National Arbitration Forum

 

DECISION

 

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, 221 N. Figueroa Street, Suite 1200, Los Angeles, CA 90012.

 

 

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 Co.” by way of Service Mark.  Complainant states that it began servicing and selling emergency lighting and exit signs April 4, 2000 and began using <ExitLightCo.com> as the company website April 2001.  Complainant states that The Exit Store LLC began E-commerce of emergency lighting and exit signs on February 2, 2006 and began the use on or about that date of the website domain name <theexitstore.com>.

 

Complainant states that the domain name and logo are confusingly similar to its registered trademark, “The Exit Light Co.”, which was registered on the Supplemental Register after having been originally denied by the United States Patent and Trademark Office.  Complainant further states that it has received telephone calls from customers confused about the two websites.  It also claims that, at recent trade shows, emergency lighting vendors told the Complainant that they had already talked with Complainant when, in fact, they had talked to representatives of The Exit Store LLC.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in THE EXIT LIGHT CO. mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,530,977 issued January 15, 2002) for use in connection with the sale of “ exit lights.”  As Complainant’s mark has been registered with the USPTO for a period of five years, THE EXIT LIGHT CO. mark has become incontestable under 15 U.S.C. 1065 of the United States Federal Code.  Such evidence is sufficient to establish rights in Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

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.").

 

Rights or Legitimate Interests; Registration and Use in Bad Faith

 

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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