DECISION

Elder Manufacturing Company, Inc. v. Jeff Recker

Claim Number: FA0107000098414

 

PARTIES

The Complainant is Elder Manufacturing Co., Inc., St. Louis, MO, USA (“Complainant”) represented by Randy L. Canis, of Greensfelder, Hemker & Gale, P.C..  The Respondent is Jeff Recker, Montgomery, OH, USA (“Respondent”) represented by Keith W. Johnson of Taft, Stettinus & Hollister, LLP.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are "Elderwear.com" and “Elderwearhouse.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.

 

Honorable Anthony J. Mercorella (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”)

on July 27, 2001.

 

Network Solutions, Inc. confirmed to the Forum that the domain name "Elderwear.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  It was further confirmed that, the domain name “Elderwearhouse.com” was previously registered with Network Solutions, Inc. and that Respondent was the registrant of that 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 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2001, 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.

 

A timely response was received and determined to be complete on August 20, 2001.

 

On August 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Anthony J. Mercorella (Ret.) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The subjects of this complaint are the domain names <Elderwear.com> and <Elderwearhouse.com>.

 

The Complainant contends that the domain names at issue here, <Elderwear.com> and <Elderwearhouse.com>, are confusingly similar to Elder Manufacturing Co. Inc.’s (hereinafter “Elder”) ELDERWEAR and  ELDERWEAR WE CARE marks.  The domain names incorporate the distinctive portions of Elder’s word and design marks “Elderwear” and adds only the generic terms “.com” to the first mark and “house” to the second.  Moreover, the Complainant argues that since design marks cannot be reproduced in a domain name, it is appropriate to consider only the similarity of the dominant textual element of the marks to the disputed domain name.

 

The Complainant further contends that the Respondent in this case, Jeff Recker, cannot generate any legitimate interest in the <Elderwear.com> and <Elderwearhouse.com> domain names, and that he is not making a legitimate commercial or non-commercial use of the <Elderwear.com> and <Elderwearhouse.com> domain names.  The Respondent has not made a substantive use of the <Elderwear.com> and <Elderwearhouse.com> domain names since first registering the name on July 29, 1998.  Since that date no site was hosted by either domain name.

 

According to the Complainant, the Respondent stated that if he received a “charitable donation” he would sell the domain name registrations to the Complainant.  The Respondent refused to transfer the domain name unless he received said “charitable donation” which would be in excess of his out-of-pocket expenses.  Under ICANN policy, paragraph 4(b)(i), a Respondent’s bad faith registration and use of a domain name may be demonstrated by “circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark. . . for valuable consideration in excess of the Respondent’s documented out-of-pocket costs related to the domain name.”

 

It is further contended that the Respondent’s registration and passive possession of the <Elderwear.com> and <Elderwearhouse.com> domain names and his offers to sell the domain names to Elder (by requesting a charitable donation) constitute bad faith.

 

B. Respondent

The Respondent argues that the similarity of the marks is but one factor in determining the likelihood of confusion.  It is contended that there is no likelihood of confusion between the goods provided by Elder under its federally registered marks and the goods proposed to be provided under Respondent’s names because clothing for the elderly is dissimilar from school uniforms.  Moreover, Respondent claims that there would be no confusion since the goods would be marketed in separate channels of trade.

 

In addition, Respondent claims that although he intended to put his clothing line for the elderly into effect, he became sidetracked by another project.  Thus, he argues that he is not passively holding the domain names.  Respondent alleges that his attempt to obtain a “charitable contribution” in exchange for the transfer of the registration of the domain names to Elder does not constitute bad faith since Elder would have to prove that the domain names at issue were registered specifically for sale.  Finally, Respondent claims he did not act in bad faith because he did not register the domain names to disrupt the business of a competitor.

FINDINGS

 

It is my finding that the domain names registered by the Respondent are confusingly similar to the trademarks held by the Complainant, that the Respondent has no legitimate interest with respect to the domain names and that the domain names have been registered and used in bad faith.

 

Accordingly, the Complainant’s request to have the domain names, <Elderwear.com> and <Elderwearhouse.com>, transferred from the Respondent to the Complainant is granted.

 

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

The Complainant holds trademark registrations for the ELDERWEAR and ELDERWEAR WE CARE marks, while the Respondent has registered <Elderwear.com> and <Elderwearhouse.com>.  The fact that the Respondent has inserted the words “.com” and “house” respectively to Complainant’s marks is not sufficient to avoid a finding that the two marks are confusingly similar.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

 

Respondent’s reliance upon In re dupont de Numours & Co., 476 F.2d 1357 (CCPA 1973) is misplaced.  The focus of the inquiry here is properly placed upon the similarity of the marks <Elderwear.com> and <Elderwearhouse.com>.  In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks.  Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.  Here the addition of a generic words to established trademarks does not defeat Elder’s rights in the marks. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000); Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug.24, 2000); Travel In a Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001); Cable News Network LP, LLLP v. Money Funding, FA 96818 (Nat. Arb. Forum Apr. 16, 2001).

 

Rights or Legitimate Interests

In this matter, the Respondent has passively held the domain names <Elderwear.com> and <Elderwearhouse.com>.  Prior to the initiation of this dispute, the Respondent was not using the domain names in connection with a bonafide offering of goods and services or making a fair, non-commercial use of the domain name <Elderwear.com> and <Elderwearhouse.com>. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).  Respondent cannot simply claim a legitimate use of the <Elderwear.com> domain name by showing that it had conceived of a single product over three years ago, but never took any action to market that product.  Rather, he must demonstrate that he made actual preparations to use the particular domain name or a name corresponding to the domain name. See Gorstew Limited and Unique Vacations, Inc. v. SSB Trading Company, Inc., FA 96972 (Nat. Arb. Forum May 8, 2001); Wellness International Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (when respondent had not used the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use there is no right or legitimate interest in the domain name).

 

The fact that Respondent was allegedly “sidetracked” from actually using the domain names at issue by another project is not a valid defense to his passive holding of the domain names.  Finally, the fact the Respondent chose a domain name that may be somewhat descriptive of the type of business he someday intends to pursue does not in and of itself create a legitimate interest.

 

Registration and Use in Bad Faith

The Respondent has made no formal use of the domain name <Elderwear.com> and <Elderwearhouse.com>.  As far as the record reveals, to date the only purpose served through the Respondent’s registration of these domain names has been to allow the Respondent to attempt to obtain a “charitable donation” in excess of his out-of-pocket expenses from the Complainant. See VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it “for far more than he paid for it” by sending a general email to the Complainant offering the domain name for sale); Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).  See Travel In a Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001) (demand for payment deemed evidence of bad faith where respondent has made no other use of domain name); Stussy, Inc. v. Valhalla Promotions aka VP, FA 96661 (Nat. Arb. Forum April 2, 2001) (Respondent’s attempt to sell domain name to complainant for excess of out-of-pocket expenses shows bad faith on part of Respondent).

 

In addition, Respondent has not disputed that at the time he re-registered the <Elderwear.com> domain name he had actual knowledge of Elder’s trademarks.  Such knowledge is a clear indicia of bad faith. See Fingerhut Corporation v. Joseph Flynn, FA 96939 (Nat. Arb. Forum Apr. 18, 2001); Ambisco, Inc. v. Tradewear Corp., FA 96820 (Nat. Arb. Forum Apr. 18, 2001) (registering a domain name with actual notice of complainant’s business, which offers similar goods and services, shows bad faith).

 

Considering the totality of the aforementioned facts and circumstances, Respondent has acted in bad faith and it appears that he has no intention to use the domain name except for the purposes of obtaining a financial windfall. 

 

DECISION

It is the decision of this panel that the domain names <Elderwear.com> and <Elderwearhouse.com> be transferred from the Respondent to the Complainant.

 

 

Honorable Anthony J. Mercorella (Ret.), Panelist

 

Dated:    September 10, 2001