National Arbitration Forum

 

DECISION

 

Lyman Bros., Inc. v. Corporate Site c/o EntertainmentTELECOM.com

Claim Number: FA0605000702605

 

PARTIES

Complainant is Lyman Bros., Inc. (“Complainant”), 10288 S. Jordan Gateway #K, South Jordan, UT 84095.  Respondent is Corporate Site c/o EntertainmentTELECOM.com (“Respondent”), 555 California Boulevard, Panama City 3615, Panama.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lymanbrothers.com>, registered with Communigal Communications Ltd.

 

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.

 

Daniel B. Banks, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2006.

 

On May 10, 2006, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <lymanbrothers.com> domain name is registered with Communigal Communications Ltd and that the Respondent is the current registrant of the name.  Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 May 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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@lymanbrothers.com by e-mail.

 

An electronic copy of the Response was received on June 7, 2006.  However, the National Arbitration Forum did not receive a hard copy of the Response by the appropriate deadline.  Respondent did not submit its Response in compliance with ICANN Rule #5 (a), because the Response was not received in hard copy.  The Panel has discretion as to whether to accept and consider the deficient Response in making its decision.  See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that ruling a Response inadmissible because of formal deficiencies would be an extreme remedy that is inconsistent with the principles of due process).  Accordingly, the Panel shall allow and consider the electronic copy of the Response.

 

On June 9, 2006, the National Arbitration Forum received an Additional Submission from Complainant, in compliance with Supplemental Rule #7. 

 

On June 13, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a provider of satellite communications services and equipment based in South Jordan, UT, USA.  It was incorporated in the State of Utah in September 1981, as Lyman Equipment Co.  In 1982, the Certificate of Incorporation was amended to change the name to “Lyman Bros.”  It currently has websites and email addresses that use the <lymanbros.com> domain, including hosting a company website at <lymanbros.com>. 

 

The disputed domain name is amazingly similar to the domain name owned by the Complainant.  The respondent is not hosting a website at the domain but is redirecting visitors to a different domain that hosts pornography.  This similarity in names is confusing to visitors who may type in the full name “lymanbrothers” instead of “lymanbros.” 

 

Because the Respondent does not use the domain name for any legitimate purposes, it appears the original intent was to attract, for commercial gain, Internet users to their pornographic site by creating a likelihood of confusion and later selling the domain name to the Complainant.  When Complainant made an offer to purchase the domain name, Respondent requested the unreasonable amount of 9,000 Euro (approximately $11,153 USD).

 

B. Respondent

The disputed domain name is not a trademark.  “Lyman” is a proper name, family name and a county name in Maine where artists are welcome.  “Brother” is a generic term.  When the two brothers Josh and Andy came to see us, they went to Lyman, Maine where they decided to become artists.  They chose the name “Les Freres Lyman” which means “Lyman Brothers” in French.  They decided to Americanize this name for entertainment purposes in 1998.  They decided to have an artist career in adult entertainment and in 1998, opened their website using the disputed domain name.  On the website, they are able to sell their movies, their pictures and can be in contact with their fans.  Brett Lyman contacted us to buy the domain name and the price was calculated on the yearly revenues on the domain name. 

 

C. Additional Submissions

Complainant submitted a timely additional submission which was received on June 9, 2006 and was considered by the Panelist.  In its submission, Complainant admits that the disputed domain name is not a trademark and that a trademark does not exist for the name “lymanbrothers.”  Complainant also admits that the disputed domain name was registered in 1998.  However, the website “Lymanbrothers.com” did not exist until after the domain name dispute was filed.  It used to be an automatic redirect to <venustv.com>.  The automatic redirect has since been removed and in its place is a single web page.  It does not do what Respondent’s allege.  It is only one page and only contains links to other website.  The “Les Freres Lyman” are not mentioned anywhere on the page. 

 

Respondent says that the term “Lyman Brothers” does not actually belong to anyone.  As shown in the Complaint, “Lyman Bros., Inc.” is the legal name of the business of the Complainant.  The business name is one that existed previously within the same family one hundred years earlier. 

 

Brett Lyman refused to pay the 9,000 Euro requested by Respondent and offered $500.00 USD.  His intentions in making that offer were not to be insulting but to inform Respondent of the impending domain dispute if the offer was rejected. 

 

All the information available to the Complainant points to the conclusion that the domain name was being used in bad faith under Policy ¶ 4(b)(i) and Policy ¶ 4 (b)(iv). 

 

FINDINGS

Complainant must first present evidence to establish not only that the disputed domain name is identical or confusingly similar to its mark, but also that it has rights in the mark.  The Complainant admits that the disputed domain name is not a registered trademark.  In order to recover, Complainant must then demonstrate secondary meaning of the mark in order to establish common law rights in the LYMAN BROS. mark.  Complainant has failed to present any evidence to demonstrate secondary meaning and therefore has failed to establish common law rights in the mark under Policy ¶ 4(a)(i).  Thus, Complainant has failed to prove the first element necessary to prevail in this action.

 

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.

 

Complainant must establish that the disputed domain name is not only confusingly similar to Complainant’s mark, but also that Complainant has enforceable rights in the mark.  In this case, the Complainant has completely failed to present evidence that would establish enforceable rights in the disputed domain name.  It admits that the mark LYMAN BROS. is not a registered trademark yet offers no evidence to establish secondary meaning of the mark sufficient to create common law rights in the mark as required by Policy ¶ 4(a)(i).  Since the Complainant has failed to demonstrate common law rights in the mark, the Panel finds that Complainant has not demonstrated rights in the mark pursuant to Policy ¶ 4(a)(i), and the Panel may accordingly dismiss the case.  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (finding that a person may demonstrate common law trademark rights in a name, but that in order to establish secondary meaning, a complainant must submit evidence to support consumer knowledge of the complainant’s rights in the mark).

 

As Complainant has failed to offer any evidence to establish the first necessary element of its case, the Complainant cannot prevail.  Therefore, the Panel concludes that it is not necessary or desirable to make any comment on the other grounds in this matter. 

 

 

DECISION

Having failed to establish the necessary element under Policy ¶ 4(a)(i), the Panel concludes that relief shall be DENIED and this case dismissed.

 

 

 

 

 

Daniel B. Banks, Jr., Panelist
Dated:  June 21, 2006