Science, Engineering and Technology
Associates Corporation v. John Freeman
Claim Number: FA0601000637300
PARTIES
Complainant is Science, Engineering and Technology Associates Corporation (“Complainant”), represented by Stephen J. Jeffries, of Holland & Knight LLP, 2099 Pennsylvania Ave., NW, Suite 100, Washinton, DC 20006-6801. Respondent is John Freeman (“Respondent”), represented by Jill Gilbert Welytok, of Absolute Technology Law Group, LLC, 225 E. Michigan Avenue, Milwaukee, WI 53202.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <counterbomber.com>, <counterbomber.net> and <counterbomber.org>, registered with Schlund+Partner Ag.
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.
Richard DiSalle is Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 30, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 3, 2006.
On January 31, 2006, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <counterbomber.com>, <counterbomber.net> and <counterbomber.org> domain names are registered with Schlund+Partner
Ag and that the Respondent is the current registrant of the name. Schlund+Partner Ag has verified that
Respondent is bound by the Schlund+Partner Ag 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 February 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 23, 2006 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@counterbomber.com,
postmaster@counterbomber.net and postmaster@counterbomber.org by e-mail.
A timely Response was received and determined to be complete on February
22, 2006.
A timely Additional Submission was received from Complainant on
February 27, 2006 in accordance with The Forum’s Supplemental Rule #7.
A timely Additional Submission was received from Respondent on March 6,
2006 in accordance with The Forum’s Supplemental Rule #7.
On February 27, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a small, privately owned business founded by scientists from
the Defense Advanced Research Projects Agency.
Complainant develops and commercializes multi-sensor information processing
technologies for customers with challenging security needs. Complainant's customers consist primarily of
defense, homeland security and intelligence entities. On or about May 19,2003, Complainant commenced development of a
low cost, portable hidden weapon detection system that permits remote operators
to safely monitor large, crowded areas (such as shopping plazas and
installation entrances) for concealed human-carried explosives such as those
carried by suicide bombers. Upon the
detection of hidden weapons, the system is designed to track the threat while
alerting a field operator through a portable handheld device. The location and image of the threat are
transmitted to the operator in time to interdict the threat before reaching its
intended target.
During the month of September, 2004, Complainant selected and adopted the COUNTERBOMBER
trademark for use in connection with Complainant's Goods. During the month of February, 2005,
Complainant commenced use of the COUNTERBOMBER trademark in connection
with Complainant's Goods, acquiring common law rights therein pursuant to
United States law. The mark has been
used in web advertising, sponsor briefings and technical documents relevant to
Complainant's Goods. The mark remains
in use in connection with Complainant’s Goods at this time.
On February 24, 2005, Complainant filed an application to register the COUNTERBOMBER trademark in the United States Patent and Trademark Office. The application has not yet matured to registration. The domain names <counterbomber.com>, <counterbomber.net> and <counterbomber.org> are identical to Complainant's trademark COUNTERBOMBER. Policy ¶ 4(a)(i). The domain names <counterbomber.com>, <counterbomber.net> and <counterbomber.org> have been formed by [i] appropriating Complainant's trademark COUNTERBOMBER in its entirety and [ii] adding the generic top level domains ".com," ".net" and ".org" thereto. The domain names are therefore identical to Complainant's trademark COUNTERBOMBER.
The Complainant claims that Respondent has no rights or legitimate interests in respect of the domain names that are the subject of the Complaint. Policy ¶ 4(a)(ii).
The Complainant further claims that:
Starting on June 15, 2005, Respondent was employed by Complainant in the
position of Chief Financial Officer. As
Chief Financial Officer in Complainant’s employ, Respondent was directly
responsible for Complainant’s financial, accounting, contractual and legal
affairs. In this capacity, Respondent
had actual knowledge that Complainant had commenced use of the COUNTERBOMBER
trademark and filed an application to register the trademark in the United
States Patent and Trademark Office (each such event having occurred prior to
Respondent's hire date). On December 1,
2005, Respondent privately registered the domain names <counterbomber.com>,
<counterbomber.net> and <counterbomber.org> without the
authorization, knowledge or consent of Complainant. On December 27, 2005, Respondent's employment was terminated by
Complainant.
Respondent has not used the domain names <counterbomber.com>, <counterbomber.net> and <counterbomber.org> for any legitimate commercial or non-commercial purpose, and none resolve to active web sites and Respondent’s only connection with the domain names <counterbomber.com>, <counterbomber.net> and <counterbomber.org> arises from Respondent’s former employment by Complaint. Complainant also complains that Respondent has registered and used the domain name in bad faith. Policy ¶ 4(a)(iii).
Complainant notes that the Panel is not constrained by the criteria under Policy ¶ 4(b) when determining where a Respondent acted in bad faith. See Aldahan Automotive Group, Inc. v. Stewart, FA 98416 (Nat. Arb. Forum Sept. 4, 2001); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 16, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence, and that the Panel may look at the totality of circumstances to determine whether the disputed domain name was registered and is being used in bad faith).
B. Respondent
Complainant alleges it first used the term in 2004. However, other parties have used the term counterbomber generically or descriptively in connection with computer hardware and software and for domain names prior to Complainant. For example, the term counterbomber was used generically by the Naval Explosive Ordinance Disposal Technology Division in connection with a product in 2003 which was described in published documents on the Internet in 2004. The term "counterbomber" is a generic or descriptive term for which Complainant cannot preempt concurrent use by Respondent and others. The term counterbomber has become generic by prior use to generally describe a wide range of military and counterterrorism products by function. Most members of the military and public would not know the technical terms for these products, and would describe them as "counterbomber" technologies.
Complainant's pending application does not confer trademark rights under ICANN Policy. A pending trademark or service mark application, without more, is insufficient to support a finding of rights in a mark under Policy 4(a)(i). Complainant cannot claim rights based on its use of the mark without specifying the intended goods on which it will be used. Complainant filed its trademark application on the basis of its intent to use the mark in the future. Complainant has not submitted any evidence of its actual use in commerce to the USPTO. Complainant is conducting some research in the area of counterbomber and counterterrorism systems, but not as to a specific product. Making an isolated reference on its website about some general research Complainant is conducting does not reflect commercial use sufficient to establish to trademark rights.
Complainant submitted as its sole evidence of commercial use a single paragraph it asserted was an "advertisement" of its goods. However, the submitted document was not an “advertisement” as it was never used in commerce to promote a product or service. Respondent has taken steps to use the mark counterbomber for public awareness education and training products, and for publications, which would not be confused with Complainant's intended use of the trademark. It is not uncommon for a single trademark term to describe differing types of goods and services, and neither party's use will pre-empt the other's so long as there is no confusion as to the source of goods.
Respondent also claims that it should not be considered as having registered or used the domain names in bad faith, because Respondent has no intention to profit from transfer of the domain name.
C. Additional Complainant
Submissions
Complainant submitted a timely reply to Respondent’s Response on February 27, 2006. In its reply Complainant, inter alia, asserts: Under United States law, inherently distinctive words and symbols are protected as trademarks immediately upon adoption and use in trade. See Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 16.1 – 16.4 (3rd Ed. 1996). Respondent's allegation that the designation COUNTERBOMBER is descriptive or generic rests upon evidence purported to demonstrate "use by third parties to identify products or services similar to Complainant's." See Respondent's Response, at p. 3. There is no such evidence on record. Respondent's evidence refers to a single instance of non-descriptive, non-trademark use by the U.S. government.
Complainant also asserts: In the examination of Complainant's pending application to register Complainant's mark COUNTERBOMBER in the United States Patent and Trademark Office (Application Serial No. 78/574,579), the trademark examiner determined that Complainant's mark COUNTERBOMBER is inherently distinctive and approved for publication for opposition accordingly. Complainant's business records show that Respondent personally signed at least two checks in payment for legal services rendered in connection with Complainant's application to register the COUNTERBOMBER trademark in the United States Patent and Trademark Office during the course of his employment. Complainant's business records further demonstrate that Mr. Freeman was actively involved in efforts to secure SAFETY Act ("Support Anti-terrorism by Fostering Effective Technologies Act of 2002") liability limitations for Complainant's "CounterBomber (tm)" product from the United States Department of Homeland Security during the course of his employment.
D. Additional Respondent
Submissions
On March 6, 2006, Respondent submitted a
timely additional reply, which was reviewed by the panel. It claims, inter alia, that:
Complainant has not alleged or submitted proof in any of its pleadings that confusing similarity exists as a result of Respondents use of the term counterbomber in connection with Respondent's training, education and publication products and services. Complainant has not established rights in the mark which pre-empt Respondent's intended use. Respondent also alleges that even, assuming Complainant is able to prove the requisite association between the goods and the mark, Complainant's customers are sophisticated users paying the “approximate amount of $915,000 per system.” Also, that Complainant has not associated its mark with a specific product or service.
FINDINGS
(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.
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;
(3)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(4)
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. Complainant has common law rights in the mark because the mark has acquired secondary meaning as a source indicator for Complainant’s hidden weapons detection systems. The Panel finds that Complainant has provided sufficient evidence of secondary meaning associated with the mark and, therefore, that Complainant has established common law rights sufficient to satisfy Policy ¶ 4(a)(i). See McCarthy on Trademarks & Unfair Competition, § 25:74.2 (4th ed. 2002) (stating that 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”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”); 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).
Complainant asserts
that Respondent’s <counterbomber.com>, <counterbomber.net> and <counterbomber.org>
domain names are identical to Complainant’s COUNTERBOMBER mark because the
domain names incorporate Complainant’s mark in its entirety and merely add
generic top-level domains to the mark.
The Panel finds that such a minor addition to Complainant’s mark is
insufficient to negate the identical aspects of Respondent’s domain names
pursuant to Policy ¶ 4(a)(i). See
Shirmax Retail Ltd./Detaillants Shirmax Ltee 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).
Once Complainant
makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to
Respondent to establish rights or legitimate interests in the disputed domain
names. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant
has asserted that the respondent does not have 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
Complainant argues that Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark. Moreover, Complainant contends that Respondent is not commonly known by the <counterbomber.com>, <counterbomber.net> or <counterbomber.org> domain name. The Panel finds that Respondent is not commonly known by the <counterbomber.com>, <counterbomber.net> and <counterbomber.org> domain names, and thus, concludes that Respondent has not established rights or legitimate interests in the domain names 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”).
Moreover, Complainant asserts that Respondent has not made any use of the <counterbomber.com>, <counterbomber.net> and <counterbomber.org> domain names since registering them in December 2005. The Panel determines that this is not 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). 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).
Furthermore, the
Panel finds that Respondent, a Chief Financial Officer, was directly
responsible for Complainant’s financial, accounting, contractual and legal
affairs of Complainant, and does not have rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(a)(ii). See Vinidex Pty Ltd.
v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the
respondent lacked rights and legitimate interests in the domain name because it
did not resolve to a developed website and the respondent, a former employee of
the complainant, had constructive knowledge of the complainant’s rights in the
mark).
The Panel finds that Respondent has registered the <counterbomber.com>, <counterbomber.net> and <counterbomber.org> domain names in bad faith because Respondent has made no use of the domain names since it registered them in December 2005. 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 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).
Furthermore, the
Panel finds that Respondent, as noted, was a former employee of Complainant,
and registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(a)(iii) due to Respondent’s actual knowledge of Complainant’s
mark. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO
Dec. 19, 2000) (finding bad faith registration and use where the respondent was
formerly employed by the complainant, was fully aware of the name of her
employer, and made no use of the infringing domain name); see also163972 Canada, Inc. v. Ursino, AF-0211
(e-Resolution July 3, 2000) (finding that because the respondent was hired by
the complainant to help design and register the complainant’s websites, the
respondent had intimate knowledge of the complainant’s business and use of its
TEENFLO mark).
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 <counterbomber.com>, <counterbomber.net> and <counterbomber.org> domain names be TRANSFERRED from
Respondent to Complainant.
Richard DiSalle, Panelist
Dated: March 14, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum