Butler Manufacturing Company v. Ties.ca National Online Inc.
Claim Number: FA0204000110808
Complainant is Butler Manufacturing Company, Kansas City, MO, USA (“Complainant”) represented by David V. Clark, of Lathrop & Gage L.C. Respondent is Ties.ca National Online Inc., Brampton, ON, Canada (“Respondent”).
The domain name at issue is <butler.biz>, registered with Parava Networks, Inc.
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.
P. Jay Hines as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 24, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 16, 2002.
On June 3, 2002, pursuant to STOP Rule 6(b), the Forum appointed P. Jay Hines as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant claims ownership of numerous trademark and service mark registrations, in the United States and abroad, for the mark BUTLER. Complainant identifies, in particular, U.S. Registration No. 560,737 for the word mark BUTLER in connection with metal bins and tanks for the storage of grain, ventilated metal tanks for drying of grain, metal silos and corn cribs, stationary and portable metal tanks for liquids, metal barrels and drums. Registration No. 560,737 registered on July 1, 1952, claiming use in commerce since May 1, 1930. Complainant also identified U.S. Registration No. 528,706 for the word mark BUTLER in connection with fabricated metal buildings, hangars, header houses, walkways, and parts thereof, waterwell casings, and preformed metal panels for buildings and signs. Registration No. 528,706 registered on August 8, 1950 again with a claim of use in commerce as of May 1, 1930. Complainant also provides printouts from the U.S. Patent and Trademark Office database regarding 15 additional active U.S. registrations for trademarks and service marks comprised, in whole or in part, the term “BUTLER” for goods and services related to the building construction industry.
Complainant asserts that it conducted an investigation of Respondent and found no U.S. or Canadian trademark or service mark filings, no information indicating that Respondent has begun to use or made demonstrable preparations to use the <butler.biz> domain name, and no evidence indicating that Respondent has ever been commonly known by the name BUTLER. For these reasons, Complainant asserts that Respondent must be considered as having no rights or legitimate interest in or to the <butler.biz> domain name.
With respect to bad faith, Complainant alleges that Respondent had to be aware of Complainant’s well-known BUTLER mark in connection with fabricated metal buildings, silos, grain bins, tanks and other metal structures at the time Respondent sought to register the <butler.biz> domain name. Complainant again points to the absence of any evidence that Respondent has used the <butler.biz> domain name in connection with the bona fide offering of goods or services or is in any way associated with the domain name or any “butler” derivative name. Complainant relies on Fiat Auto S.p.A. v. Search Hound, DBIZ2001-00023 (WIPO Feb. 12, 2002).
Respondent claims that its intended use of the <butler.biz> domain name does not in any way infringe upon the Complainant’s registered marks. Respondent’s intended use is in connection with “ties, men’s apparel, fashion, formal wear, event planning, event organizing, party planning, party organizing, travel planning, social etiquette, and formal entertaining.” Respondent contends that the word “butler” is a generic dictionary term meaning “the head servant in a household who is usually in charge of food service, the care of silverware, and the deportment of the other servants.” Respondent identifies the typical duties of a butler, from the web site of “The International Guild of Professional Butlers,” as “assisting with formal affairs, understanding social etiquette, formal service, planning, and organizing parties and events in the home, serving as a personal valet, assisting the household, and assisting the gentlemen of the house.” Respondent alleges that its proposed use will be in a field directly associated with the commonly understood meaning of the word “butler.” Accordingly, Respondent has not sought to register a trademark or a service mark for the word “BUTLER” on the belief that the same would be rejected as being clearly descriptive.
Respondent asserts that Complainant’s registrations and use of the term “butler” in connection with fabricated metal buildings and other goods does not afford exclusive use of the generic term for unrelated goods and services.
With respect to legitimate rights and interests, Respondent claims that long before any notice of the dispute it made significant investment in connection with a bona fide offering of goods and services in a targeted field related to the domain name. Respondent was federally incorporated in Canada on January 27, 2000, provincially incorporated on June 27, 2000, applied for and obtained Canada Customs and Revenue business and goods and services tax registration numbers, and applied for and registered <butler.biz> as a business name with the Ontario government for the sale of goods and services related to “online retailer of fashion apparel; clothing, men’s ties, men’s fashion, formal wear, event planning.” Respondent provides documentation for these activities. The registration of the <BUTLER.BIZ> domain name as an assumed name in Ontario occurred on May 13, 2002, after the notification of the complaint and commencement of the administrative proceeding, according to Respondent, on the very first business day possible after issuance of the domain name on March 27, 2002 due to a strike by the Ontario Public Service Employee’s Union, which began on March 12, 2002. In this regard, Respondent provides a “notice of strike” posting on the Ontario Government web site.
Respondent also points to its letterhead which bears a logo of “two penguins wearing ties” as evoking a connection to, and demonstrating the planned tie-in, to the image of a “butler.”
Respondent asserts that it registered the <butler.biz> domain name in good faith as part of its overall marketing plan. Respondent has not offered the domain name for sale to any party. Respondent first became aware of the Complainant when it received the notification of Complainant’s I.P. claim. The parties are not competitors and Respondent registered the domain name for its own use, not to prevent Complainant’s use. Respondent asserts that there is no possibility of confusion due to the complete dissimilarity of the respective goods and services.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
The Panel finds that Complainant has rights in a mark that it is identical to the subject domain name.
While it is somewhat difficult to bridge the gap between Respondent’s use of the tradename Ties.Ca National Online Inc. in connection with men’s fashion and event planning and its proposed use of the domain name <butler.biz>, the Panel finds a legitimate tie-in with the dictionary term “butler” and sufficient circumstantial evidence of activities associated therewith that began prior to notification of the dispute. The term “butler” is a generic term. However, it is not generic for the activities of either the Complainant or the Respondent. The Panel does not believe that the term “butler” is immediately descriptive of the identified activities of the Respondent. Nonetheless, it is a dictionary term that is suggestive of some of those goods and services. As many of those activities were underway before notification of the dispute and, as pointed out in the case relied upon by the Complainant, in a STOP proceeding there often will not have been time for Respondent to use the domain name in issue, the Panel believes that there has been a sufficient showing of demonstrable preparation to use the domain name for a bona fide offering of goods or services under STOP Policy 4(c)(ii). The Fiat Auto case was a default situation where there was, of course, no evidence of any preparations to use the domain name. The situation here is likewise distinguishable from Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27. 2002), where the Respondent made “unsupported, self-serving allegations” regarding her legitimate interests without any evidentiary support.
The record supports the conclusion that Respondent adopted and made preparations to use the domain name <butler.biz> in connection with its online retail sale of men’s clothing. While Respondent’s evidence with respect to social etiquette and event planning, which arguably are more in line with the ordinary dictionary meaning of the term “butler,” may be weak, there is a plausible connection between the image of a neat and tidy “butler” to the sale of men’s clothing. The situation is more in line with Zero Int’l Holding GmbH v. Beyonet Services, D2000-0161 (WIPO May 12, 2000), where the Respondent registered the domain name <zero.com> because it was short, simple and easy to remember, had not registered any other domain names, and had never heard of the Complainant at the time of registration. This is not a case in which the Respondent selected a domain name incorporating a famous or distinctive mark that it should have known it was not entitled to use. See CRS Tech. v. Condenet, Inc., FA93547 (Nat. Arb. Forum Mar. 28, 2000) where the Respondent’s domain name <concierge.com> was used in relation to providing online travel services. The domain name is meant to communicate some aspect of the goods or services provided, i.e., the kind of assistance one would expect from a “butler.” It is the positive image associated with the word that attracted Respondent to the domain name, not a desire to cause confusion with Complainant’s trademark rights. In these circumstances, the first to register a domain name containing a suggestive dictionary term should prevail absent bad faith and a lack of legitimate interest.
As the Panel finds that Respondent has rights or legitimate interests, it is not necessary to reach the issue of bad faith. However, despite the notoriety of Complainant’s name and mark in its field, Complainant has not established any of the enumerated factors of bad faith on the part of this Respondent.
As Respondent has a legitimate interests in the domain name <butler.biz>, Complainant’s Complaint is dismissed and the Panel determines that subsequent challenges, as against the Respondent, under the STOP policy, shall not be permitted against this domain name.
P. Jay Hines, Panelist
Dated: June 13, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page