Hunter Fan Company v. Ceiling Fans, Inc.
Claim
Number: FA0503000438211
Complainant is Hunter Fan Company (“Complainant”),
represented by Danny Awdeh, of Caldwell and Berkowitz P.C.,
165 Madison Avenue, Suite 2000, Memphis, TN 38103. Respondent is Ceiling Fans Inc. (“Respondent”), Post
Office Box 440, Ambridge, PA 15003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <casablancafans.com>, registered with Go
Daddy Software, Inc.
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Paul M.
DeCicco, Houston Putnam Lowry, Chartered Arbitrator, and Jacques A. Léger,
Q.C., as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 14, 2005.
On
March 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <casablancafans.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
March 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 6, 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@casablancafans.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
April 15, 2005, pursuant to Complainant's request to have the dispute decided
by a three-member Panel, the National Arbitration Forum appointed Paul M.
DeCicco, Houston Putnam Lowry, Chartered Arbitrator, and Jacques A. Léger,
Q.C., as Panelists.
On
April 29, 2005, the National Arbitration Forum issued an Order extending the
time period within which the Panel was required to render its Decision until
May 6, 2005.
On
May 6, 2005, the National Arbitration Forum issued another Order extending the
time period within which the Panel was required to render its Decision until
May 11, 2005.
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 <casablancafans.com>
domain name is confusingly similar to Complainant’s CASABLANCA mark.
2. Respondent does not have any rights or
legitimate interests in the <casablancafans.com> domain name.
3. Respondent registered and used the <casablancafans.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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.
Complainant has produced evidence that it holds several trademark
registrations on the Principal Register of the United States Patent and
Trademark Office (“USPTO”) for the CASABLANCA mark, including Reg. No.
1,073,112 (issued September 13, 1977) for ceiling fans. This registration with
the USPTO, as well as Complainant’s continuous use of the mark in commerce
since at least 1977, demonstrate Complainant’s rights in the CASABLANCA mark
for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v.
Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive, and that a respondent has the burden of refuting this assumption);
see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning.”).
The Panel finds that Respondent’s <casablancafans.com> domain name is confusingly similar to Complainant’s CASABLANCA mark because the
domain name simply adds the generic term “fans,” which is descriptive of
Complainant’s products, and the “.com” generic top-level domain (“gTLD”) to the
mark. Naturally, the addition of a generic term and a gTLD fail to distinguish
the domain name from the CASABLANCA mark and, therefore, the domain name is
confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business); see also Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words “fashion” or
“cosmetics” after the trademark were confusingly similar to the trademark).
In the absence of a response, a Panel may
accept as true all reasonable allegations contained in the Complaint unless
clearly contradicted by the evidence. Complainant has alleged that Respondent
lacks rights and legitimate interests in the <casablancafans.com>
domain name. Faced with the absence of a response in this case, the Panel finds
that neither Respondent nor the evidence contradicts this allegation. The Panel
further concludes that, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that a respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of a complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Complainant
asserts, and the Panel has verified on a proprio motu basis, that
the <casablancafans.com> domain name does not resolve to any active website. Moreover, Respondent has held the domain
name registration for more than seven years. Since Respondent has made no
demonstrable preparations to use the disputed domain name, Policy ¶¶ 4(c)(i)
and 4(c)(iii) are inapplicable. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Am. Home Prod.
Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where the
respondent merely passively held the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where the respondent
advanced no basis on which the panel could conclude that it had rights or
legitimate interests in the domain names, and no use of the domain names was
established).
Complainant alleges, and the Panel cannot
find any indications otherwise, that Respondent is not commonly known by the <casablancafans.com> domain name. Furthermore, the domain name’s WHOIS
information states that Respondent is known as “Ceiling Fans, Inc.” It is
therefore apparent from this information and Respondent’s lack of response that
Respondent has failed to demonstrate rights or legitimate interests in the
domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail”).
Most of the time, it is quite difficult, if not
impossible, to actually show bad faith with concrete evidence,
particularly given the limited scope of the inquiry in these proceedings; as
rule, one should not expect to find the “smoking gun”. At the same time, good
faith is to be presumed. However, it is the Panel’s view that once Complainant
has made a prima facie case in that direction, it is then incumbent upon
Respondent to either respond or explain why its conduct should not be ascribed
to bad faith. The Panel’s understanding of the Policy is that although
the initial burden to prove Respondent’s bad faith in the registration
or the use of the disputed domain name lies squarely on the shoulders of
Complainant, once a prima facie case of bad faith has been made
by Complainant, as the Panel finds in the present case, it is up to Respondent
to either justify its business conduct, explain it, or demonstrate
satisfactorily the contrary. See, e.g., Royal Bank of Scotland Group v.
Lopez, D2002-0823 (WIPO Dec. 3, 2003); AT&T Corp. v. Linux
Sec. Sys., DRO2002-0002 (WIPO Oct. 11, 2002).
Complainant asserts that Respondent, a ceiling fan
retailer of the CASABLANCA brand, is reflecting its CASABLANCA mark in a
corresponding domain name. The Panel might infer that there was a lack of bad
faith from the fact that Respondent is a retailer of Complainant’s brand. However,
the Panel finds that there is no evidence that Respondent had a license to use
the CASABLANCA mark and that there is no per se license to use a
trademark in a domain name simply because one is selling a trademarked product
at retail.
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of the domain name, additional factors can also be
used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum
May 18, 2000) (finding that in determining if a domain name has been registered
in bad faith, the panel must look at the “totality of circumstances”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be
illustrative, rather than exclusive.”).
Complainant
asserts, and so the Panel finds, that Respondent is not using the disputed
domain name. Respondent has held the <casablancafans.com> domain
name registration for more than seven years. If the Panel finds that Respondent
has engaged in passive holding, then the Panel may find that Respondent
registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See
DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of Policy ¶ 4(a)(iii)); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Mondich & Am.
Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that the respondent’s failure to develop its website in a two year
period raises the inference of registration in bad faith).
Respondent’s
registration of the disputed domain name, which is confusingly similar to
Complainant’s mark, suggests that Respondent knew of Complainant’s rights in
the CASABLANCA mark. Additionally, Complainant’s trademark registration for the
CASABLANCA mark on the Principal Register of the United States Patent and
Trademark Office gave Respondent constructive notice of the mark. The Panel can
therefore infer that Respondent had constructive knowledge of the fact that
Complainant owned a registration for the CASABLANCA mark in conjunction with
the sale of fans. This is only confirmed by the fact that Complainant’s mark is
well-known in the field. Thus, the Panel finds that Respondent chose the <casablancafans.com> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
was “inconceivable that Respondent could make any active use of the disputed
domain names without creating a false impression of association with
Complainant”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of
the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”).
Having
established all three elements required under the ICANN Policy, the majority of
the Panel, Jacques A. Léger, Q.C. and Paul M. DeCicco, concludes that relief
shall be GRANTED
Accordingly, it
is Ordered that the <casablancafans.com> domain name be TRANSFERRED
from Respondent to Complainant.
Jacques A. Léger, Q.C.
Presiding Panelist
Paul M. DeCicco
Panelist
Houston
Putnam Lowry, Chartered Arbitrator, dissents.
Reasons
for dissent:
I
respectfully dissent for one, and only one, reason. According to UDRP §4(a)(iii), the domain name must have been
registered and used in bad faith [emphasis added]. See Agent Host Co. v. Host Dot Com
Invs., AF-0343 (eResolution Oct. 16, 2000). It seems fairly clear from the evidence that
(i)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights and
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name.
Likewise, it
is clear Respondent is “using” the domain name in bad faith (this is a case of
passive holding).
The
only question is whether or not the domain name was REGISTERED
in bad faith. It is undisputed the
domain name was registered on November 10, 1997 (seven and one half years
ago). It is also undisputed Respondent
was one of Complainant’s distributors at the time of registration.
This has
provoked a spirited discussion among the Panelists as to the power of a
distributor (generally) and this distributor (a ceiling fan retailer) in
particular. It is true distributors
(particularly recently created distributors) tend to be somewhat restricted in
their use of their principal’s trademarks.
Rather than inquire on this subject, the majority proceed based upon the
assumption this distributor did not have the power to register a domain name
including its principal’s trademark.
It
is this Panelist’s experience that distributors sometimes even have this
explicit power, especially when an old contract is involved. See Mark Travel Corp. v. ATHS, FA
154644 (Nat. Arb. Forum May 29, 2003).
There is no doubt an authorized distributor of a trademarked product may
use the trademark in connection with the sale of the trademarked product. Without a specific demarcation of how far
the trademark is used (and nothing specific was introduced into evidence here),
it is clear the trademark may be used in advertisements for the trademarked
product. The trademark may also be used
on stationary and in brochures (once again in connection with the trademarked
product). Although it is less common,
distributors sometime construct words to represent telephone numbers that incorporate
a trademark. There is a split of
authority between panelists on whether a distributor can register a domain name
that includes a principal’s mark (without an explicit grant of authority one
way or the other).
The
facts as the Panelists know them are limited.
We don’t know when Respondent was terminated as a distributor or
why. We don’t know if Respondent ever
used the domain name or for what purpose.
Perhaps Respondent used the domain name for permissible purposes while
it was a distributor (a supposition that doesn’t require much
imagination). We simply do not know and
the majority does not want to ask any questions. A claimant still needs to make out a prima facie case
because panelists do not render default awards simply because the respondent
fails to respond, ICANN Rule 5(ix)(e).
While panelists will (and generally should) believe assertions of fact
that are uncontested, we should not accept unopposed ultimate conclusions of
law that are not supported by factual claims.
I believe that is the present case.
For the
foregoing reasons, I would either ask for additional information or deny the
application without prejudice.
Houston Putnam Lowry Panelist,
dissenting
Dated: May 11th, 2005
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