Florida Time Clock, Inc. v. Time Systems
c/o Barry Rubin
Claim Number: FA0506000496689
PARTIES
Complainant
is Florida Time Clock, Inc. (“Complainant”),
represented by Bradley M. Bole, of Rahdert, Steele, Bryan, Bole & Reynolds, P.A., 535 Central Avenue, St. Petersburg,
FL 33701. Respondent is Time Systems c/o Barry Rubin
(“Respondent”), 5086 Huntington St., St. Petersburg, FL 33703.
The
domain name at issue is <floridatimeclocks.com>,
registered with Enom, Inc..
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 20, 2005.
On
June 15, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <floridatimeclocks.com>
is registered with Enom, Inc. and that the 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-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
June 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 13,
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@floridatimeclocks.com by e-mail.
A
timely Response was received and determined to be complete on July 13, 2005.
On July 27, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The disputed domain name is identical or confusingly similar to
Complainant’s mark;
2.
Complainant has rights and legitimate interests in the mark; and
3.
The disputed domain name was registered and used in bad faith by
Respondent.
B.
Respondent
1.
Complainant does not have rights or legitimate interests in the subject
mark;
2.
Complainant’s alleged mark is composed of descriptive and geographical
terms; and
3.
There is no need to address the bad faith question given Respondent’s
rights and interests in the domain name at issue.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The
Panel finds that under Policy ¶ 4(a)(i), a complainant need not hold a
registered trademark to establish rights in a mark and that common law rights
are sufficient. 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” and applying the Policy to “unregistered
trademarks and service marks”).
Furthermore,
the Panel finds that Complainant has established common law rights in the
FLORIDA TIME CLOCK mark because it has used the mark in commerce for over
fifteen years and the mark has acquired secondary meaning. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10,
2000) (finding that the complainant has common law rights in the mark FISHTECH
that it has used since 1982); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established).
Moreover, the Panel finds that
Respondent’s <floridatimeclocks.com> domain name is confusingly
similar to Complainant’s FLORIDA TIME CLOCK mark, as the domain name merely
adds the letter “s” to Complainant’s mark.
The Panel finds that such a change is not enough to overcome a finding
of confusing similarity pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat.
Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA
95235 (Nat. Arb. Forum Aug. 17, 2000) (“[T]he addition of an ‘s’ to the end of
the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion
caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”).
The
Panel finds that Respondent is not commonly known by the <floridatimeclocks.com>
domain name. Thus, the Panel
concludes that Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to 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 respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate
interests in domain names because it is not commonly known by complainant’s
marks and respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or
fair use).
Respondent
is using the <floridatimeclocks.com> domain name to operate a
website that competes with the services offered by Complainant. The Panel finds that such competing use is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with the complainant, was not a bona fide offering of goods or
services); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s
appropriation of the complainant’s mark to market products that compete with
the complainant’s goods does not constitute a bona fide offering of
goods and services); see also Winmark Corp. v. In The Zone, FA
128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that respondent had no rights or
legitimate interests in a domain name that used complainant’s mark to redirect
Internet users to a competitor’s website).
The Panel finds that Respondent registered and used
the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is
using the <floridatimeclocks.com> domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a
likelihood of confusion with Complainant as to the source, sponsorship,
affiliation or endorsement of its website.
See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Moreover, the Panel finds that
Respondent’s <floridatimeclocks.com>
domain name causes Internet users to mistakenly believe that the disputed
domain name is affiliated with Complainant.
Complainant asserts that the initial user confusion that the domain name
causes is evidence that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Sony Kabushiki Kaisha v. Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <floridatimeclocks.com>
domain name be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 10, 2005
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