Osment Models, Inc. d/b/a Woodland
Scenics v. Pinewood Extreme Enterprises
Claim Number: FA0508000530439
PARTIES
Complainant
is Osment Models, Inc. d/b/a Woodland Scenics (“Complainant”), represented by Mark C. Young, of Stinson Morrison
Hecker LLP, 1201 Walnut
Street, Kansas City, MO 64106.
Respondent is Pinewood Extreme
Enterprises (“Respondent”), 13932 Manchester Road, Suite 130, Ballwin, MO
63011.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pinecarextreme.com>,
registered with Bulkregister, Llc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Linda
M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 5, 2005.
On
August 4, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <pinecarextreme.com>
domain name is registered with Bulkregister, Llc. and that the Respondent is
the current registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
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
August 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 25,
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@pinecarextreme.com by e-mail.
A
timely Response was received and determined to be complete on August 23, 2005.
On August 31, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends that Respondent’s <pinecarextreme.com>
domain name is confusingly similar
to Complainant’s PINECAR registered trademark; that Respondent does not have
any rights or legitimate interest with respect to the domain name; and that the
domain name was registered and being used in bad faith.
B. Respondent
Respondent
contends that the <pinecarextreme.com>
domain name is not confusingly
similar to Complainant’s PINECAR mark; that Respondent had a legitimate
business interest in the domain name; and that Respondent did not register or
use the domain name in bad faith.
FINDINGS
Complainant owns
a U.S. trademark registration for PINECAR.
Complainant has been using the PINECAR trademark since 1985.
On March 18,
2005, Respondent registered the <pinecarextreme.com> and
<pinewoodextreme.com> domain names.
There is currently no operational website associated with <pinecarextreme.com>. Respondent currently operates a website
under the <pinewoodextreme.com> domain name, and Complainant has
evidently not objected to the latter domain name.
Respondent
developed a website for <pinecarextreme.com>, and several months
ago Respondent operated a website in association with this domain name. Shortly after Respondent began operation of
the <pinecarextreme.com> website, Respondent became aware of
Complainant’s PINECAR trademark.
On April 11,
2005 Respondent telephoned Complainant concerning its use of the <pinecarextreme>
domain name. Complainant declined to permit
Respondent to use this domain name for a commercial website. The parties exchanged e-mails on April 19,
2005, in which Complainant requested the voluntary transfer of the domain name
to Complainant. Respondent stopped
allowing the <pinecarextreme.com> website to be accessible to the
public, but refused to transfer the domain name to Complainant.
On April 26,
2005, Complainant’s attorneys sent a letter to Respondent stating that the <pinecarextreme.com>
domain name is associated with a website “offering goods virtually identical to
those provided by Woodland Scenics under its PINECAR mark.” The letter stated that the use of the <pinecarextreme.com>
domain name was likely to cause confusion with Complainant’s PINECAR
trademark.
On May 20, 2005,
Respondent replied to Complainant’s letter, stating that Respondent had hoped
to enter into a vendor relationship with Complainant. In view of the fact that Complainant was not interested in this
possibility, Respondent decided to use the <pinewoodextreme.com> domain
name, rather than <pinecarextreme.com>. However, Respondent refused to transfer the <pinecarextreme.com>
domain name to Complainant because “it is very close to the current URL that we
are using and in the process of filing a trademark for. We have stated that the ‘pinecarextreme.com’
URL will remain in a condition of non-use and that we will not pursue the use
of the term ‘pinecar’ in any way that would cause a trademark
infringement.” The record contains no
evidence that Respondent owns any trademark registration or application for
PINEWOODEXTREME or PINEWOODEXTREME.COM.
After May 20,
2005, the record contains no further correspondence between the parties. On August 3, 2005, Complainant filed this
complaint to seek the transfer of the <pinecarextreme.com> domain
name.
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.
Respondent
does not dispute that Complainant’s PINECAR mark is valid. The U.S. Patent and Trademark Office issued
Registration No. 1,413,331 to Complainant on October 14, 1986, for the PINECAR
mark. Marks that are the subject of a
U.S. trademark registration are presumed valid. See 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.”).
Complainant
is a designer and manufacturer of model cars and model car parts and has used
its PINECAR mark in conjunction with this business. Respondent’s business also includes the sale of materials and
accessories for model cars. At the time that Respondent registered and used the
<pinecarextreme.com> domain name, Respondent evidently intended to
use the domain name to sell this type of product. Thus, both the
Complainant’s use and Respondent’s intended use of their respective marks
pertain to model cars, creating the potential for competition between the
parties.
Domain
names need not be identical to a mark in order to be confusingly similar to
that mark. Respondent’s domain name
uses the Complainant’s entire PINECAR mark.
The only change the Respondent made was to attach the suffix “extreme”,
which does not create a significant distinction from the protected mark. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or
confusingly similarity for purposes of the Policy despite the addition of other
words to such marks.”); see also Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s AOL mark); see
also Wal-Mart Stores, Inc. V. Kenneth E. Crews, D2000-580 (WIPO Aug. 30,
2000) (where <superwal-mart.com> was found confusingly similar to the
Wal-Mart mark).
Respondent
contends that the addition of the word “extreme” is sufficient to prevent
confusion. However, this Panel
concludes that the word “extreme” provides only a trivial change from the
PINECAR mark. The difference between
PINECAR and “pinecarextreme” fails to create a meaningful difference in
commercial impression, connotation or meaning.
In this instance, the addition of the single word “extreme” does not
significantly distinguish the domain name from the protected mark.
This
panel finds Respondent’s <pinecarextreme.com> domain name is
confusingly similar and would create confusion with Complainant’s PINECAR
mark.
Paragraph
4(c) provides examples of what may constitute a right or legitimate interest:
(1) use of, or preparations to use, the domain name in connection with a
bona fide offering of goods or services; (2) a situation in which the
respondent has commonly been known by the domain name; and (3) legitimate
non-commercial or fair use of the domain name.
If a
complainant makes a prima facie case establishing that a respondent has
no rights or legitimate interests, the burden of proof shifts to the respondent
to establish such rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Complainant
has provided a prima facie case that Respondent has no rights or
legitimate interests in the <pinecarextreme.com> domain name. By asserting that Respondent is not
operating a business associated with the domain name and that Respondent’s
business is not associated with the domain name, Complainant has shown that
Respondent is not commonly known by the domain name. 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 had not applied for a license
or permission to use the complainant’s trademark). Respondent maintains that its use of the <pinecarextreme.com> domain name was a bona fide offering of goods.
Complainant contends that because Respondent used the <pinecarextreme.com>
domain name in a manner that directly competed with the products associated
with Complainant’s PINECAR mark, Respondent’s business was not a bona fide
offering of goods. See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“The
Respondent’s use of a domain name confusingly similar to Complainant’s mark to
sell goods in direct competition with Complainant’s goods is neither a bona
fide offering of goods or services pursuant to Policy 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)”).
Respondent
argues that it will begin to utilize the domain name in a different manner in
the future, pending a satisfactory resolution of this matter. Specifically, Respondent asserts that it
plans to use the <pinecarextreme.com> domain name as a free
informational website. Therefore,
Respondent contends it has rights and legitimate interests in the disputed
domain name.
Respondent
failed to show that its initial use of the domain name was not in competition
with Complainant’s use of its mark, and therefore, this Panel concludes that
Respondent’s use of the domain name was not a bona fide offering of
goods. Regarding Respondent’s claim to
use the domain name in the future for a free informational site, Respondent has
provided no business plan or other evidence of such a plan. In view of the above, this Panel finds that
Respondent has not met its burden of rebutting Complainant’s prima facie
case that Respondent lacks rights or a legitimate interest in the <pinecarextreme.com>
domain name.
The
Rules set forth several examples of what might constitute evidence of bad
faith. These examples include:
(1)
Circumstances
indicating that the Respondent acquired the domain name primarily for the
purpose of transferring the domain name to Complainant for an excessive price.
(2)
Circumstances
indicating that the Respondent registered the domain name to prevent
Complainant from doing so.
(3)
Registration
of the domain name primarily for the purpose of disrupting a competitor’s
business.
(4)
Use of the
domain name to create a likelihood of confusion with Complainant’s mark.
Based
upon the record, this Panel finds that Complainant has sufficiently established
the fourth type of bad faith.
Specifically, Respondent used the <pinecarextreme.com> domain name to promote the sale of goods
that were competitive with Complainant’s goods. As discussed above, the <pinecarextreme.com>
domain name is confusingly similar to Complainant’s PINECAR registered
trademark. This Panel therefore
concludes that Complainant has met its burden of proof to show that Respondent
has acted in bad faith.
DECISION
In
view of the failure to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be TRANSFERRED.
Accordingly, it is Ordered that the <pinecarextreme.com>
domain name be transferred from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: September 14, 2005
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