NATIONAL ARBITRATION FORUM
Gary L. Pifer d/b/a Colchester Rubber Co., Inc. v. M.A. Stenzel
Claim Number: FA0510000588409
PARTIES
Complainant is Gary L. Pifer d/b/a Colchester Rubber Co., Inc. (“Complainant”), P.O. Box 6139, Oceanside, CA 92052. Respondent is M.A. Stenzel “(Respondent”), P.O. Box 390, Kahului, HI 96733.
RESIGTRAR AND DISPUTED DOMAIN NAME
The domain name
at issue is <colchester.com>, registered with Enom, Inc.
PANEL
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.
Patrick C. Guillot
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2005.
On October 28, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <Colchester.com> domain name 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 November 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 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@colchester.com by e-mail.
A timely Response was received and determined to be complete on December 6, 2005.
On December 13, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Patrick C. Guillot as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
1. Complainant states that Respondent’s use of or demonstrable preparations to use, the domain name or name corresponding to the domain name was not in connection with a bona fide offering of goods or services; and
2. Respondent has not been commonly known by the domain name;
3. Respondent is not making a legitimate non-commercial or fair use of the domain name without the intent of commercial gain but rather to misleadingly divert consumers.
The Respondent contends that the trademark which Complainant has for COLCHESTER was established several years after the domain name <colchester.com> had been registered by the Respondent. Respondent further states that a search for the term COLCHESTER on <google.com> shows over 5,500,000 results. Respondent states that none of the first 40 results seem to have any connection to Complainant. Respondent states that it has chosen for its trademark the name of a city in the United Kingdom with over 155,000 inhabitants and that there are some small communities in the U.S. with that name in the states of Connecticut, Vermont and Illinois. Respondent concludes that Complainant has no right to claim exclusive rights to its trademark as a singular word because no party can claim exclusive rights to a geographic term.
FINDINGS
The Panel finds that Respondent is not commonly known by the <colchester.com> domain name; Respondent has not used the <colchester.com> domain name to resolve to an active website since registering it in 1999; and that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). The Panel concludes and finds that Respondent has registered the <colchester.com> domain name in bad faith because Respondent has made no use of the domain name since it registered the domain name in 1999. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also DCISA vs. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)(concluding that the respondent’s passive holding of the domain name satisfies the requirement of Section 4(a)(3i) of the Policy); see also Clerical Med. Inv. Group, Ltd. vs. 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).
DISCUSSION
The Panel finds that Complainant has established rights in the COLCHESTER mark by registering it with the United States Patent and Trademark Office (Reg. No. 2,775,452 issued October 21, 2003). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO Jne 18, 2001)(finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
Complainant contends that the <colchester.com> domain name is identical to Complainant’s COLCHESTER mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain “.com.” The Panel finds that these minor alterations to Complainant’s registered mark are insufficient to negate the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution Mar.20, 2000)(refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also 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).
Consequently, the Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights and violates Policy ¶ 4(a)(i).
Complainant argues that Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark. Moreover, Complainant contends that Respondent is not commonly known by the <colchester.com> domain name. As Respondent is not commonly known by the <colchester.com> domain name, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name, pursuant to Policy ¶ 4(c)(ii). See 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”); see also Compagine de Saint Gobain v.Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)(finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the mark precede in the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).
Complainant asserts that Respondent has not used the <colchester.com> domain name to resolve to an active website since registering it in 1999. This is not 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 Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000)(finding that prior to any notice of the dispute, the respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)(finding no rights or legitimate interests in the domain name where there is no proof that a respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc.,D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondents have not established any rights or legitimate interests in the domain name).
Consequently, the Panel finds that the respondent has no rights or legitimate interests in respect of the domain name which violates Policy ¶ 4(a)(ii).
The Panel finds that Respondent has registered the <colchester.com> domain name in bad faith because Respondent has made no use of the domain name since it registered the domain name in 1999. See Tlestra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)(finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also 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 ¶ 4(a)(iii) of the Policy); 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).
Thus, the Panel finds that the domain name has been registered and is being used in bad faith which violates Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is ordered that the <colchester.com> domain name be TRANSFERRED from Respondent to Complainant.
Patrick C. Guillot
December 27, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum