National Arbitration Forum

 

DECISION

 

Election Systems & Software, Inc. v. Andrew Stewart a/k/a Andy Stewart

Claim Number: FA0609000805224

 

PARTIES

Complainant is Election Systems & Software, Inc. (“Complainant”), represented by Mark C. Young, of Stinson Morrison Hecker LLP, 1201 Walnut Street, Kansas City, MO 64106.  Respondent is Andrew Stewart a/k/a Andy Stewart (“Respondent”), represented by Thomas S. Stewart 14512 Polk Circle, Omaha, NE 68137.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <secrecysleeve.com> and <secrecysleeves.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned Daniel B. Banks, Jr., 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2006.

 

On September 27, 2006, Melbourne It, Ltd d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <secrecysleeve.com> and <secrecysleeves.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 24, 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@secrecysleeve.com and postmaster@secrecysleeves.com by e-mail.

 

A timely Response was received and determined to be complete on October 24, 2006.

 

On November 1, 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 names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a full-service provider of products and services related to voting and elections.  It provides total election management solutions, including preparation of ballots and voter registration materials, equipment for casting and/or marking a ballot, and equipment for tabulation, reporting, and validation of ballots and votes.  Complainant’s services and equipment have been employed in more than 30,000 separate elections over the past decade.  Since at least as early as December, 2000, Complainant has been continuously engaged in providing ballot and voting related goods and services to various local, county and state government election authorities.  In particular, Complainant has provided a privacy envelope for protecting a paper ballot from view by others under its SECRECY SLEEVE mark.  Complainant has used and intends to continue to use its SECRECY SLEEVE mark in conjunction with its privacy envelopes.  Complainant has developed a reputation for providing high quality goods and services, including the privacy envelopes offered under its SECRECY SLEEVE mark.  Complainant’s continuous use and promotion of its SECRECY SLEEVE mark since December, 2000, establish strong common-law trademark rights in the distinctive mark.  Since December, 2000, complainant has sold in excess of sixty-five thousand units of privacy envelopes under its SECRECY SLEEVE mark, with total revenues of approximately $105,000.  The SECRECY SLEEVE mark has acquired distinctiveness and secondary meaning such that it is strongly associated in consumer’s minds with the ballot privacy envelopes offered by Complainant.

 

Respondent’s registered domain names are identical and confusingly similar to complainant’s mark.  Respondent has no rights or legitimate interest in the domain names.  The disputed domain names at issue both resolve to the <secrecysleeves.com> Website.  The home page of that Website displays privacy envelope products offered by a company called “EMI” in direct competition with the products offered by Complainant.  It also uses Complainant’s SECRECEY SLEEVE mark in conjunction with its product offerings.  The main photo on the site is a picture of a privacy envelope being used with Complainant’s Model M-100 precinct count ballot tabulator and includes a photo of an employee of Complainant.  The “About” page of the Website names individuals Tom Stewart and Doug Stewart as officers of EMI and, based on information and belief, are related to Respondent Andrew Stewart aka Andy Stewart.  Also, Respondent is listed as a Director of the newly formed corporation “EMI”.  

 

Respondent is an individual formerly employed by and formerly engaged as an independent contractor by Complainant to provide training to customers of Complainant.  In that capacity, Respondent has access to Complainant’s confidential and trade secret information, including information related to Complainant’s SECRECY SLEEVE privacy envelope product.  There is no indication that Respondent or his newly formed corporation have ever been commonly known by the disputed domain names and there is no indication that Respondent has any rights in said names.  It is clear that Respondent is simply trading upon the name recognition and goodwill established by Complainant. 

 

Respondent has registered and is using the domain names in bad faith.  At various times since approximately August, 2002 and continuing through April, 2006, Respondent has been engaged by Complainant as an independent contractor to provide training to Complainant’s customers.  On December19, 2005, Respondent registered the secrecysleeves.com domain name.  On January 9, 2006, Respondent was again retained by Complaint as an independent contractor.  Two days later, Respondent registered the <secrecysleeve.com> domain name.  Shortly thereafter, Articles of Incorporation naming Respondent as a Director of Elections Mall, Inc. (“EMI”) were filed with the Nebraska Secretary of State.  Through the Website, Respondent and his EMI corporation offer ballot privacy envelope products in direct competition with Complainant’s SECRECY SLEEVE product.  The record indicates that the Respondent’s actions and intent were primarily for the purpose of disrupting the business of Complainant.  Also, it is intended to attract customers to Respondent’s Website for commercial purposes and is likely to confuse consumers as to the source of the products offered in a manner that creates confusion as to sponsorship or endorsement of Respondent’s products by Complainant. 

 

B. Respondent

While Respondent acknowledges Complainant’s reputation and position in the marketplace, the SECRECY SLEEVE mark Complainant purports to have rights in is, in fact, a generic term used throughout the industry to denote a folder or envelope used by a voter to conceal his/her voted ballot as it is transferred from the voting booth to the vote tabulator.  The folders or envelopes can take many various forms and are offered by numerous vendors across the country.  The 2005 Iowa HAVA Voting Systems Master Contract Pricing List consisted of five different Vendor Cost Proposals.  Only one of the five vendors included secrecy sleeves in their quote and it was not the Complainant.  In addition, a search of Complainant’s website on April 23, 2006, did not reveal their secrecy sleeve product but a few days later, another search revealed that their secrecy sleeve product had been added to the site.  A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses.  Therefore, it cannot be afforded any legal protection. 

 

Respondent purchased the domain names in question on behalf of Elections Mall, Inc.  EMI’s secrecy sleeve products have been marketed since the inception of the website and the company has enjoyed modest success with sales in eleven different states to over 40 voting jurisdictions.  We are known in the industry by our customers as <secrecysleeves.com> and our products prominently display our website logo.  EMI does not plan to try to register the SECRECY SLEEVE mark with the USPTO because it is a generic term used in the election industry as indicated above. 

 

Respondent registered the domain names for the sole purpose of marketing its secrecy sleeve products and any other election supplies it decides to add to its product line.  The website contains pictures of the products and picture of the secrecy sleeve in use by an employee of a voting jurisdiction in Michigan.  It also includes a disclaimer to advise visitors of our non-affiliation with any other company in the industry.

 

Complainant has demonstrated no particular interest in the secrecy sleeve product or the SECRECY SLEEVE mark until the advent of EMI and its secrecy sleeve product.  Complainant’s only interest here is to prevent entry into the marketplace of any products that are clearly superior to their own. 

 

FINDINGS

1 – Complainant has not established common law rights in the SECRECRY SLEEVE mark.

2 – Respondent has demonstrated legitimate rights in the disputed domain names.

3 – The disputed domain names were not registered 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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant has not established common law rights in the SECRECY SLEEVE mark.   SECRECY SLEEVE is a generic descriptive term used in election circles to describe a wide variety of ballot privacy envelopes.  Complainant has provided no evidence that secondary meaning has been established in relation to the SECRECY SLEEVE mark.  The Panel finds that Complainant does not have rights in the SECRECY SLEEVE mark as required pursuant to Policy ¶ 4(a)(i).  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 Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Advanced Relational Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO Oct. 13, 2003) (finding that the complainant failed to establish rights in the HOME DESIGNER mark because it was “certainly descriptive and probably generic” and the complainant had not shown that the public identified its goods with the mark).

 

Rights or Legitimate Interests

 

Respondent is using the disputed domain names in connection with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i).  Respondent asserts that it registered the disputed domain names for the sole purpose of marketing election related products, including secrecy sleeves.  Respondent states that it has had significant sales in 11 states and that its business is continuing to grow.  The panel finds that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), thus establishing rights or legitimate interests.  See Bharatplanet.com Ltd v. Adnet Solutions, AF-0290 (eResolution Sept. 18, 2000) (finding that the respondent’s active use of the <bharathmail.com> domain name and pending expansion plans was evidence that the respondent had legitimate interests in the contested domain name and was not using it in bad faith); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name).

 

Registration and Use in Bad Faith

 

Respondent contends that it selected the disputed domain names in good faith because the terms of the disputed domain names reflect one of the many types of election related products available from Respondent.  Respondent further argues that the disputed domain names are composed of generic descriptive terms and thus cannot be considered to have been registered with the intent to disrupt Complainant’s business.  Respondent is merely attempting, in good faith, to operate its own, legitimate business.  The Panel finds that Respondent is not evidencing bad faith pursuant to Policy ¶ 4(b)(iii).  See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute.”); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

 

Respondent asserts that because the terms composing the disputed domain names are generic and descriptive they do not confuse Internet users as to the source or affiliation of Respondent’s website.  Further, Respondent argues that it clearly notes on its website that it is the sponsor of the website.  The Panel finds that Respondent did not register and is not using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also 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).”).

 

 

 

DECISION

Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Daniel B. Banks, Jr., Panelist
Dated: November 14, 2006