Global Shelters, Inc. v. Global Shelters
East, Inc.
Claim
Number: FA0506000501798
Complainant, Global Shelters, Inc. (“Complainant”), is
represented by Stephen L. Anderson, of Anderson & Associates,
27349 Jefferson Avenue, Suite 211, Temecula, CA 92590. Respondent is Global Shelters East, Inc. (“Respondent”), PO Box 2004, Teaticket,
MA 02536.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <globalshelters.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 27, 2005.
On
June 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <globalshelters.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
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@globalshelters.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
July 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <globalshelters.com>
domain name is identical to Complainant’s GLOBAL SHELTERS mark.
2. Respondent does not have any rights or
legitimate interests in the <globalshelters.com> domain name.
3. Respondent registered and used the <globalshelters.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Global Shelters, Inc., sells, distributes, and installs tension fabric
enclosures, tents, ports, and canopies.
These tension fabric structures are used as garden greenhouses and
temporary enclosures for construction sites, tennis courts, swimming pools,
golf driving ranges, trade shows, festivals, concerts, and ski resorts. One of Complainant’s tension fabric
structures was used as the main merchandising facility at the 2002 Olympic
games in Salt Lake City. For over
twenty-one years, Complainant has widely advertised its products and services
under the GLOBAL SHELTERS mark. Also,
Complainant has registered its GLOBAL SHELTERS mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,721,137 issued June 3, 2003).
In September
1998, Complainant hired Douglas W. Pyne to work as an independent outside
commissioned salesperson on its behalf.
Mr. Pyne was to offer and sell Complainant’s products and services in
the Eastern United States. The terms of
the agreement between Complainant and Mr. Pyne indicated that Mr. Pyne would be
an independent entity, using his own company name, and would be responsible for
generating and processing his own leads.
In November
1998, Mr. Pyne registered the corporate name “Global Shelters East, Inc.” with
the Commonwealth of Massachusetts.
Following the registration, Mr. Pyne sent Complainant a modified
agreement, indicating that Mr. Pyne would use the company name Global Shelters
East, Inc. Both Respondent, Global
Shelters East, Inc., and Complainant signed this agreement.
In August 1999,
Respondent registered the <globalshelters.com> domain name. Complainant became aware of Respondent’s
registration of the disputed domain name in late 2001. At that point, Complainant wrote Respondent
a letter requesting that Respondent cease using the disputed domain name. Complainant stated, “We find this [use] a
breech of the spirit of our agreement and ask you again to discontinue
the use of the globalshelters.com web-site.”
Although Respondent did not answer Complainant’s letters and demands, Complainant
continued its efforts to communicate with Mr. Pyne and with Respondent to
resolve the issue of the disputed domain name.
Complainant
provided evidence from <archive.org>, an organization that keeps track of
website content, that since October 25, 2000 Respondent’s website has displayed
tension-based fabric structures and air supported enclosures. Although Complainant’s products include
tension-based fabric structures, Complainant does not and has never sold air
supported enclosures.
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. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent's failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the
absence of a response, it is appropriate to accept as true all allegations of
the Complaint.”).
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
registered its GLOBAL SHELTERS mark with the USPTO. Panels have held that registration with the USPTO establishes a
complainant’s rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Although
Complainant did not register its mark until 2003, its rights in the mark date
back to the filing date, which is July 26, 2002. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12,
2002) (holding that the effective date of Complainant’s trademark rights date
back to the application’s filing date); see also Thompson v. Zimmer, FA
190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application
was subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date.”).
However, Complainant must show that its rights in the GLOBAL SHELTERS
mark existed prior to Respondent’s registration of the disputed domain
name. See B&V
Assocs., Inc. v. Internet Waterway, Inc.,
FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing
trademark rights by identical or confusingly similar domain name registrations.
Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant's
rights must predate Respondent's domain name registration . . .”); see also Intermark
Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003)
(finding that any enforceable interest that the complainant may have in its
common law mark did not predate the respondent’s domain name registration,
therefore finding that Policy ¶ 4(a)(i) had not been satisfied). Thus, the Panel will analyze whether in
August 1999 (the date Respondent registered the disputed domain name) Complainant
had common law rights in the GLOBAL SHELTERS mark.
Complainant has
presented the Panel with evidence that indicates that Complainant had been
using the GLOBAL SHELTERS mark since 1983 in connection with the sale,
distribution, and installation of tension fabric structures. Complainant has also demonstrated that it
had widely advertised its products and services since 1983. The Panel holds that such evidence of
long-term and continuous use and advertising is sufficient to establish that
Complainant’s mark had acquired secondary meaning. Thus, the Panel concludes that Complainant had common law rights
in the mark at the time of Respondent’s registration for purposes of Policy ¶
4(a)(i). See 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); see also
BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Respondent’s
<globalshelters.com> domain name is identical to Complainant’s
GLOBAL SHELTERS mark. The disputed
domain name incorporates Complainant’s mark in its entirety and adds the
generic top-level domain (“gTLD”) “.com.”
It is a well-established principle that the addition of a gTLD to a mark
is irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also 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). Thus, the Panel holds that the disputed
domain name is identical to Complainant’s mark.
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
When a complainant
argues that a respondent does not have rights or legitimate interests in the
disputed domain name, panels generally hold that the assertion alone is
sufficient to establish a prima facie case, unless there is concrete
evidence indicating otherwise. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); see also Woolworths plc. v. Anderson, D2000-1113
(WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the
domain name for a legitimate purpose, the burden of proof lies with the
respondent to demonstrate that it has rights or legitimate interests).
Although the
burden generally shifts to the respondent to prove with concrete evidence that
it has rights or legitimate interests in the disputed domain name, the evidence
provided by Complainant leads the Panel to believe that Respondent has rights
and legitimate interests in the domain name because Respondent was commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates
that Respondent registered the <globalshelters.com> domain name
while functioning under the corporate name “Global Shelters East, Inc.” The agreement between Respondent and
Complainant stated that Respondent registered the “Global Shelters East, Inc.”
with the Commonwealth of Massachusetts and included its corporate name in the
agreement between the parties.
Complainant signed the agreement knowing that Respondent created a
corporation with a name that included Complainant’s mark. Moreover, Respondent offered goods and
services, took orders, advertised, and communicated with clients under its
corporate name along the entire east coast.
In eeParts,
Inc. v. E E All Parts Corp., FA 481753 (Nat. Arb. Forum July 14, 2005), the
panel held that the respondent, a registered California corporation operating
under the name “EE All Parts Corporation,” was commonly known by that name
after using it for one year and registering the <eeallparts.com> domain
name. The panel held that because the
respondent was operating under the same corporate name as the domain name, that
the respondent had rights and legitimate interests in the disputed domain name
for purposes of Policy ¶ 4(a)(ii).
Similarly, in
this case, Respondent’s registration of the corporate name “Global Shelters
East, Inc.” and operation under that name for over a year indicates that
Respondent was commonly known by the disputed domain name under Policy ¶
4(c)(ii). Thus, the Panel concludes
that Respondent had rights and legitimate interests in the disputed domain name
and that Complainant has failed to fulfill the requirements of Policy ¶
4(a)(ii).
Since
Complainant has failed to establish that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii), it is unnecessary to address Policy ¶
4(a)(iii). See Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. 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 Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that absent a showing of any facts by the complainant that establish
the respondent lacks rights or legitimate interests in the disputed domain
name, the panel may decline to transfer the disputed domain name).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 28, 2005
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