Terminal Supply, Inc. v. HI-LINE ELECTRIC
Claim Number: FA0607000746752
PARTIES
Complainant is Terminal Supply, Inc. (“Complainant”). Respondent is HI-LINE ELECTRIC (“Respondent”), represented by Walter D. Willson, of Wells Marble & Hurst, PLLC Post Office Box 131, Jackson, MS 39205-0131.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terminalsupply.com>, registered
with Network Solutions, Inc.
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.
Jacques A. Léger, Q.C.
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on July 10, 2006; the National
Arbitration Forum received a hard copy of the Complaint on July 14, 2006.
On July 12, 2006, Network Solutions, Inc.
confirmed by e-mail to the National Arbitration Forum that the <terminalsupply.com> domain name
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 July 18, 2006, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of August 7, 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@terminalsupply.com by
e-mail.
A timely Response was received and determined
to be complete on August 7, 2006.
On August 11, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant first asserts that its mark
TERMINAL SUPPLY CO. SINCE 1966, No. 2,389,710 with the United States Patent and
Trademark Office (“USPTO”), in relation with electrical circuit components and
related products is identical to the disputed domain name, <terminalsupply.com>.
Complainant’s contentions are that the domain name fully incorporates its mark,
eliminating the space between the words and adding the generic top-level name
“.com”, thus rendering the domain identical.
Complainant further
alleges that Respondent has no rights nor legitimate interests in the disputed
domain name, as :
a) it is not commonly
know by the name “Terminal Supply”;
b) Respondent is using
the domain name for commercial gain, being a direct competitor, and thus is not
making a legitimate noncommercial or fair use of the domain name;
c) Respondent is using
the domain name to misleadingly divert customers from Terminal Supply,
directing them to Respondent’s website;
Furthermore,
Complainant contends that Respondent is using the domain name in dispute in bad
faith, in order to prevent Complainant from reflecting its mark in its domain
name, having refused to transfer said domain to Complainant’s request; it also
alleges that Respondent is using the domain name in order to disrupt
Complainant’s business and to take sales away from Terminal Supply, and
finally, that Respondent’s use of the disputed domain name creates a likelihood
of confusion with Complainant’s mark.
B. Respondent
Respondent first alleges that Complainant’s
registration certificate, as shown at page 6 of the Amended Complaint,
demonstrate that the mark “consists of a stylized drawing of an electrical
connector including an upper circular portion bearing the name ‘Terminal Supply
Company’ and a lower portion in the form of a banner bearing the words ‘Since
1966’.” In essence, according to Respondent, Complainant’s registration
certificate applies to a picture mark and not a word mark, and accordingly
cannot be identical or confusingly similar to Complainant’s trademark.
Furthermore, Respondent contends that said
registration certificate also bears a disclaimer stating that “no claim is made
to the exclusive right to use ‘Terminal Supply Co.’ and ‘Since 1966’, apart
from the mark as shown”. Therefore, Complainant, according to Respondent, has
no right to claim exclusive use of the words “Terminal Supply Co.”, in any form
they might be used in.
Respondent then asserts that it has rights in
the domain name in dispute, as it has, since the 1999 registration,
continually, and in good faith, used the domain name to refer internet users to
its website where Respondent advertises and sells notably electrical terminals,
which are, according to Respondent, its number one product group. Respondent
states it used the disputed domain name <terminalsupply.com> because it is descriptive of Respondent’s
products and services, as it is a supplier of electrical terminals.
Moreover,
Respondent alleges that it was not aware of Complainant’s picture mark when it
registered the domain name, as registration of said domain took place
approximately seven (7) months before registration of the mark. Respondent also
maintained its rights to use the words “Terminal Supply” even after the mark
was registered, as Complainant did exclude claims to the words in question.
According to
Respondent, pursuant to section 33(b)(4) of the Lanham Act, one may use the
words which comprise a registered trademark or service mark to fairly describe
their goods and services; such use is for use “otherwise than of a mark” and is
protected as fair use. See 15
U.S.C. § 1115(b)(4). Additonally, section 33(b)(5) of the Lanham Act provides
that when one adopts a mark without knowledge of of another’s prior use of the
mark, he/she may continue to use the mark in the area it was used prior to the
mark’s registration. See See 15
U.S.C. § 1115(b)(5).
Respondent further
contends that it is not using the domain in bad faith, as it registered said
domain name prior to Complainant’s registration of the mark, and without
knowledge of this future mark. Respondent also claims it registered the
disputed domain name because it is description of its business, and thus helps
customers locate its website.
Respondent treats
the four (4) circumstances discussed at ¶ 4(b) of ICANN Policy as follows:
a) It cannot have registered
the domain name with the intention of selling it to the mark’s owner, as no
trademark existed at the time of registration. Furthermore, as Complainant
indicated, Respondent has refused to transfer the disputed domain name, as it
was obtained not for resale but to help customers find its website;
b) Respondent has not
engaged in a pattern of registering domain names to prevent others from
obtaining said domain names, as denying the request of one entity to transfer a
single domain name does not form a pattern of registering domains in order to
prevent others with valid and existing trademarks from obtaining the related
domain name;
c) Respondent did not
have notice of Complainant’s mark at the time of registration, whether actual
or constructive, and therefore could not have registered the disputed domain
name primarily for the purpose of disrupting Complainant’s business;
d) The domain name in
dispute is used to describe Respondent’s goods and services themselves, and not
the source, sponsorship, affiliation or endorsement of the goods and services.
There is no likelihood of confusion as to the source of Respondent’s goods, as
Respondent’s name is printed prominently across the top of every webpage of its
website.
Finally, Respondent
contends that Complainant’s current website, <terminalsupplyco.com>, is completely
consistent with Complainant’s mark, referenced to but not protected because of
the disclaimer. Subsequently, Respondent’s prior use of <terminalsupply.com> does not prevent Complainant of the ability
to use a domain name in connection with its trademark.
FINDINGS
The
Complainant is the owner of a registered design trademark, Number 2,389,710, issued August 29, 2000 for
TERMINAL SUPPLY CO. SINCE 1966. Given the limitation of design marks and the disclaimer,
the Panel is of the view that the domain name in dispute, <terminalsupply.com>, registered on November 16, 1999, is not identical nor confusingly similar with said trademark.
Respondent registered the disputed domain
name in relation to its goods and services; the domain name is associated with
the business of Respondent, and thus points to rights and legitimate interests
in the domain name.
The use of the domain name by the Respondent
leads, for reasons stated below, with respect to evidence adduced and all
surrounding circumstances, to an indication of use in good 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;
(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 asserts that Complainant’s USPTO
registration explicitly limits Complainant’s use of the terms TERMINAL SUPPLY
to use in the context of the stylized drawing based on the disclaimer included
in the registration information which states that “no claim is made to the
exclusive right to use ‘TERMINAL SUPPLY CO.’ and ‘SINCE 1966’ apart from the mark
as shown.” In High-Class Distribs. S.r.l
v. Online Entm’t Servs., D2000-0100 (WIPO May 4, 2000), the Panel
found that the Complainant failed to meet the requirements of Policy ¶ 4(a)(i)
because the disclaimer in the complainant’s registration was evidence that the
words of the mark out of the context of the stylized form of the mark “would
generally be regarded as incapable of distinguishing by reason of
descriptiveness.”
Respondent contends that it registered the <terminalsupply.com>
domain name on August 29, 2000, thus seven months before Complainant’s mark
was published for opposition and more than ten months before the mark was
actually registered by the USPTO. In B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003), the Panel held that the purpose of the Policy
was to protect existing trademarks from potentially infringing confusingly
similar or identical domain names, and thus the Complainant’s registration and
rights should predate the Respondent’s registration of a domain name in order
for the complainant to have rights in a mark as contemplated by Policy ¶
4(a)(i).
Complainant’s rights in the TERMINAL SUPPLY
design mark (i.e. stylized drawing, see Annex A) were not yet established when
Respondent registered the <terminalsupply.com> domain name;
furthermore, because Complainant’s mark is a stylized image, the
disputed domain name composed only of words cannot be considered as identical
to Complainant’s mark.
Consequently, the Panel finds in favor of
Respondent on the first element.
Under the circumstances, having found against
the Complainant for the first element, there should be no need to examine the
other elements. However, the Panel deems acceptable in this case to examine the
two remaining elements.
As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Respondent asserts that it has rights in the
domain name in dispute, as it has, since the 1999 registration, continually,
and in good faith, used the domain name to refer internet users to its website,
where Respondent advertises and sells notably electrical terminals, which are,
according to Respondent, its number one product group. Respondent contends it
uses the disputed domain name <terminalsupply.com> because it is descriptive of Respondent’s
products and services, as it is a supplier of electrical terminals.
In Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) the Panel based its decision on its finding that while the complainant had rights to the registered, stylized version of LOVELY GIRL, “ownership of such a mark as a means of identifying the source of particular goods and services does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with their primary meaning in the English language.” Accordingly, the Panel finds that Respondent is using the disputed domain name in relation to its goods and services, in order to describe them, and consequently, finds that Respondent is using the disputed domain name for a bona fide offering of goods and services as contemplated by Policy ¶ 4(c)(i).
The Panel further notes that both
registrations of the trademark and the disputed domain name took place in 1999,
although seven (7) months apart, which can imply a certain tolerance on behalf
of the Complainant, who has waited close to seven (7) years to institute
proceedings, and confers certain rights and legitimate interest to the
Respondent.
In conclusion, on balance, the Panel finds that Complainant has not satisfactorily met its burden on the second element, and finds Respondent having rights and legitimate interests in the domain name in dispute.
It is most of the time quite difficult, if not
impossible, to actually show bad faith, at the time of registration and
use, with concrete evidence. While bad faith cannot be presumed, once
Complainant has presented some evidence pointing in that direction, it is then
incumbent upon Respondent to either respond or explain why its conduct should
not be assimilated to bad faith. The Panel’s understanding of the Policy is
that although the initial burden to prove Respondent’s bad faith in the
registration and the use of the disputed domain name relies squarely on the
shoulders of Complainant, such obligation is only to make out a prima facie
case, and once it has done so, it is then incumbent upon Respondent to either
justify or explain its business conduct (if not to demonstrate the contrary),
as stated in Old Sturbridge Inc. v S.C.I. Management Inc., FA 96461
(Nat. Arb. Forum Mar. 1, 2001), “The burden of proof is shifted to a
Respondent only when the complaint and supporting evidence demonstrate to the
Panel that Complainant is entitled to relief.” Failure to do so will, in some circumstances, enable the Panel to
draw a negative inference.
Respondent asserts that it
has never attempted to sell, rent or transfer the <terminalsupply.com>
domain name, further points out that it registered the disputed domain name
before Complainant’s registration of the TERMINAL SUPPLY mark, and thus could
not have registered the disputed domain name with the intention of selling it
to Complainant. The Panel finds that
even if the Complainant has tried to buy the disputed domain name out of
Respondent, the latter has decided to keep ownership of said domain, as it was
intended to help customers find its website, and that Complainant has failed to
show Respondent’s bad faith on this element.
Respondent alleges that it has not engaged in a pattern of registering domain names to prevent others from obtaining said domain names, as denying the request of one entity to transfer a single domain name does not form a pattern of registering domains in order to prevent others with valid and existing trademarks from obtaining the related domain name; in Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000), the panel found a pattern of preventing trademark holders from reflecting their marks in domain names where the respondent registered multiple domain names including the trademarks of others, which were unrelated to the respondent’s business. In the present case, the Panel find that registering one domain name, a fortiori before the mark was registered or even published for opposition, could not possibly constitute a pattern of registering domain names in bad faith.
Moreover, Respondent asserts that it registered the disputed domain name in good faith since it was not aware of Complainant’s trademark prior to registering the disputed domain name, because the disputed domain name was registered ten months before Complainant’s TEMRINAL SUPPLY mark was registered.
Respondent reiterated that it registered the disputed domain name before Complainant registered its mark, and having no knowledge, whether actual or constructive, of Complainant’s mark, and thus could not have registered the disputed domain name in order to disrupt Complainant’s business. In TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005), the Panel found that because the respondent’s domain name registration predated the complainant’s trademark filing date, “there was no bad faith on the part of Respondent when registering the subject domain name”. The Panel agrees with this decision, and find that there can not be bad faith when registration of the domain name is made prior to the registration of the trademark.
Finally, Respondent alleges that the disputed domain name does not create a likelihood of confusion as to the source, sponsorship or affiliation of the website as described by Policy ¶ 4(b)(iv) because the <terminalsupply.com> domain name is, on its face, given the industry, somewhat descriptive of a good, and not indicative of the source of a good, and that Respondent’s name is printed across each of its webpages. In view of this assertion, the Panel finds that there is no bad faith, as Respondent is not trying to mislead customers, clearly indicating that the source is the Respondent’s and not the Complainant’s, added to the fact that a major part of Respondent’s activities is to supply electrical terminals, rendering the domain name descriptive of goods and services, for a period now extending to close to seven (7) years.
In light of these conclusions, the Panel’s finds that, on
balance, Complainant has not met its initial burden in regards to the third
element, and that Respondent has succeeded in adequately rebutting it, as
the nature of its usage points out to use in good faith. The Panel finds that based on the totality of circumstances and
evidence submitted, Respondent’s registration and use of the disputed domain
name is not indicative of bad faith under ICANN Policy ¶ 4(a)(iii).
DECISION
Complainant having failed to establish all
three elements required under the ICANN Policy, the Panel concludes that
administrative relief shall be DENIED.
Accordingly, it is ordered that the <terminalsupply.com>
domain name remains under the ownership of Respondent.
Jacques A. Léger, Q.C.,
Panelist
Dated: August 24, 2006
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