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AMRGI Inc. v. Metalco [2000] GENDND 793 (31 July 2000)

National Arbitration Forum

DECISION

AMRGI, Inc. v. Metalco

Claim Number: FA0006000095016

PARTIES

The Complainant is AMRGI, Inc., Willowbrook, IL, USA ("Complainant"). The Respondent is Metalco, Amman, Jordan ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "METALCO.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Judge Richard B. Wickersham, (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to National Arbitration Forum ("The Forum") electronically on 06/14/2000; The Forum received a hard copy of the Complaint on 06/14/2000.

On 06/19/2000 confirmed by e-mail to The Forum that the domain name "METALCO.COM" is registered with NSI and the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

A Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a Response to the Complaint, was transmitted to respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email.

On July 21, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

The grounds upon which the Complaint is made are:

1. The domain name which is the subject of this complaint is identical to the word which is the subject of the Complainant's trademark registration;

2. The Complainant has been using the METALCO mark continuously in connection with its goods, i.e. metal fence and railing panels, posts, stays and gates, since April 1, 1994 and in commerce since June 16, 1995;

3. The record of Respondent's use of the domain name, which is the subject of this complaint, was created on January 27, 1998;

4. Due to the Complainant's use of the METALCO mark in commerce long prior to Respondent's adoption of the METALCO domain name, the Respondent should be considered as having no rights or legitimate interest in the domain name;

5. The Respondent in applying to register the domain name represented and warranted to the Registrar that the domain name, www.metalco.com, would not infringe upon or otherwise violate the rights of any third party;

6. The Respondent's use of the domain name infringes upon and otherwise operates to dilute the value of and the good will associated with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site, product or service; and,

7. The misrepresentation and breach of its warranty to the Registrar indicate the registration and use by Respondent of the domain name was and is in bad faith.

B. Respondent

For a Response to the Complainant, Respondent states:

1. Respondent affirms that the domain name of the Respondent and the Complainant's trademark are identical, but alleges that the Complainant's trademark is illegally registered and does not represent a right under the law;

2. Respondent affirms that the record of Respondent's use of the domain name was created on January 27, 1998;

3. Respondent alleges that its ownership of the domain name is prior to the Complainant's registration or alleged use of the trademark;

4. Respondent states that registering the domain name METALCO for any person but the Respondent would violate its rights;

5. Respondent alleges that the use of its domain name METALCO is an exercise of its lawful right under national and international law;

6. Respondent states that its warranties and representations regarding the domain name are done in good faith and represent an accurate and truthful representation of the facts;

7. Further, that the Respondent's business is in Heating Boilers and their accessories and that Respondent has a very esteemed reputation for such products;

8. Respondent states that it does not produce metal fence, railing panels, posts, stays, or gates;

9. Respondent states that it has been using the trade name METALCO for the last 25-years continuously and that it was issued a certificate of registration of the trade name METALCO by the Jordanian Registrar of Trade Names on September 15, 1976 and that it has a lawful and enforceable right and interest under Jordanian law and under International law;

10. Finally, Respondent alleges that it has invested a substantial amount of time, money and effort in promoting its Tradename in the past 25-years and its Domain Name in the last several years. The Respondent has attended several shows and conferences and distributed substantial amount of literature carrying the Respondent's Domain Name in the Middle East and Europe. Accordingly, the Respondent requests that the Complainant cancel the registration of its trademark because it infringes on the Respondent's Tradename and operates to dilute the value of and the good will associated with the Respondent's validly registered and used Tradename and creates a likelihood of confusion with the Respondents name as to the source, sponsorship, affiliation, or endorsement of the Complainant's.

FINDINGS

I. AMRGI, Inc., of Willowbrook, IL is the Complainant and METALCO of Amman, Jordon is the Respondent. The domain name that is the subject of the complaint is METALCO.COM. The domain name is registered with Network Solutions, Inc., of Herndon, VA.

II. AMRGI, Inc., an Illinois corporation, in the business of metal fence and railing panels, posts, stays and gates, registered on February 23, 1999 in the United States Patent and Trademark Office, Registration Number: 2,225,649 METALCO as a Trademark and first used the same in commerce June 16, 1995.

III. Respondent, METALCO of Amman, Jordan, registered the domain name METALCO.COM with Network Solutions, Inc. on January 27, 1998 and such registration is in active status as of Monday, June 19, 2000, according to Network Solutions verification response filed with The National Arbitration Forum to Case No: FA95016.

IV. The Complainant has been using the METALCO mark continuously in connection with its goods, i.e., metal fence and railing panels, posts, stays and gates since April 1, 1994 and in commerce since June 16, 1995.

DISCUSSION:

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the Complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical of 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.

Identical and/or Confusingly Similar

The domain name METALCO.COM is identical to the trademark registration in the United States Patent and Trademark Office (METALCO), first used April 1, 1994 and first used in commerce June 16, 1995. Complainant alleges and I find that Complainant used the METALCO mark in commerce long prior to Respondent's adoption of the METALCO domain name and, hence, the Respondent has no rights or legitimate interest in the domain name under such circumstances.

Rights or Legitimate Interests

Although, due to the Complainant's use of the METALCO mark in commerce long prior to Respondent's adoption of the METALCO domain name, it appears that Claimant has superior rights, it cannot be said, on this record, that the Respondent has no rights or legitimate interests in the domain name, as is required by the Policy. ICANN Policy ¶ 4.a.(ii), ¶ 4.c.(i)

Registration and Use in Bad Faith

The Respondent, in applying to register the domain name, represented and warranted to the Registrar that the domain name, www.metalco.com, would not infringe upon or otherwise violate the rights of any third party; I find this to be a misrepresentation and breach of its warranty to the Registrar and indicates and I find that the registration and use by the Respondent of the domain name was and is in bad faith.

DECISION

On this record and under the limited circumstances to which the UDRP applies,

I cannot find in favor of the Complainant, AMRGI, Inc., and against the Respondent, Metalco, of Amman, Jordan. I ORDER and DIRECT that the domain name METALCO.COM, not be transferred from the Respondent to the Complainant, pending subsequent legal action, if any.

Judge Richard B. Wickersham, (Ret.)

Date: July 31, 2000

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