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Goldmasters Precious Metals v. Gold Masters srl [2000] GENDND 935 (21 August 2000)

National Arbitration Forum

DECISION

Goldmasters Precious Metals v. Gold Masters srl

Claim Number: FA0007000095246

PARTIES

The Complainant is Goldmasters Precious Metals, Tacoma, WA, USA ("Complainant"). The Respondent is Gold Masters srl, Italy, ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

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

PANELIST(s)

The Panelist 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 the panelist in this proceeding.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/17/2000; The Forum received a hard copy of the Complaint on 07/07/2000.

On 07/19/2000, NSI confirmed by e-mail to The Forum that the domain name "GOLDMASTERS.COM" is registered with NSI and that 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.

On 07/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/08/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On August 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims ownership of a State of Washington trademark registration for the mark GOLDMASTERS PRECIOUS METALS, issued November 16, 1990. The copy of the Washington State registration submitted by Complainant is in the name of David O. Berryman and claims use since October 10, 1990. It appears to be a service mark in connection with coins, bouillon, jewelry, and diamonds. It appears that David O. Berryman does business as Goldmasters Precious Metals and has advertised in telephone directory yellow pages under that name as early as 1990.

Complainant created a web site in 1997 at the domain name addresses of GOLDINVESTMENT.COM and COININVESTMENT.COM, contending that GOLDMASTERS.COM was not available at the time. The home page at these addresses bears the heading Goldmasters Coins and Bouillon, in gold letters. The text of the web site bears several references to Goldmasters Precious Metals and Goldmasters Coins and Precious Metals. Complainant owns, and its web site is accessible also through, the domain name GOLDMASTERS.NET.

Complainant contends that it has created a substantial presence on the Internet in order to provide its customers live online trading of coins and precious metals in the form of coins and bars. Complainant claims that it has gone to a great deal of effort and expense to obtain Internet business by registering the metatags "Goldmasters," "Goldmasters Coins and Bouillon," "Goldmasters Precious Metals" and others with all of the major search engines between 1997 and 2000.

Complainant claims that it is being damaged by Respondent’s registration of GOLDMASTERS.COM, in particular because the site appears to be inactive or under construction. Potential customers assume that the Complainant’s web site, or Complainant itself, is temporarily out of business. This, claims Complainant, leads to lost sales.

Complainant alleges that the non-use by Respondent demonstrates bad faith and indicates that Respondent is seeking to interfere with the domain name, and prevent others from using it in a productive manner.

B. Respondent

Respondent was registered as a limited liability company in Italy on September 6, 1985, and began its jewelry manufacturing business in that year. Since February 19, 1996, Respondent has been organized as a joint stock company.

Respondent claims superior rights to Complainant on the basis of its ownership of U.S. Federal Trademark Registration No. 1,661,637 for the mark GOLD MASTERS, issued October 22, 1991. The goods covered by the registration are "jewelry, made in significant part of gold," in Class 14. Use in commerce is claimed since 1986. Respondent alleges that it has made extensive and continuous use of the mark and trade name GOLD MASTERS since 1985 and owns various trademark registrations worldwide. Respondent has submitted evidence of use in commerce in the United States in the form of invoices for shipments to U.S. companies dated from December 6, 1986 to March 18, 2000. Respondent has also submitted copies of advertising materials in English and copies of correspondence with potential U.S. customers.

Respondent claims that it has an active web site at GOLDMASTERS.COM and GOLDMASTERS.IT, but that they are accessible only with special passwords given out by Respondent. Respondent has submitted sample pages of the web site accessed by password. The pages demonstrate a fully developed web site with Welcome Page, Company Information, Products, News, Frequently Asked Questions, etc. Respondent has also submitted a letter from Centro Servisi Aziendali S.r.l. indicating that it designed the Respondent’s web site on March 18, 1998 and that it has been active and in use since that date, but only through personal password released by Respondent.

Respondent questions whether there is a company under the name Goldmasters Precious Metals and claims that the complaint was brought in bad faith to harass the domain name holder.

C. Complainant’s Further Statement

The Panelist has also reviewed Complainant’s reply or rebuttal, which maintains that Respondent’s site is unpublished and inaccessible to the public by any means. Complainant asserts that Respondent should have provided a temporary login and password to verify that the site is active.

Further, Complainant contends that Respondent’s submission indicates that it has not promoted its mark or name, or the domain name GOLDMASTERS.COM to the Internet community. Accordingly, Complainant believes that Respondent has submitted misleading information with respect to its use of the domain name on the Internet.

FINDINGS

1. The Panelist finds that the Complainant’s trade name and mark GOLDMASTERS PRECIOUS METALS is confusingly similar to the domain name GOLDMASTERS.COM.
2. The Panelist finds that the Respondent has demonstrated its legitimate interest in the domain name.
3. The Panelist finds that the domain name has not been registered and used in bad faith.
4. The Panelist makes no findings with respect to the use or nonuse of the Respondent’s web site at GOLDMASTERS.COM.
5. The Panelist finds no bad faith on the part of the Complainant in bringing the Complaint.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 Complainant’s predominant mark, as registered in the State of Washington and as used most frequently, is GOLDMASTERS PRECIOUS METALS. Complainant also makes use of the marks GOLDMASTERS COINS AND BOUILLON and GOLDMASTERS COINS AND PRECIOUS METALS. Only the first word in these marks and trade names is distinctive. While a mark must be considered in its entirety, it is likely that Complainant’s customers, as claimed, frequently shorten their reference to Complainant to merely "GoldMasters," which is identical to the subject domain name. The lines of trade of the respective parties differ somewhat, but not sufficiently to avoid confusion. Thus, the trademark owned by Complainant is confusingly similar to the disputed domain name.

The record and the evidence demonstrate that, whether or not the Respondent’s web site is accessible by means of a password, Respondent, before any notice to it of this dispute, made demonstrable preparations to use the domain name. Such preparations were in connection with a bona fide offering of goods or services pursuant to UDRP Par. 4(c)(i).

Further, Respondent has demonstrated that it has been commonly and internationally known as a business by the domain name for many years. UDRP Par. 4(c)(ii). Moreover, Respondent has acquired trademark rights in the United States to the mark GOLD MASTERS, which rights predate any claimed use by the Complainant. Accordingly, Respondent has demonstrated its rights to, and legitimate interest, in the domain name.

There is no evidence in the record indicating that the Respondent acquired the domain name for any purpose other than its own legitimate business. While Respondent’s ownership and purported use of the domain name frustrates Complainant’s e-commerce efforts, the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name (UDRP Par. 4(b)(ii)) to disrupt the business of a competitor (UDRP Par. 4(b)(iii)) or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion (UDRP Par. 4(b)(iv)). Accordingly, Complainant has not demonstrated bad faith pursuant to the UDRP.

DECISION

For the foregoing reasons, the Panelist finds that the Complainant failed to establish all three elements required by ICANN Policy Paragraph 4(a) and, accordingly, it is the decision of the Panelist that the relief requested by the Complainant be denied.

P. Jay Hines

Dated: August 21, 2000