Empire Engineering LTD v. Liamuiga LLC
Claim Number: FA1906001847862
Complainant is Empire Engineering LTD (“Complainant”), represented by Andrew Hodgson of Empire Engineering LTD, United Kingdom. Respondent is Liamuiga LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <empireengineering.com>, registered with NameSilo, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2019; the Forum received payment on June 14, 2019.
On June 14, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <empireengineering.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2019 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 postmaster@empireengineering.com. Also, on June 19, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 9, 2019.
On July 16, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a company registered in the United Kingdom with the National Companies Registrar, and the company trades under the unregistered trademark consisting of a logo and the words “Empire Engineering.”
The Disputed Domain Name, <empireengineering.com>, is identical to Complainant’s company name, Empire Engineering.
The Disputed Domain Name redirects to a uniregistry.com page which states that the domain is for sale. No goods or services are offered at this site. Further, the Disputed Domain Name is not being used in a manner that would constitute noncommercial or fair use.
The site to which the Disputed Domain Name redirects does not show any evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name, and there is no evidence given that Respondent has any trademark under the name “Empire Engineering” or that Respondent is commonly known by the Disputed Domain Name.
Complainant does not have any commercial agreement with Respondent, and Complainant has not authorized Respondent to use the Empire Engineering trademark or to register any domain name incorporating Complainant’s trademark.
The Disputed Domain Name is being used in bad faith by the Respondent for the following reasons. The Complainant began using its unregistered trademark in 2010, and the Respondent created the Disputed Domain Name in 2015. The Respondent had actual and constructive knowledge of Complainant’s rights in the Empire Engineering unregistered trademark prior to the Respondent registering the Disputed Domain Name. The Respondent has failed to actively use the disputed domain name for the past four years. The Disputed Domain Name is being offered for sale for the price of $9,995.
These facts demonstrate that the Respondent has registered the Disputed Domain Name, “primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark” and for a price that is well in excess of any out-of-pocket costs related to the Disputed Domain Name.
Further, these facts demonstrate that the Respondent has registered the site after the incorporation of the Complainant in order to “prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” in an attempt to financially profit from the sale of the Disputed Domain Name to the owner of the trademark.
B. Respondent
the Complainant has not demonstrated rights under the Policy. The Disputed Domain Name is a combination of the common dictionary words “empire” and “engineering.”
The expression “Empire engineering” is not distinctive and is used by dozens of third parties around the world.
Complainant overreaches in asserting common law trademark rights offering no other argument than the text “Empire engineering” is depicted in their logo.
The Disputed Domain Name is not identical to the Complainant’s company name. The Disputed Domain Name is <empireengineering.com>, and the Complainant’s name is Empire Engineering Limited.
Complainant has not established a lack of Respondent’s rights in the Disputed Domain Name. Complainant has merely reworded the Policy text to make allegations without providing any evidence and in doing so has failed to establish the burden of proof.
The Complainant has not demonstrated bad faith. The Disputed Domain Name was not “created” by the Respondent. Rather, Respondent acquired the Disputed Domain Name in a public auction in 2015. The Complainant could have and may have participated in the auction which had many bidders competing for this valuable domain.
Further, the Complainant claims “the current price of the site is well in excess of any out-of-pocket costs related to the domain name”, yet it provides no supporting evidence or knowledge of the respondent’s cost to acquire, develop or maintain the disputed domain name or associated site.
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.
In order to prevail under policy paragraph 4(a)(i), Complainant must establish that it has rights in a trademark and that the Disputed Domain Name is identical or similar thereto.
Use of the expression “Empire Engineering” by the Complainant as a business name is not sufficient to establish rights in a trademark for purposes of the Policy. See ATC Group Services LLC v. BatchMaster Software, Inc., FA 1722646 (Forum May 15, 2017) (“Complainant, itself, has submitted proof of use of the letters ATC as part of various corporate names, but no proof of use of ATC as a trademark brand, let alone sufficient proof of secondary meaning.”)
However, use of the expression “Empire Engineering” could be sufficient to establish trademark rights if “secondary meaning” has developed. Secondary meaning is a link in the mind of the relevant public between an expression (or other identifying aspect of a good or service) and its source, as opposed to a link between an expression and the goods or services themselves. In order to establish secondary meaning for purposes of a proceeding under the Policy, Complainant must provide evidence sufficient to convince the Panel on this point. Such evidence typically consists of information like the length and amount sales under the expression, the nature and extent of advertising, consumer surveys and media recognition. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). See also AOL LLC v. DiMarco, FA 125978 (Forum Sept. 9 2009) (“’secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature… is to identify the source of the product rather than the product itself.’”). See also PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (“[I]t is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”).
The Panel notes that Complainant has not provided evidence of secondary meaning with respect to the expression “Empire Engineering.”
Evidence of secondary meaning would not be required if Complainant could prove that the expression “Empire Engineering” was a registered trademark. See Advanced Auto Part, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent For YOLAPT/Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though respondent reportedly resides in the Isle of Man). See also Humor Rainbow, Inc., v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“ there exists an overwhelming consensus among UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interest in a mark… Due to complainant’s attached USPTO registration on the principal register at Exhibit 1, the panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). A trademark registration need not be with the USPTO, but it must be with the national trademark registering body in some country.
The Panel notes that Complainant has not provided evidence that the expression “Empire Engineering” is a registered trademark.
Complainant has thus failed to establish that it has rights in a trademark, and as such, Complainant has failed to establish the first element of the Policy.
As such, Complaint cannot prevail in this proceeding.
As such, it is not necessary for the Panel to analyze the remaining two elements of the Policy, Policy ¶ 4(a)(ii) (rights or legitimate interest) and ¶ 4(a)(iii) (registration and use in bad faith). See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <empireengineering.com> domain name REMAIN WITH Respondent
Kendall C. Reed, Panelist
Dated: July 22, 2019
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