National Arbitration Forum

 

DECISION

 

L J & L Products, Inc. v. Southern Indiana Security, Inc.

Claim Number: FA0610000820354

 

PARTIES

Complainant is L J & L Products, Inc. (“Complainant”), represented by Michael K. Leachman, of Cook, Yancey, King & Galloway A.P.L.C., 333 Texas Street, Suite 1700, P.O. Box 22260, Shreveport, LA 71120-2260.  Respondent is Southern Indiana Security, Inc. (“Respondent”), represented by Todd Hattabaugh, of Southern Indiana Security, Inc., P.O. Box 487, Corydon, IN 47112.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <camocam.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2006.

 

On October 17, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <camocam.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the 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 October 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 9, 2006 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@camocam.com by e-mail.

 

A timely Response was received and determined to be complete on November 9, 2006.

 

An Additional Submission from Complainant was received on November 14, 2006 and determined to be complete pursuant to Supplemental Rule 7.

 

Respondent sent the National Arbitration Forum a timely and complete Additional Submission on November 17, 2006.

 

On November 21, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         Respondent’s domain name is confusingly similar to Complainant’s                                trademark, CAMOCAM;

 

            2.         Respondent has no rights or legitimate interests in the domain name                                 <camocam.com>; and

 

            3.         Respondent registered the domain name <camocam.com> in bad faith.

 

B. Respondent

 

            1.         The Respondent’s domain name <camocam.com> is not confusingly                            similar to the Complainant’s mark;

 

            2.         Respondent has a legitimate interest in <camocam.com>; and

 

            3.         Respondent properly registered the domain name <camocom.com> and is not                          using it in bad faith.

 

C. Additional Submissions

 

            1,         Complainant:  The response was not submitted by the actual Respondent,                                  “Southern Indiana Security, Inc.,” but by Todd Hattabaugh, its president,                                   on behalf of himself and another closely held corporation owned by him,                               and they should not be given standing to be heard in this matter.

 

2.                  Respondent:  Respondent rebuts Complainant’s arguments in its Additional Submission by alleging that Todd Hattabaugh is the sole shareholder of both Respondent, Southern Indiana Security Inc., and CamoCam, Inc., and that Complainant is relying on tort principles in a case involving intangible property, a domain name.  Mr. Hattabaugh contends that based on well-established property rights, he has a right to respondent on behalf of his corporation in the Response.

 

FINDINGS

Complainant has failed to satisfy Policy ¶ 4(a)(i) because it does not have rights in the CAMOCAM mark that predate Respondent’s registration of the disputed domain name <camocam.com>

 

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.

Preliminary Issue: Arguments in the Additional Submissions

 

In its Additional Submission, Complainant alleges that the Response was not submitted by the actual Respondent, “Southern Indiana Security, Inc.,” but by Todd Hattabaugh, the President of Respondent corporation.  Complainant claims that Mr. Hattabaugh is also President and incorporator of CamoCam, Inc., but that CamoCam, Inc. and Southern Indiana Security, Inc. are “separate and distinct juridical entities.”  Complainant makes reference to United States federal case law on corporate structure in order to argue that the President of Respondent corporation is not the proper party to file a response in this matter because he does not own the corporation’s assets.  Based on Complainant’s interpretation of the Policy, the Response would have to be filed by “Southern Indiana Security, Inc.” itself or its shareholders, instead of the corporation’s President, an authorized representative or an employee working for “Southern Indiana Security, Inc.”  In most cases, however, an authorized representative or employee of Respondent files a Response.  In this case, Todd Hattabaugh is listed in the WHOIS database as the Administrative Contact for the <camocam.com> domain name, and the Panel shall resolve this matter on the merits.

 

Identical and/or Confusingly Similar

 

Complainant alleges that it holds a trademark registration for the CAMOCAM mark with the United States Patent and Trademark Office (Reg. No. 2,576,334 issued June 4, 2002, filed June 13, 2001).  However, Respondent registered the <camocam.com> domain name on July 15, 1998, three years before Complainant filed for this trademark registration.

 

Complainant asserts that it has been continuously using the CAMOCAM mark since 1998 in connection with surveillance systems it markets and sells to law enforcement agencies throughout the world.  As a result of its continuous use of the CAMOCAM mark since 1998, Complainant asserts that the mark has acquired secondary meaning in connection with its surveillance systems.

 

The Panel finds that Respondent registered the <camocam.com> domain name on July 15, 1998, before Complainant established rights in the CAMOCAM mark.  Respondent further entered into a business relationship with Complainant to market and sell Respondent’s surveillance systems under the CAMOCAM mark after Respondent registered the disputed domain name.  The Panel finds that Respondent’s rights in the <camocam.com> domain name predate Complainant’s rights in the mark, and the Panel determines that Complainant has failed to satisfy Policy ¶ 4(a)(i).  See Bus. Architecture Group, Inc. v Reflex Publ’g., FA 97051 (Nat. Arb. Forum June 5, 2001) (the complainant did not adequately demonstrate common law rights that predated the domain name registration); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

 

As the Panel concludes that Complainant has failed to satisfy Policy ¶ 4(a)(i) because it does not have rights in the CAMOCAM mark that predate Respondent’s registration of the disputed domain name, the Panel accordingly declines to analyze the other two elements of the Policy.  See Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”); see also 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).

 

 

 

 

DECISION

Having established Complainant has failed to satisfy Policy ¶ 4(a)(i) under the  ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

                                                                                                                                   

                                                           

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  December 5, 2006