The Exit Light Co., Inc. v.
N/A c/o Gary Glass
Claim Number: FA0611000849010
PARTIES
Complainant is The Exit Light Co., Inc. (“Complainant”). Respondent is N/A c/o Gary Glass (“Respondent”), represented by Mina
I. Hamilton, of Lewis Brisbois Bisgaard & Smith LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theexitstore.com>, registered with Tucows Inc.
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.
The Honorable Patrick C. Guillot (ret.) as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 21, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 21, 2006.
On November 21, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <theexitstore.com> domain name is
registered with Tucows Inc. and that the
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 November 27, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 18, 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@theexitstore.com by
e-mail.
A timely Response was received and determined to be complete on December 18, 2006.
On December 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honorable Patrick C. Guillot (ret.) as Panelist.
On January 25, 2007, after this Decision
originally issued, the National Arbitration Forum received correspondance from
Complainant indicating that it had attempted to submit a late Additional
Submission on January 8, 2007 which was not received by the Forum. Complainant also did not send the required
payment for the Additional Submission.
The Forum forwarded the Additional Submission to the Panel who reviewed
it in its discretion. The Panel found
that the content of the Additional Submission did not change its previously
issued Decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it has a trademark in
the name “The Exit Light
Complainant states that the domain name and
logo are confusingly similar to its registered trademark, “The Exit Light
Based on the foregoing the Complainant states
that it should be granted the relief it is seeking.
B. Respondent
Respondent states that
the domain name at issue, <theexitstore.com>, is not identical to
or confusingly similar to any trademark or service mark in which the
Complainant has rights; that the Respondent has a legitimate interest in the
domain name; and that the complaint is simply an attempt by Complainant to simply
“reverse domain name hijack” the rights and privileges belonging to Respondent.
Respondent further
argues that there is no right in the Complainant to use the words “exit” or
“exit light” as they are simply descriptive or generic. It further points out that Complainant
concedes there is no evidence of the Respondent trying to sell the domain name
or engaging in a pattern of selling domain names. Respondent argues that Complainant is the one
who has registered and is using the similar domain name in bad faith which is
identical to Respondent’s trademark, EXIT STORE. Respondent points out that there is evidence
that the Complainant, in a primary attempt to disrupt Respondent’s business and
to attract for commercial gain Internet users to its own website, created a
likelihood of confusing the domain name <theexitstore.com> to
Complainant’s website at <ExitLightCo.com>.
Finally, Respondent
points out that Complainant does sell the same category of products as the
Respondent, but Complainant emphasizes it services associated with exit signs
and emergency lighting systems, such as repair, installation, and documentation
services, as opposed to the sale of the products themselves.
FINDINGS
The
Panel finds that The Exit Light Co., Inc., has failed to meet its burden of
proof for under ¶ 4(a)(i) of the ICANN Policy because
the domain name at issue is not identical or confusingly similar to any
trademark or service mark in which the Complainant has rights.
The
Panel further finds that there is a complete absence of any bad faith on the
part of Respondent, and the facts of this Arbitration warrant a finding of
“reverse domain name hijacking” and so enter such finding against the
Complainant. The Panel finds that Complainant
acted with recklessness or knowing disregard of the likelihood that the
Respondent possessed legitimate interests in the name; that Complainant
instituted the proceeding without having any real prospect of success and that
to hold otherwise would jeopardize and infringe upon the uninhibited
competition in the sale of particular goods and services.
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 asserts rights in THE EXIT LIGHT
Complainant further contends that Respondent’s <theexitstore.com> domain name is confusingly similar to
Complainant’s THE EXIT LIGHT CO. mark.
However, Respondent’s domain name is made up entirely of the generic
terms “the exit store.” The Panel finds
that, in light of Respondent’s use of a domain name comprised of common terms
along with the need for language economy when choosing a domain name,
Respondent’s <theexitstore.com> domain name is not confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb.
Forum Feb. 18, 2002) (“[I]n light of the common use of the words ‘nations’
and ‘banking,’ this Panel fails to see
how there is a likelihood of confusion between NATIONSBANK and
<nationsbanking.com>.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147
(9th Cir. 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers are aware that
domain names for different Web sites are quite often similar, because of the
need for language economy, and that very small differences matter.").
Because Complainant has failed to meet its burden under Policy ¶ 4(a)(i), the Panel declines to consider the remaining elements in ¶¶ 4(a)(ii) and 4(a)(iii). See Staten Island Bancorp, Inc. v. Ifg Inc., D2003-0384 (WIPO June 20, 2003) ("[T]he Panel finds that Complainants have not met their burden of proof under Paragraph 4(a)(i) of the Policy... given its findings on the trademark issue, the Panel does not comment further on the strengths and weaknesses of the Respondent’s position with regard to its alleged legitimate interests . . . or . . . bad faith . . . ."); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
DECISION
Complainant has failed to establish all three elements required under
the ICANN Policy, and the Panel concludes that relief shall be DENIED. The Panel also finds that Complainant has
engaged in “reverse domain name hijacking” and that the claim filed against
Respondent is frivolous.
The Honorable Patrick C. Guillot (ret.),
Panelist
Dated: February 1, 2007
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