Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Sealstore.com L.C., Cedar Rapids, IA, USA ("Complainant") represented by Paul D. Burns, of Bradley & Riley PC. The Respondent is Sealpool Limited, West Midlands, United Kingdom ("Respondent").

The domain name at issue is "sealstore.com", registered with CORE.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 26, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On January 29, 2001, CORE confirmed by e-mail to the Forum that the domain name "sealstore.com" is registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 February 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2001 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@sealstore.com by e-mail.

A timely response was received and determined to be complete on February 19, 2001.

On February 22, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. The domain name in issue, "sealstore.com," is identical and confusingly similar to Complainant’s name "Sealstore.com L.L.C."

2. "Sealstore.com L.L.C." is an Iowa limited liability company organized on September 5, 2000, and is in the business of selling engineered seal products.

3. Complainant, by its use of its name, has ownership of the trademark name by virtue of common law.

4. Respondent has no rights to or legitimate interest in the domain name in issue and has acted in bad faith because the domain name was registered primarily for profiting from the sale of the domain name. Respondent informed Complainant that the domain name in issue is "for sale."

5. Respondent did not register the domain name in good faith because it was not making any use of the domain name before any notice of the dispute. Further, Respondent registered multiple similar domain names to prevent trademark holders from reflecting their mark in a domain name.

B. Respondent

1. The domain name in issue was registered on January 12, 2000, eight months before the organization of Complainant, and, accordingly, Complainant cannot claim any rights or legitimate interest in the domain name.

2. Respondent Sealpool Limited is a limited liability company incorporated under United Kingdom law on November 14, 1980. The company was incorporated under the name Seal parts Limited. Following the acquisition of a 50% shareholding in Seal Parts Limited by Sealpool AB, Sweden, on February 5, 1999, the name was legally changed to Sealpool Limited.

3. Respondent Sealpool Limited registered the domain name in good faith for the development of a website to sell hydraulic sealing system components. Since 1980, Sealpool Limited has been in the trade of the sales, distribution and storage of sealing system components used in the fields of hydraulic, pneumatic and remote control engineering. The product offering and many references to "seals" can be found on the corporate website of Sealpool Limited, and is accessible by using the URL www.sealpool.com.

4. The domain name was registered in connection with a bona fide offering of goods and services.

5. Since the registration of the name, Sealpool AB has been acquired by SKF AB (SKF.COM) on June 29, 2000.

6. All development of e-commerce sites have since been put on hold by the Sealpool Group as the sites must fit in with SKF Group global marketing policy.

7. Respondent recognized that the prompt registration of domain names was a very important part to a successful e-commerce strategy, and good names for an on-line store selling "seals" were "sealstore," "sealshop," and "sealmart." It was decided to register all three, as it was not immediately clear which one would be the best for the business. Further market research would have to take place before one or more of the names would be chosen. To delay the registration of the names even by a few days Respondent would have risked not being to register any of the names. Any disposal of "surplus" names was not an issue at the time of registration.

8. The response that the domain name in issue was "for sale" was made to an unsolicited offer by a representative of an undisclosed client.

1. "Sealstore.com L.L.C." is an Iowa limited liability company organized on September 5, 2000, and since that date has been in the business of selling engineered seal products.

2. Respondent, Sealpool Limited, is a limited liability company incorporated under United Kingdom law on November 14, 1980. The company was incorporated under the name Seal Parts Limited. Following the acquisition of a 50% shareholding in Seal Parts Limited by Sealpool AB, Sweden, on February 5, 1999, the name was legally changed to Sealpool Limited.

3. Respondent registered the domain name in issue on January 12, 2000. Since the registration of the name, Sealpool AB has been acquired by SKF AB (SKF.COM) on June 29, 2000.

4. Respondent registered the domain name with respect to the development of a website to sell hydraulic sealing system components. Since 1980, Sealpool Limited has been involved in sales, distribution, and storage of sealing system components used in the fields of hydraulic, pneumatic and remote control engineering.

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.

It is evident that the domain name is identical and confusingly similar to Complainant’s name.

Respondent contends, however, that only a dispute between a trademark or service mark owner and a domain name owner can be justiciable under the Policy, and here, the dispute is only between the owner of a trade name and not the owner of a mark.

Respondent cannot prevail on its contention. This is because Complainant could and, it is assumed, did acquire common law trademark rights based on its use of the name. it is the actual use that creates legal rights to the mark, not a race to the Patent and Trademark Office. (See 3 McCarthy, Trademarks and Unfair Competition (updated 2000) §§16.4, 16.18; Passion Group, Inc. v. Usearch, Inc. AF-0250 (eResolution Aug. 10, 2000) Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant.)

On this issue, however, Complainant cannot prevail. This is because Respondent’s explanation as to why the domain name was registered is plausible, i.e., Respondent recognized that the prompt registration of domain names was a very important part to a successful e-commerce strategy, and good names for an on-line store selling "seals" were "SEALSTORE," "SEALSHOP," and "SEALMART." It was decided to register all three, as it was not immediately clear which one would be the best for the business. Further market research would have to take place before one or more of the names would be chosen. To delay the registration of the names even by a few days Respondent would have risked not being able to register any of the names. Any disposal of "surplus" names was not an issue at the time of registration.

Under Paragraph 4(c)(i) of the Policy, prior to any notice of a dispute, use of a domain name or demonstrable preparations to use a domain name in connection with a bona fide offering of goods and services is evidence of rights and legitimate interests in a domain name. (See, Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint.)

The Panelist finds this is to be the case here.

The Panelist cannot determine that Respondent registered and has used the domain name in bad faith.

Indeed, Respondent properly contends it could not know of the existence of Complainant at the time of the registration of the domain name, because Complainant had not yet been organized and would not be for eight months.

In the Panelist’s view, even though the domain name was "for sale," there was not a sufficient showing by Complainant of Paragraph 4(b)(i) of the Policy (registration of a domain name primarily for resale to a trademark owner or a competitor).

It is concluded that Respondent registered the domain name in good faith for the development of a website to sell hydraulic sealing system components. (See, Open Systems Computing AS v. Alberto degli Alessandri. D2000-1393 (WIPO Dec. 11, 2000) finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by the Complainant.)

The claim of Complainant Sealstore.com L.L.C. against Respondent Sealpool Limited seeking to have the domain name "sealstore.com" transferred to it, be and the same, is hereby denied.

JUDGE IRVING H. PERLUSS (Retired)