ATC Group Services LLC v. BatchMaster Software, Inc.
Claim Number: FA1703001722646
Complainant is ATC Group Services LLC (“Complainant”), represented by Chad Mollere of Johnson Gray McNamara, LLC, Louisiana, USA. Respondent is BatchMaster Software, Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atc.com>, registered with Network Solutions, LLC.
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.
Hon. Neil Anthony Brown, Hon. Bruce E. Meyerson (Ret.), as Panelists and David P. Miranda, Esq., as chair Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2017; the Forum received payment on March 20, 2017.
On March 21, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <atc.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2017 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 firstname.lastname@example.org. Also on March 27, 2017, 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 April 21, 2017.
Complainant’s Additional Submission was received on April 26, 2017.
On May 1, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Neil Anthony Brown, Hon. Bruce E. Meyerson (Ret.), as Panelists and David P. Miranda, Esq., as chair 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.
Complainant, ATC Group Services LLC, operates in the environmental consulting and industrial hygiene industry. Complainant has common law rights in the ATC mark based on its extensive use and secondary meaning acquired in the mark, or one of its predecessor companies, dating back to 1982. ATC claims it has continuously used and promoted the ATC mark in commerce through advertising, sales, and various other ways since 1982, before the disputed domain name <atc.com> was created in 1990 and before it was transferred to Respondent in 2008. Claimed evidence of continuous and ongoing use of the ATC mark is customer recognition of the ATC mark in testimonials provided on ATC’s website. Respondent’s <atc.com> is identical to the mark because the ATC mark is included fully, and merely followed by the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name (registered September 28, 1990). The WHOIS information for <atc.com> lists “BatchMaster Software, Inc.” as registrant, and is not commonly known by the domain name. Further, the domain name has not been actively used since at least 2002, merely displaying an “UNDER CONSTRUCTION” webpage. See Compl., at Attached Exs. A, C (Affidavits).
Respondent registered and used the domain name in bad faith. Respondent became the registrant of <atc.com> between July 12, 2008 and July 24, 2008. See Compl., at Attached Annex C, Ex. 3 (WHOIS reports). From the time Respondent acquired the domain name, it has not been actively used, evincing bad faith under Policy ¶ 4(a)(iii).
Respondent’s <atc.com> was registered by Respondent’s owner on September 28, 1990, making <atc.com> one of the first domain names registered in the DNS. <atc.com> was used to promote Respondent’s business for over ten years. Respondent’s owner chose the domain name because it was an acronym for its first corporate name, Advanced Technology Center. <atc.com> is a 3-letter domain name, and contends there is substantial third-party usage of ATC, so Complainant cannot argue that “ATC” is a “household name.” There is also no evidence or claim that Respondent targeted Complainant; rather, Respondent operates as part of an active business that predates Complainant, and which has used <atc.com> as an active website and continues to use company email.
Complainant has failed to show common law rights in the ATC mark. The Affidavit of support provided by Complainant shows multiple names: such as “ATC Laboratories, Inc. that changed to ATC Environmental Group, Inc., later changed to ATC Group Services, Inc. and most recently to ATC Associates, Inc., such admissions hardly show evidence of exclusive use of “ATC.” Complainant, itself, has a qualifying use of the three letters “atc” followed by a descriptive term rather than the stand-alone ATC.
Respondent has a legitimate business use of the domain name as a corporate email address (e.g., email@example.com). Use of a generic, three-letter domain name also confers legitimacy given its inherent value.
Respondent did not register or use the domain name in bad faith. Respondent’s rights in the domain name date back to 1990, and Complainant has not adduced sufficient evidence that would support any rights for Complainant in the ATC mark that would predate Respondent’s registration. Respondent’s use is not inactive as it continually uses the domain name in connection with its email suffix “@atc.com.” Bad faith cannot be found when common terms are used.
C. Additional Submissions
Complainant has provided sufficient grounds for common law rights in the ATC mark.
ATC, while a three-letter mark allegedly being used by third-parties, does not mean that it is generic or indistinctive such that Complainant cannot establish rights in the mark.
Complainant focuses on a period of Respondent’s inactivity “for almost 15 years” showing Respondent’s bad faith use of the domain name. See Compl. Add. Sub., p.5.
Complainant has failed to establish sufficient trademark rights to the letters ATC and as such the claim 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.
Complainant, ATC Group Services LLC, operates in the environmental consulting and industrial hygiene industry. Complainant asserts rights in the ATC mark, but has not provided any evidence of a governmental registration of the mark. While such showings are not necessarily required under Policy ¶ 4(a)(i) (see generally Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”)), the Panel may look to Complainant’s rights in the mark under the common law.
Complainant claims common law rights in the ATC mark based on its claimed extensive use and secondary meaning acquired in the mark. Secondary meaning may be acquired through “continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015).
Respondent argues Complainant has failed to show common law rights in the ATC mark. The domain at issue was registered by Respondent on September 28, 1990. Respondent specifically notes the Affidavit of support provided by Complainant shows multiple corporate names: such as “ATC Laboratories, Inc. that changed to ATC Environmental Group, Inc., later changed to ATC Group Services, Inc. and most recently to ATC Associates, Inc., such admissions hardly show evidence of exclusive use of “ATC.” 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. No proof has been submitted establishing how ATC has been used as a trademark by Complainant, the advertising revenue incurred to promote the ATC brand, or the extent to which the ATC brand is associated with Complainant by the relevant public community. Common law allegations fail in myriad ways. See generally Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, D2002-0707 (WIPO Oct. 1, 2002) (“As long as there is no registration of the letters KNSF as a company name or trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”). Complainant’s proof is insufficient to establish secondary meaning in the three-letter ATC mark.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), as such, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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 (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)).
Having not established the first of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <atc.com> domain name REMAIN WITH Respondent.
Hon. Neil Anthony Brown, Hon.
Bruce E. Meyerson (Ret.), as Panelists
and David P. Miranda, Esq., as chair Panelist.
Dated: May 15, 2017
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