Towmaster, Inc. v. Dale Hale
Claim Number: FA0704000973506
PARTIES
Complainant is Towmaster, Inc. (“Complainant”), represented by Kyle
T. Peterson, 4800 IDS Center, 80 South 8th Street, Minneapolis, MN 55427. Respondent is Dale Hale (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigtow.com>, registered with Stargate
Holdings Corp.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 30, 2007.
On April 30, 2007, Stargate Holdings Corp. confirmed by e-mail to
the National Arbitration Forum that the <bigtow.com> domain name is registered
with Stargate Holdings Corp. and that the
Respondent is the current registrant of the name. Stargate
Holdings Corp. has verified that Respondent is bound by the Stargate Holdings Corp. 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 1, 2007, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 21, 2007 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@bigtow.com by e-mail.
A timely Response was received and determined to be complete on May 14, 2007.
On May 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Towmaster, Inc.
(“Towmaster”) employs more than 100 skilled workers at its headquarters in
Towmaster began selling trailers under its BIG TOW trademark in March 2000. It filed a federal trademark application for the BIG TOW mark on March 28, 2000. In accordance with the Trademark Act of 1946, 15 U.S.C. §1051-1127, the mark BIG TOW became registered as a Trademark, Registration No. 2,467,634, dated July 10, 2001. Towmaster is the owner of such registration, and of all rights in and to this mark and of its business and goodwill.
Respondent, Dale Hale, registered the domain name <bigtow.com> on June 21st, 2001. Respondent’s website resolving from the <bigtow.com> domain name offers the disputed domain name for sale for $5000 – with referral information to purchase the domain name.
Complainant’s rights in the BIG TOW trademark are demonstrated by its U.S. Trademark 2,467,634 and continuous use of the BIG TOW mark since March 2000. Complainant has also extensively advertised its BIG TOW mark for its quality trailer products.
The domain name <bigtow.com> is confusingly similar to the BIG TOW trademark in which Complainant has rights. The disputed domain name incorporates the entire BIG TOW mark and merely adds the generic top-level domain (“gTLD”) “.com>.”
Respondent has no rights or legitimate interests with respect to the domain name <bigtow.com>. Respondent has not been commonly known by the disputed domain name, and it has not acquired trademark or service mark rights therein. Respondent is making a non-legitimate, commercial or unfair use of the disputed domain name, with intent for commercial gain. Further, he is misleadingly diverting consumers to the web page offering the disputed domain name for sale. ICANN Policy ¶ 4(c)(i)-(iii).
Since March 2000, Complainant has been marketing its products using its BIG TOW mark. Over a year after March 2000, Respondent registered the domain name <bigtow.com>. The only web page that Respondent posted on the Internet resolving from the <bigtow.com> domain name was an announcement offering the disputed domain name for sale.
By using the disputed domain name in this fashion, Mr. Hale has intentionally attempted to attract, for commercial gain, Internet users to his web page by creating confusion with the Complainant’s BIG TOW mark
B. Respondent
Respondent bought the <bigtow.com> domain name registration on June 21, 2001, for a friend who was going into a heavy equipment towing business, and decided to keep the name for resale, when he was not going to use it. Respondent did not know that Complainant would be getting that trademark in the future. In this case there was no registration in bad faith…with the time element being critical.
Respondent did not buy the name to
specifically sell to Complainant. When one
googles “Big Tow,” one gets over 1,760,000 results with thousands of companies
using “Big Tow” in their company name.
Respondent never heard of Towmaster,
Inc. until it contacted him last year.
All Respondent was interested in was a customer to buy his product at a
fair market price.
The facts clearly show that Respondent is the owner of the <bigtow.com> domain name and owned it before Complainant ever had the trademark.
Complainant does not have the right to try to take control of the domain name <bigtow.com> when it knows that Respondent owned the name first (for the last six years) and NEVER interfered with any of its sales or even monetized it
FINDINGS
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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
BIG TOW mark through its trademark registration with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,467,634 issued July 10, 2001). The Panel finds that Complainant’s timely registration with
the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); 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.”).
Respondent contends that his rights in the BIG TOW mark predate Complainant’s because Respondent registered the <bigtow.com> domain name on June 21, 2001 and Complainant’s trademark registration was not granted until July 10, 2001. However, previous panels have held that rights to a mark date back to the USPTO trademark application filing date. Since Complainant filed the USPTO trademark application for the BIG TOW mark on March 28, 2000 (which is also when Complainant began using the BIG TOW mark in commerce to advertise its products), the Panel finds that Complainant’s rights in the BIG TOW mark date back to March 28, 2000 and therefore predate Respondent’s rights in the mark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration.”).
The panel finds that Respondent’s <bigtow.com> domain name is identical to Complainant’s BIG TOW mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum March 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Respondent is
not commonly known by the <bigtow.com>
domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information
identifies Respondent as “Dale
Hale,” and there is no other evidence in the record indicating that Respondent
is commonly known by the disputed domain name.
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent has never made any use of the <bigtow.com> domain name other than to advertise that the disputed domain name is for sale. Respondent also offered to sell the disputed domain name directly to Complainant. The Panel therefore finds that Respondent is not using the <bigtow.com> domain name for a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent is advertising the <bigtow.com> domain name for sale for
$5,000. Furthermore, Respondent offered
to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the
disputed domain name constitute bad faith registration and use pursuant to
Policy ¶ 4(b)(i). See Neiman Marcus Grp., Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”).
Reverse Domain Name Hijacking
Respondent has alleged that
Complainant has engaged in reverse domain name hijacking through the filing of
the present Complaint. Respondent
contends that Complainant knew or should have known it could not satisfy either
or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii). The Panel finds that such an allegation is
without merit and that Complainant’s filing of the present Complaint was based
on a good-faith belief in its rights to the <bigtow.com> domain name through
registration of the BIG TOW mark with the USPTO, and as such, Complainant’s
filing is not an abuse of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigtow.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 4, 2007
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