Wasatch Shutter Design v. Duane Howell / The Blindman
Claim Number: FA1705001731056
Complainant is Wasatch Shutter Design (“Complainant”), represented by David P. Johnson of Workman Nydegger, Utah, USA. Respondent is Duane Howell / The Blindman (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wasatchshutters.com> and <wasatchshutterdesign.com>, registered with Google Inc.
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2017; the Forum received payment on May 10, 2017.
On May 11, 2017, Google Inc. confirmed by e-mail to the Forum that the <wasatchshutters.com> and <wasatchshutterdesign.com> domain names are registered with Google Inc. and that Respondent is the current registrant of the names. Google Inc. has verified that Respondent is bound by the Google Inc. 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 May 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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, email@example.com. Also on May 16, 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 June 5, 2017.
On June 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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 names be transferred from Respondent to Complainant.
Complainant, Wasatch Shutter Design, designs, manufactures, and sells window blinds and shutters with headquarters based in West Jordan, Utah, USA. In connection with this business, Complainant uses the WASATCH SHUTTER and WASATCH SHUTTER DESIGN marks (hereafter throughout the decision referred to as “the WASATCH marks”) to promote its goods and services. Complainant has rights in the marks based upon common law trademark rights and secondary meaning given to the marks. Respondent’s domain names, <wasatchshutters.com> and <wasatchshutterdesign.com>, are identical to Complainant’s marks as they consist of Complainant’s marks in their entirety with the appended generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by <wasatchshutters.com> and <wasatchshutterdesign.com> nor has Complainant authorized Respondent to register a domain name reflecting the marks. Further, Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <wasatchshutters.com> and <wasatchshutterdesign.com> resolve to websites containing goods and services in direct competition with Complainant for Respondent’s presumed commercial benefit. See Compl., at Attached Annex E (Screenshots of the resolving webpages for the disputed domain names).
Respondent registered and used <wasatchshutters.com> and <wasatchshutterdesign.com> in bad faith. Respondent uses the confusingly similar domain names to confuse users seeking Complainant as to the sponsorship and affiliation of the disputed domain names and diverts Internet users to websites offering competing goods and services. See Compl., at Attached Annex E. Further, Respondent had actual notice of Complainant’s rights in the WASATCH marks when Respondent registered the disputed domain names because Complainant used the marks at least five years before Respondent registered the <wasatchshutters.com> domain name, and at least fifteen years prior to Respondent registering the <wasatchshutterdesign.com> domain name.
Complainant lacks enforceable trademark rights in the WASATCH marks as Complainant failed to evidence secondary meaning given to the WASATCH marks and holds no trademark registration in connection with the WASATCH marks. Complainant’s marks are generic and thus Respondent’s domain names cannot be identical or confusingly similar.
Respondent does have rights and legitimate interests in the disputed domain names. Respondent uses the disputed domain names in connection with a bona fide offering of goods and services, as each domain name resolves to Respondent’s website where it offers window blind goods and services under the BLINDMAN mark, and, importantly, it offers them in the Wasatch area of Utah. See Resp., at Attached Annex B. Further, because the terms “Wasatch” and “shutters” are generic dictionary terms, Complainant does not hold exclusive rights to use those marks, especially because Respondent uses the terms to provide the services one would expect based on the terms.
Respondent contends it registered and used the disputed domain names in good faith. Complainant had no registered trademark at the time of registration, and Complainant has failed to meet its burden of proof. Thus, Respondent could not have had any knowledge of Complainant’s alleged business at the time of registration.
Respondent also argues reverse domain name hijacking.
Respondent registered the <wasatchshutters.com> and <wasatchshutterdesign.com> domain names on August 18, 2006, and January 28, 2016, respectively.
Neither of the parties involved in this domain name dispute owns registered trademark rights to the names “Wasatch Shutters”, “Wasatch Shutter”, or “Wasatch Shutter Design”.
On May 2, 2017, the Complainant made an application for the WASATCH SHUTTER DESIGN mark with the USPTO. This trademark application is currently pending.
Complainant and Respondent are competitors, in the sense that they are selling the same products (window shutters or blinds) to clients in the same area. This area includes the geographical area called the “Wasatch Front” in the State of Utah, where both Complainant and Respondent are based. Complainant and Respondent are located at approximately 25 miles or half an hour driving distance from each other.
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.
Respondent argues that Complainant lacks enforceable trademark rights in the WASATCH marks as Complainant’s trademark application(s) with the USPTO are pending, and Complainant failed to evidence secondary meaning given to the marks via a failure to use them exclusively.
The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights. The Panel refers to Ascentive, LLC v. jiang lixin, FA 1413756 (Forum Dec. 7, 2011) (concluding that “a trademark application does not sufficiently establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Trademark registration is not strictly necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that an official registration is not required so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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).
Previous panels have held that a complainant has failed to establish secondary meaning in a mark based on a lack of evidence showing a complainant’s efforts to promote and affiliate itself with a mark or otherwise acquire secondary meaning. See WMS Group, Inc. v Molly Jenkins / Brandz Agency Inc., FA 1601220 (Forum Feb. 26, 2015) (holding that Complainant has not shown secondary meaning of the marks in question as it “offered no evidence of consumer or media recognition of its claimed marks as distinctive identifiers.”). Complainant lacks common law rights where an inadequate demonstration of a secondary meaning was present. See Mega Shoes, Inc. v. Ostrick, FA 1362894 (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).
Panels have also found that complainants have a higher burden when claiming to have common law rights in a mark comprised of generic, descriptive, or geographic terms. See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Forum Apr. 22, 2010) (failing to find common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning). The Panel finds that, in cases involving claimed common law trademarks that are comprised of generic, descriptive, or geographic words such as the words WASATCH, SHUTTERS(S) and DESIGN in the case at hand, there is an even greater onus on Complainant to present compelling evidence of secondary meaning or distinctiveness. The Panel notes in this regard that both parties operate a business selling shutters and that both parties are based in the greater Salt Lake City area, a region often identified as being located in the Wasatch Front.
The Panel finds that, in order to successfully assert common law or unregistered trademark rights in the names WASATCH SHUTTER(S) OR WASATCH SHUTTER DESIGN, Complainant must show that these names have become a distinctive identifier associated with Complainant or its goods or services. A simple allegation of common law rights does not suffice. Specific assertions of relevant use of the claimed trademark(s) supported by sufficient evidence is required. A secondary meaning can be established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. 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.”).
The Panel finds that the declaration of May 9, 2017 of Alan Clegg, owner and president of the Complainant, submitted by Complainant as Annex F, does not serve as sufficient evidence that Complainant has common law trademark rights in the WASATCH marks. The Panel notes that Complainant failed to provide any evidence of the claims formulated in this declaration. For instance, Complainant did not submit any evidence of its marketing spending related to the WASATCH marks, nor of consumer surveys, media recognition or the extent of Complainant’s use of the mark(s) over the years. Also, the Panel finds that the screenshots of the website of Complainant, submitted by Complainant as Annex C, do not constitute evidence of secondary meaning or common law trademark rights in the WASATCH marks.
The Panel finds that Complainant has not established sufficient secondary meaning in the WASATCH marks to create common law rights in the mark. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
The Panel agrees with Respondent that Complainant has failed to establish secondary meaning in the Wasatch marks and finds Complainant does not have rights in the marks per Policy ¶ 4(a)(i).
Respondent also argues that the disputed domain names are not identical or confusingly similar to Complainant’s claimed marks because the domain names merely consist of geographic, descriptive, or generic terms. Use of these sorts of terms in a domain name may not be considered identical or confusingly similar. See Cigarettes Cheaper!, Inc. v. World Wide Brands, FA 100490 (Forum Nov. 21, 2001) (deciding that the <cigarettescheap.net> domain name was not confusingly similar to the complainant’s CIGARETTES CHEAPER!, as the domain name was made up of two generic terms). Respondent contends that there are over 6,500 businesses that have incorporated the “Wasatch” term, and that Complainant does not hold exclusive rights in the generic, descriptive, or geographic terms. See Resp., at Attached Annex D (list of incorporated businesses from the Utah Secretary of State). The Panel agrees with Respondent that Complainant does not hold exclusive rights in the terms of the domain names, and therefore that the <wasatchshutters.com> and <wasatchshutterdesign.com> domain names are not identical or confusingly similar.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the marks.
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(iii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006).
Reverse Domain Name Hijacking
Even though the Panel finds that the Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (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.”);
The Panel cannot conclude that Complainant has engaged in reverse domain name hijacking. The Panel finds that it is not proven that Complainant submitted the complaint in bad faith or that Complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent (see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001).
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 <wasatchshutters.com> and <wasatchshutterdesign.com> domain names remain with Respondent.
Bart Van Besien, Panelist
Dated: June 23, 2017
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