Cut & Fill Inc. c/o Ronald G. Bailey v.
Fill Exchange c/o Steve O'Brien
Claim Number: FA0603000653344
PARTIES
Complainant is Cut & Fill Inc. c/o Ronald G. Bailey (“Complainant”). Respondent is Fill Exchange c/o Steve O'Brien (“Respondent”), represented by Julie Finch, of Law Offices of Julie L. Finch, PLLC, 2190 Sargent Avenue, St. Paul, MN 55105.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cutandfill.com>, 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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March 3, 2006; the National
Arbitration Forum received a hard copy of the Complaint on March 3, 2006.
On March 6, 2006, Schlund+Partner Ag
confirmed by e-mail to the National Arbitration Forum that the <cutandfill.com> domain name is
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 March 9, 2006, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 29, 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@cutandfill.com
by e-mail.
A timely Response was received and determined
to be complete on March 28, 2006.
On April 3, 2006,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <cutandfill.com> domain name is confusingly similar to Complainant’s Cut & Fill mark.
2. Respondent does not have any rights or legitimate interests in the domain name <cutandfill.com>.
3. Respondent registered and used the domain name <cutandfill.com> in bad faith.
B. Respondent makes the following assertions:
1. Respondent asserts that despite Complainant’s registration of the CUT & FILL mark with the USPTO, the phrase “cut and fill” is common in the construction industry for excavating and reshaping the earth and dirt. Respondent thus argues that Complainant cannot prohibit others from using a generic industry phrase in its common usage.
2. Respondent asserts that it registered the
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), because it is using the domain name to attract
consumers in the construction industry
familiar with the term “cut and fill” in its generic sense to Respondent’s
business.
3. Respondent contends that its
registration and use of the <cutandfill.com> domain name is not in
bad faith pursuant to Policy ¶ 4(a)(iii) because it has not violated any of the
factors listed in Policy ¶ 4(b).
FINDINGS
On April 25, 1998, the Complainant registered the domain name <cutfill.com> and in the spring of 1999 began doing business at this website address under the mark “Find-A-Match”. On February 6, 2005 Complainant acquired a second domain name <dirtfill.com> and shortly thereafter re-launched their website at this address under the mark “DirtFill”. At the time Complainant registered both the “cutfill.com” domain name and the “dirtfill.com” domain name, the disputed domain name was available for Complainant’s acquisition. Complainant is currently offering to sell a variety of domain names, including the “Find-A-Match” related domain names. Respondent did not acquire the disputed domain name until February 28, 2005, after Complainant had acquired and decided to promote “dirtfill.com” as Complainant’s website.
Complainant’s website, established in early 1999, is <cutfill.com>, which points to its website, <DirtFill.com>. Respondent is pointing or web forwarding the domain name, <cutandfill.com>, to Respondent’s website, <fillexchange.com>, which was established in early 2005. Although he only gave one example, Complainant alleges that many customers of Cut & Fill may go to <cutandfill.com> thinking it is Complainant’s website. The services offered on Fill Exchange’s website compete directly with those offered by the Complainant.
When a builder or other construction contractor is hired for
work that requires the removal, leveling or other reshaping of earth and dirt,
the process by which the earth is excavated and reshaped is generally referred
to in the construction industry as “cut and fill”. Both Complainant and Respondent run websites which assist a
contractor or other builder in disposing of, and obtaining, fill. By definition
“Cut and Fill” is a generic
construction industry term referring to the process of excavating and replacing
dirt and like substances. To the extent
Complainant has trademark rights, such rights do not extend to prohibit others
from using a generic industry phrase in its normal usage. The relevant consumers are not confused
because Complainant is not using its claimed trademark. .
Despite the availability of the disputed domain name until late February 2005, (when acquired by Respondent), Complainant has never attempted to acquire the disputed domain name. Other then this proceeding there has been no contact between the parties regarding the disputed domain name. Respondent’s website clearly shows Respondent promoting its services under the name “Fill Exchange”, at the website <fillexchange.com>. Complainant’s website clearly shows Complainant promoting its services under the name “DirtFill”, at the website <dirtfill.com>. In addition to showing valid trademark rights, Complainant must show that consumers are confused or likely to be confused by Respondent’s use of the disputed domain name. Complainant can not show consumer confusion because Complainant does not provide a service under the designation “Cut & Fill”. Complainant’s website is called “DirtFill”, and the fill matching tool offered by Complainant is called “DirtFill”. Complainant’s website clearly states “DirtFill is brought to you by Cut & Fill Inc., the nation’s first dirtfill brokerage established in 1986 in Mpls-St Paul. We have saved thousands of customers thousands of dollars. Over 50 years of combined staff experience enables us to provide a simple, yet powerful, website tool to meet your DirtFill needs at a low price.” Prior to the current website, Complainant offered its services under the name “Find-A-Match.”
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 domain name <cutandfill.com> is the same as Complainant’s trademarked name except for the word “and” which cannot be expressed as the ampersand “&” in a domain name. The two names are identical in sound, appearance and meaning.
Respondent asserts
that despite Complainant’s registration of the CUT & FILL mark with the
USPTO, the phrase “cut and fill” is common in the construction industry for
excavating and reshaping the earth and dirt.
Thus, Respondent argues that Complainant cannot prohibit others from
using a generic industry phrase in its common usage. Panel agrees with Respondent’s assertions and holds that the
terms of Complainant’s CUT & FILL mark are sufficiently generic so as to
give Respondent the right to use the terms in its <cutandfill.com>
domain name. See Superiority, Inc.
v. none/Motherboards.com, D2003-0491 (WIPO Oct. 9, 2003) (“While
Complainant may coincidentally have a registration for the words ‘just bulbs,’
the words also have a generic or descriptive meaning which Respondent was using
or taking advantage of in selling bulbs of various types. While Apple may have
a trademark for Apple for computers, it has no rights to stop others from using
‘apple’ or <apple.com> to sell apples.”); see also Successful Money
Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar.
7, 2001) (finding that seminar and success are generic terms to which the
complainant cannot maintain exclusive rights
Panel
concludes that Complainant has failed to establish a prima facie
case in support of its allegations that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See
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”); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb.
Forum Jan. 13, 2001) (finding that even when the respondent does file a
response, the complainant must allege facts, which if true, would establish
that the respondent does not have any rights or legitimate interests in the
disputed domain name).
Respondent asserts that
it registered the domain name in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), because it is using the domain
name to attract consumers in the construction industry familiar with the term
“cut and fill” in its generic sense to Respondent’s business. Respondent claims that it is not attempting
to divert Internet users seeking Complainant’s products for commercial gain
because its website does not display Complainant’s CUT & FILL mark but
rather its own FILLEXCHANGE mark. Panel finds that Respondent’s use of the <cutandfill.com> domain name does
not mislead Internet users and thus constitutes a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). See iLeads.com LLC v.
Elec. Mktg. Sys., Inc., FA 187636 (Nat.
Arb. Forum Oct. 13, 2003) (finding that the respondent had rights and
legitimate interests in the <aleads.com> domain name because it used the
term “leads” in the generic sense to refer to the sale of leads over the
Internet); see also Scholastic Inc. v. Master Games Int’l,
Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of
the disputed domain name for a website regarding chess tournaments,
particularly because the domain name appropriately described both the target
users of the respondent’s services and the nature of the respondent’s services,
was a bona fide use of the domain name).
Since the Panel holds that Respondent has rights or legitimate interests in the <cutandfill.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Respondent’s use of the disputed domain name does not violate any of the factors listed in Policy ¶ 4(b) and thus Respondent has not registered and used the <cutandfill.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Miele, Inc. v. Absolute Air Cleaners & Purifiers, D2000-0756 (WIPO Sept. 11, 2000) (refusing to transfer the domain name where the respondent used the domain name in bad faith by linking it to another website, but did not register the domain name in bad faith because he registered the domain name for use in connection with his Miele Appliance Dealership); see also Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith use, even though the respondent’s ownership and purported use of the domain name frustrated the complainant’s business efforts, because nothing indicated that the respondent intended to prevent the complainant from reflecting its mark in a corresponding domain name, to disrupt the complainant’s business, or to intentionally attract the complainant’s customers to the respondent’s site by creating a likelihood of confusion).
Panel concludes that Respondent’s
registration and use of a domain name consisting of two generic terms does not
violate Policy ¶ 4(a)(iii), because Respondent is not misleadingly diverting
Internet users, including Complainant’s customers, to its website. See Canned Foods, Inc. v. Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name
is comprised of a generic term, it is difficult to conclude that there was a
deliberate attempt to confuse on behalf of the respondent, and stating that
“[i]t is precisely because generic words are incapable of distinguishing one
provider from another that trademark protection is denied them”); see also
Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both
registration and use, the generic nature of the disputed domain name itself
rebuts any allegation by Complainant that Respondent registered or used the
disputed domain name in bad faith.”).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief should be DENIED.
Accordingly, it is Ordered that the <cutandfill.com>
domain name be retained by the Respondent
Louis E. Condon Panelist
Dated: April 17, 2006
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