Armstrong Garage Doors, Inc.
v. Hurricane Garage Door d/b/a Hurricane Garage Doors d/b/a
Claim Number: FA0612000873313
PARTIES
Complainant is Armstrong Garage Doors, Inc. (“Complainant”), represented by F.
Tait Carson, 6467 U.S. Highway 411 South, Greenback, TN 37742. Respondent is Hurricane Garage Door d/b/a Hurricane
Garage Doors d/b/a Knoxville Garage Doors (“Respondent”), represented by Robert
P. Denney, 8403 Tazewell
Pike,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <maryvillegaragedoors.com> and <seviervillegaragedoors.com>
registered with Go Daddy Software, Inc., as well as <knoxvillegaragedoors.com>,
registered with New Dream Network, Llc.
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.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 18, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 18, 2006.
On December 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <maryvillegaragedoors.com> and <seviervillegaragedoors.com>
domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 23, 2006, New Dream Network, Llc confirmed by e-mail to
the National Arbitration Forum that the <knoxvillegaragedoors.com> domain
name is registered with New Dream Network, Llc
and that the Respondent is the current registrant of the name. New Dream Network,
Llc has verified that Respondent is bound by the New Dream Network, Llc 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 January 3, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 23, 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@maryvillegaragedoors.com, postmaster@seviervillegaragedoors.com, and postmaster@knoxvillegaragedoors.com by e-mail.
A timely Response was received and determined to be complete on January 18, 2007.
An Additional Submission was submitted by
Complainant on January 26, 2007. Since
the Additional Submission was submitted after the deadline for submissions and
without the required fee, the Panel has determined it not to be in compliance
with Supplemental Rule 7 and thus to be deficient. The Panel has therefore chosen not to consider
this Additional Submission in its Decision.
On January 25, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The trademarks and service marks upon which the Complaint is based are
MARYVILLE GARAGE DOORS, INC.; SEVIERVILLE GARAGE DOORS, INC.; and KNOXVILLE
GARAGE DOORS, INC., all of which were first used in
The domain names are identical to the corporate names of Complainant’s
companies: KNOXVILLE GARAGE DOORS, INC.; MARYVILLE GARAGE DOORS, INC.; and SEVIERVILLE
GARAGE DOORS, INC. The domain names are
also confusingly similar to the trademarks in which complainants’ companies
have acquired rights under the Tennessee Trademark Act. Respondent should not be considered as having
a legitimate interest in the domain names that are the subject of this
Complaint because Respondent does business only under the name Hurricane Garage
Doors, Inc., and does not do business under any of the domain names which it
has registered.
The domain names <maryvillegaragedoors.com>
and <seviervillegaragedoors.com>
were created on February 8, 2006, and <knoxvillegaragedoors.com>
on November 14, 2004. The Registrant is
Hurricane Garage Doors, 8403 Tazewell Pike,
The domain name <knoxvillegaragedoors.com>
was created on November 14, 2004 by Robert Denny, who is believed to be the
principal of Hurricane Garage Doors, Inc. The domain name was updated on February 4,
2006. Complainant believes that Robert Denney transferred ownership of the
domain name to Hurricane Garage Doors on that date; however, Hurricane Garage
Doors, Inc. was not incorporated until August 22, 2006 and, therefore, it did
not exist as a legal entity in February, 2006. The other contact, Knoxville Garage Doors,
does not exist at all; however, it is listed first. Presumably, this was done “to make some
connection” to the domain name.
Armstrong Garage Doors, Inc. was incorporated on August 24, 2005;
Knoxville Garage Doors, Inc was incorporated on August 29, 2005; Sevierville
Garage Doors, Inc. was incorporated on February 10, 2006; and Maryville Garage
Doors, Inc. was incorporated on September 14, 2005. Hurricane Garage Doors, Inc. was not
incorporated until August 22, 2006. Thus,
Respondent does not even use two (2) of the domain names for any purpose and it
used <knoxvillegaragedoors.com>
before it was incorporated.
Respondent has registered the domain names in order to prevent
Complainant from reflecting its trademarks in corresponding domain names. Respondent also has registered the domain
names for the purpose of disrupting Complainant’s business.
The Complainant thus requests that the Panel issue a decision that the
domain-names registration be transferred to Complainant.
B. Respondent
Hurricane Garage Doors was licensed to do business in
Under a reasonable investigation, Complainant could have ascertained
that Respondent was using the domain name <knoxvillegaragedoors.com> since November 14, 2004, and prior to
the formation of the Complainant's corporation Knoxville Garage Doors, Inc. on November
3, 2005 (located in
The <seviervillegaragedoors.com>
domain name was registered February 8, 2006 for the future expansion of
Hurricane Garage Doors. Complainant's
corporation, Sevierville Garage Doors, Inc. was registered February 10, 2006.
The <maryvillegaragedoors.com>
domain name was registered February 8, 2006 for the future expansion of
Hurricane Garage Doors. At the time of
registration Hurricane Garage Doors was unaware of any named businesses. Complainant's “Maryville Garage Doors, Inc.”
is currently in an inactive status.
It is Respondent's belief that Complainant uses multiple
corporations/trademarks in an effort to disrupt Respondent’s business and
believes this Complaint has been brought in bad faith pursuant to UDRP Rule 1
and Rule 15(e).
The Complainant is misusing the arbitration proceeding in an attempt to
“take,” or hijack, a domain or in an attempt to harass the domain registrant.
FINDINGS & 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.
The Panel has found that Complainant’s KNOXVILLE GARAGE DOORS, INC. and SEVIERVILLE GARAGE DOORS, INC. marks were adopted for use after Respondent had registered the <knoxvillegaragedoors.com> and <seviervillegaragedoors.com> domain names. In order to prevail under Policy ¶ 4(a)(i), however, Complainant’s rights in the marks must precede Respondent’s registration of the disputed domain names. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); 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).
Regarding the MARYVILLE GARAGE DOORS, INC. mark, the Panel finds that since the status of the corporation according to the Secretary of State is currently inactive, Complainant has not used the MARYVILLE GARAGE DOORS, INC. mark continuously in commerce and therefore, failed to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See Molecular Nutrition, Inc. v. Network News and Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy only “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Complainant has
furthermore failed to establish common law rights in the marks, as Complainant
has provided no evidence of secondary meaning or use in connection with the
provision of goods or services. See
Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003)
(“Although Complainant asserts common law rights in the WELLSERV mark, it
failed to submit any evidence indicating extensive use or that its claimed mark
has achieved secondary source identity . . . [Complainant’s
claim that it is well known] is a finding that must be supported by evidence
and not self-serving assertions.”); see also Molecular
Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the
complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products).
Since Complainant does not have prior rights in the MARYVILLE
GARAGE DOORS, INC., SEVIERVILLE GARAGE DOORS, INC., and KNOXVILLE GARAGE DOORS,
INC. marks under Policy ¶ 4(a)(i), the
Panel is not obliged 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
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); see also CyberImprints.com, Inc. v.
Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although
the respondent’s domain name <cyberimprints.com> was identical to the
complainant’s incorporated business name, the complainant did not claim to hold
any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and
therefore, its request for transfer was denied).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Jonas Gulliksson, Panelist
Dated: February 8, 2007
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