Camco Manufacturing, Inc. v. CheapYellowPages.com and Brian Wick
Claim Number: FA1102001370745
Complainant is Camco Manufacturing, Inc. (“Complainant”), represented by Martha R. Sacrinty of Tuggle, Duggins & Meschan, P.A., North Carolina, USA. Respondent is CheapYellowPages.com and Brian Wick (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <camco.com>, registered with Name.com LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Professor David E. Sorkin, Debrett Lyons and David P. Miranda, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2011; the National Arbitration Forum received payment on February 2, 2011.
On February 2, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <camco.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on February 3, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via 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 February 24, 2011.
Complainant submitted a timely Additional Submission on February 28, 2011, in compliance with Forum Supplemental Rule 7.
On March 3, 2011, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Professor David E. Sorkin, Debrett Lyons and David P. Miranda, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Camco Manufacturing, Inc. (“Complainant”) submitted a Complaint and Amended Complaint seeking transfer of the domain name <camco.com>, from Respondent CheapYellowPages.com and Brian Wick (“Respondent”). Complainant contends that it has been using the CAMCO mark since 1966 in the course of its business of manufacturing and selling RV accessories, marine accessories, antifreeze, and windshield washer fluid. Complainant alleges that the domain name <camco.com> is identical to Complainant’s common law service mark; Complainant does not allege to own a federal registration in the CAMCO mark, or allege secondary meaning in the CAMCO mark.
Complainant contends that it has used the <camco.net> domain name for its website since October 25, 1997 and that Respondent registered the <camco.com> domain on September 8, 2003. Complainant contends that Respondent has no rights or legitimate interests in the <camco.com> domain, but rather the domain is used to redirect users to a website entitled <cheaphomes.com> which purports to offer real estate related services. Complainant contends that Respondent does not make any business use of the CAMCO mark and can not demonstrate any rights or legitimate interests in the CAMCO mark.
Complainant contends that the domain name is registered and used in bad faith because of Respondent’s intent to misdirect web users to a website for real estate related services. Complainant also cites numerous prior cases involving domain names registered by Respondent and their related entities for which bad faith was found, and Respondent’s admissions that they reserve hundreds of internet addresses similar to the names of large companies and law firms.
Respondent contends that Complainant has provided no evidence to support its claim that it owns a CAMCO service mark. Respondent points out that the USPTO online database shows nine separate entities with CAMCO marks for diverse products and services. Respondent contends that the word CAMCO is used for dozens of other products, services, business names or domain names. Respondent also contends that Complainant has not established secondary meaning in the mark and that there are multiple CAMCO marks that have been in existence prior to Complainant’s use of the mark.
Respondent further denies that it is not using the mark for a legitimate and bona fide purpose and contends that Complainant’s representation of Respondent’s website is not complete as it omits a page heading that includes use of the CAMCO mark in its advertising. Respondent further contends that it registered the domain at issue in September of 2003; and in August of 2007, Respondent registered its camco.com trademark with Colorado Secretary of State for the goods and services in Classification 035 for internet based advertising and marketing, and also registered camco.com as a trade name. Respondent rejects the claim that it registered and is using the domain name in bad faith and contends that it has been three years since the adverse UDRP findings with respect to Respondent’s other domain names.
C. Additional Submissions
Complainant has submitted additional submissions.
Complainant has submitted, and the Panel has considered, additional submissions of Complainant in response to Respondent’s papers. In addressing Respondent’s argument that Complainant does not have an ownership interest in the CAMCO mark to satisfy secondary meaning under the UDRP, Complainant submits documents showing current use of the CAMCO mark on products at <walmart.com> and <amazon.com>. Complainant contends that the allegation of continuous use of the mark, along with the product images in search results, establish the distinctiveness of the CAMCO mark and its close connection to products in the marketplace and demonstrates the mark’s secondary meaning. Complainant further contends that Respondent’s trademark registration with the Colorado Secretary of State is not sufficient to establish Respondent’s rights in the mark and that Respondent has failed to overcome Complainant’s allegations of bad faith.
The Panel finds that Complainant has failed to establish that it has a registered trademark, or that it is the owner of a mark in which it has acquired secondary meaning sufficient to meet its burden of proof under UDRP Policy ¶4(a)(i). Since Complainant has failed to meet its burden to establish the first element of the Policy, the Panel need not analyze the other two elements of the Policy, and the relief requested by the Complainant is denied.
Paragraph 15(a) of 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; and
(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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain name at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The Panel finds that Complainant has presented sufficient evidence that the disputed domain name is controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant does not allege a federal registration for the CAMCO mark, nor does it allege secondary meaning in its Amended Complaint to the CAMCO mark. The Panel may find that Complainant need not hold a registration for this mark in order to establish rights in the mark under Policy ¶4(a)(i) provided that Complainant can establish common law rights through a sufficient showing of secondary meaning in the CAMCO mark identified by Complainant. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
However, Policy ¶ 4(a)(i) requires more than a showing of mere standing; a showing of secondary meaning is required to demonstrate a complainant has achieved common law rights in the mark in question. See Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO April 3, 2001) (complainant must prove secondary meaning in the mark); see also Snowboards-for-sale.com, Inc. v. Name Admin. Inc., D2002-1157 (WIPO Feb. 19, 2003) (complainant must prove secondary meaning to meet the requirement of Policy ¶ 4(a)(i)). To support a finding of secondary meaning, a panel may consider factors such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. These factors are considered in conjunction with all of the evidence and the nature of the claimed mark (i.e. whether it may be generic or descriptive). See Amsec Enterprs., supra; see also Control Techniques Ltd. v. Lektronix Ltd, D2006-1052 (WIPO Oct. 11, 2006) (citing the WIPO Overview of Panelist Decisions to find that “Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to sufficiently establish rights that rise to the level of secondary meaning identified with Complainant in the mark during the relevant time period. Thus, the Panel declines to analyze the other two elements of the Policy. See 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 element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into respondent’s rights or legitimate interests or its registration and use in bad faith where complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish at least one of three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice.
Accordingly, it is Ordered that the <camco.com> domain name REMAIN WITH Respondent.
Professor David E. Sorkin, Debrett Lyons and David P. Miranda, as Panelists
Dated: March 18, 2011
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