Strebor, LLC d/b/a Power Tool Repair v. Ronald Manuele / R & R TOOL REPAIR
Claim Number: FA1508001634899
Complainant is Strebor, LLC d/b/a Power Tool Repair (“Complainant”), represented by Andrew S. Curfman of Emerson Thomson Bennett, LLC, Ohio, USA. Respondent is Ronald Manuele / R & R TOOL REPAIR (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ohiopowertoolrepair.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2015; the Forum received payment on August 26, 2015.
On August 26, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ohiopowertoolrepair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2015 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 August 27, 2015, 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 September 8, 2015.
Complainant submitted a timely Additional Submission, which was received on September 14, 2015.
Respondent submitted a timely Additional Submission, which was received on September 16, 2015.
On September 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
1. Respondent’s <ohiopowertoolrepair.com> domain name is confusingly similar to Complainant’s POWER TOOL REPAIR mark.
2. Respondent does not have any rights or legitimate interests in the <ohiopowertoolrepair.com> domain name, as it has no business presence in the state of Ohio.
3. Respondent registered and uses the <ohiopowertoolrepair.com> domain name in bad faith.
1. Complainant does not have trademark rights in the descriptive name POWER TOOL REPAIR.
2. Respondent has rights in the <ohiopowertoolrepair.com> domain name, legitimately used to attract business to his Florida-based national tool repair business.
3. Respondent did not register and does not use the <ohiopowertoolrepair.com> domain name in bad faith, which he registered before Complainant filed its trademark applications with the U. S. Patent and Trademark Office.
4. Complainant is attempting to reverse hijack the <ohiopowertoolrepair.com> domain name.
C. Complainant’s Additional Submission
1. Complainant has rights in the POWER TOOL REPAIR mark that it has been using for over 18 years.
2. Respondent was aware of Complainant and its rights because the parties met at a trade show prior to Respondent registering the <ohiopowertoolrepair.com> domain name.
3. Respondent uses the <ohiopowertoolrepair.com> domain name to redirect customers to its tool repair business.
D. Respondent’s Additional Submission
1. Complainant did not address common law rights in its original Complaint and therefore its arguments on that subject in its Additional Submission should not be considered.
2. Complainant has not submitted any evidence of common law rights in the POWER TOOL REPAIR mark, which is merely descriptive.
3. Respondent reiterates his legitimate use of the <ohiopowertoolrepair.com> domain name to drive traffic to his own tool repair business.
Complainant has not established trademark rights in the POWER TOOL REPAIR mark.
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.
The Panel notes that Respondent registered the <ohiopowertoolrepair.com> domain name on June 24, 2014. Complainant applied for federal trademark registration of POWER TOOL REPAIR with the U. S. Patent and Trademark Office (the “USPTO”) on February 26, 2015, alleging use dating back to 1997. Respondent contends that Complainant has no enforceable trademark rights in the POWER TOOL REPAIR mark, arguing that its application with the USPTO has been rejected on the grounds of descriptiveness. Complainant’s mark is in fact descriptive of power tool repair services. Complainant did not assert common law rights in POWER TOOL REPAIR in its Complaint, and even if it had, Complainant has not submitted any evidence of secondary meaning showing that Complainant’s services are widely associated with those words. Complainant merely asserted that it holds a trade name registration with the Ohio Secretary of State. Thus, Complainant cannot show Policy ¶ 4(a)(i) rights where it cannot show common law rights prior to Respondent’s registration of the disputed domain name. Indeed, Complainant did not properly allege or establish any trademark rights in the words POWER TOOL REPAIR.
Past panels have agreed that a USPTO application is not sufficient to establish rights, and a showing of common law rights is required by the Policy. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”); see also Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support this claim. Past panels have also declined to extend Policy ¶ 4(a)(i) rights to trade names. See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”). The Panel thus finds that Complainant has not established trademark rights in POWER TOOL REPAIR for purposes of Policy ¶ 4(a)(i).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), 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 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (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)).
Reverse Domain Name Hijacking
The Panel notes that Complainant has alleged that Respondent registered the <ohiopowertoolrepair.com> domain name after meeting Complainant at a trade show. The Panel finds that this weighs against Respondent and made it more likely that Complainant could prevail, had it proven rights in POWER TOOL REPAIR. For that reason, along with Complainant’s alleged use of POWER TOOL REPAIR since 1997, the Panel declines to find Reverse Domain Name Hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ohiopowertoolrepair.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: September 28, 2015
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