
the Lee Lighting mark is not inherently distinctive. See Interstellar
Starship Servs. v. Epix, Inc.,
304 F.3d 936, 943 (9th Cir. 2002) (defining descriptive trademarks as those
that “merely describe the goods”); see also Two Pesos, 505 U.S. at
769 (“Marks which are merely descriptive of a product are not inherently
distinctive.”); see also J. Thomas McCarthy, Trademarks and Unfair
Competition § 11.24 (4th ed. 2004) (providing examples of descriptive marks
such as, Beer Nuts for nuts with
salt, 5 Minute for fast-setting
glue, Intelligent Modem for
modems, Rich ‘n Chips for
chocolate chip cookies).
In determining
whether a mark has acquired distinctiveness through use, panels “must consider a variety of factors, including, but not limited to,
advertising, promotion, sales, media coverage and the length, manner and
exclusivity of use of the mark by the Complainant.” Gardner's Super Mkts. Inc. v. Ambassa Holdings, Inc., D2002-0253
(WIPO June 14, 2002). In the instant case, Complainant has not
only failed to produce any evidence relating to the extent of advertising,
promotion, sales, or media coverage, but it has also neglected to reveal to the
Panel the day on which it began using the LEE LIGHTING mark in commerce.
Additionally,
the Panel notes that it was approximately a month prior to filing this
Complaint that Complainant filed to do business in Tarrant County, Texas under
the name “Lee Lighting” and changed its name with the North Carolina’s
Secretary of State’s Office from “Progressive Lighting, Inc. DBA Progressive,
The Lighting Showroom Company,” to “Progressive Lighting, Inc. DBA Lee
Lighting, Inc.” These latter filings,
in addition to Complainant’s failure to reveal any pertinent information
relating to the length of use of the LEE LIGHTING mark suggests that the mark’s
use in commerce began only recently, if ever.
The evidence, or lack thereof, before the Panel, leads to the conclusion
that Complainant has failed to establish that the LEE LIGHTING mark has
acquired distinctiveness through use.
Prior panels
have found that the registration of a mark with state trademark officials is
sufficient evidence to establish trademark rights under the Policy. See Lee Enters., Inc. v. Polanski, FA
135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that Complainant had
established rights in the BILLINGS GAZETTE mark through registration with the
Montana and Wyoming state trademark officials); see also Quality Custom
Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum
Sept. 7, 2002) (finding that Complainant’s trademark registrations in
Pennsylvania and New Jersey were evidence that Complainant had sufficient
standing to bring a claim under the Policy).
However,
registering a mark with state trademark officials is distinct from simply
registering a company name with a state’s secretary of state’s office, which is
the case here. Panels have consistently
found that registering a company name with state authorities is insufficient
for establishing trademark rights in a name. See Powrachute
Inc. v. Buckeye Indus.,
AF-0076 (e-Resolution, May 30, 2000) (dismissing a complaint where the
complainant failed to contend, provide evidence, or give arguments to the
effect that it had either a registered trademark or service mark in POWRACHUTE
or any similar name, or that it had a common law trademark in the name. The
only evidence provided, that it was incorporated under the name, was
insufficient to create a trademark.); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001) (finding that, without further evidence of common law trademark rights,
the complainant did not establish rights to the CYBERIMPRINTS.COM mark within
the meaning of Policy ¶ 4(a)(i) by registering its company name
CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Moreover, panels
have required, pursuant to Policy Paragraph 4(a)(i), that complainants’
trademark rights must predate a registrant’s domain name registration
date. See Abt
Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum
Feb. 20, 2004) (rejecting the Travant Solutions Inc. approach to
Policy ¶ 4(a)(i) and agreeing with the "vast majority of
decisions" that Complainant's rights must predate Respondent's
registration of a domain name in order for Complainant to prevail); see also Intermark Media, Inc. v. Wang Logic
Corp., FA 139660 (Nat.
Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that
Complainant may have in its common law mark did not predate Respondent’s domain
name registration, therefore finding that Policy ¶ 4(a)(i) had not been
satisfied).
In the instant
case, Respondent registered the disputed domain name on October 3, 2001. The evidence in the record, specifically
Complainant’s filings with state authorities, suggests that Complainant only
recently began using the LEE LIGHTING mark in January of 2005. Thus, assuming arguendo that Complainant was
somehow capable of establishing trademark rights due to its use of the mark
commencing in January of 2005, those rights post-date Respondent’s registration
of the <leelighting.com> domain name and thus do not satisfy the
requirement of Policy Paragraph 4(a)(i).
Since
Complainant failed to establish standing pursuant to Policy Paragraph 4(a)(i),
it is unnecessary to address Policy Paragraphs 4(a)(ii) and (iii). 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 elements unnecessary).
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Louis E. Condon, Panelist
Dated: April 8, 2005
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