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Generic Top Level Domain Name (gTLD) Decisions |
Great American Insurance Company v. Ron
Hamilton
Claim Number: FA0204000109753
PARTIES
Complainant
is Great American Insurance Company,
Cincinnati, OH, USA (“Complainant”) represented by David S. Levine. Respondent
is Ron Hamilton, St. Petersburg, FL,
USA (“Respondent”) represented by Ari Goldberger,
of ESQwire Law Firm.
The
domain name at issue is <greatamerican.biz>,
registered with Register.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
James
Alan Crary as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 18, 2002; the Forum
received a hard copy of the Complaint on
April 19, 2002.
On
April 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 9, 2002
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance
with paragraph 2(a) of the Rules for the Start-up
Trademark Opposition Policy (the “STOP Rules”).
On
May 9, 2002, Respondent requested, with Complainant’s consent, an extension for
the filing of its Response. The Forum
approved the request on May 9, and set a new deadline of May 24, 2002 by which
Respondent was permitted to submit its Response.
A
timely Response was received and determined to be complete on May 24, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James Alan Crary
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is the owner of two separate servicemark registrations of the GREAT AMERICAN
name. The registrations covered annuity underwriting
services, property, and
casualty, life, health, accident, and annuity insurance agency and brokerage
services, claims adjustment,
claims administration services, and insurance
underwriting services.
The
disputed domain name is identical to the servicemarks owned by the Complainant.
Complainant
was aware of no right or legitimate interest of the Respondent in the domain
name. A search of the United States Patent
and Trademark Office database
revealed no registrations for “Great American” in Respondent’s name.
Complainant
asserted that it had invested substantial time, money, and effort in it’s
brand, Great American which was used by approximately
15 separate companies all
of which used the Great American formative in their name. Complainant had also
purchased the naming rights
to a new major league baseball stadium, which would
be used by the Cincinnati Reds baseball team.
Finally,
Complainant asserted that Respondent’s use of <greatamerican.biz>
will diminish the value of the investment that had been made in its name and
potentially cause confusion among users depending upon
Respondent’s intentions
for that name, which are currently unknown.
B.
Respondent
The
Respondent is the president of Great American Natural Products, Inc., a Florida
corporation which was established in April of
1985. The corporation sold
natural products including herbs, spices, bulk foods, gourmet coffees, teas,
and perfumes.
Respondent
had a trademark registered in the state of Florida for Great American Natural Products,
Inc. First use was asserted to
have taken place in January 1985. The
registration date was May 17, 1985.
The
dominant component of Respondent’s business name is “Great American”. The
company is commonly referred to as simply “Great American”.
The
Respondent had registered the disputed domain to use for his business Great
American Natural Products, Inc.
Complainant
could not assert exclusive rights to the term “Great American” which is the
subject of tremendous third party use. There
were 326 active pending and
registered U. S. trademarks which incorporate the common term “Great American”.
There were over a thousand
businesses in the United States that contain the
common term “Great American” in their business name. A query on the Internet
search
engine Google returned 369,000 web pages containing the common term
“Great American”. There were 60 companies in the state of Florida
alone that
operated under fictitious names incorporating the term “Great American”. There
were 755 domain names that contain the
term “Great American”.
Respondent
denied bad faith registration or use of the disputed domain name. The disputed
domain name had not been sold or offered
for sale to the Complainant or any
other party. It was not registered to prevent the Complainant from reflecting
its mark in a corresponding
domain name or to disrupt Complainant’s business or
to confuse consumers. Prior to this dispute, Respondent was unaware of the
Complainant
or it’s trademark.
Respondent
maintained that under paragraph 4(c)(i) it was an owner of a trademark
registration in the state of Florida for “Great
American Natural Products,
Inc.” Respondent had established clear legitimate interest under paragraphs
(4)(c)(ii) and (iii). Respondent
had conducted business under its corporate
name since 1985 and was commonly known by the domain name. Both registration
and subsequent
use had occurred long before any notice of the dispute
concerning the domain name <greatamerican.biz>.
Respondent’s
legitimate interest was also established under paragraph 4(c)(ii) since the
disputed domain name was registered in connection
with a bona fide offering of
goods and services, namely the natural products sold by the corporation since
1985.
Finally,
the fact that “Great American” is an extremely common term subject to
substantial third party use, supported a finding that
Respondent had legitimate
interests in the disputed domain.
Respondent
asserted that Complainant had engaged in reverse domain name hijacking.
Complainant must have known that it could not have
exclusive rights to such a
common term as “Great American”. Rather than making a courtesy call or sending
an E-mail to Respondent,
Complainant launched an unwarranted shot in the dark
attack that had put Respondent to substantial expense and aggravation.
Complainant
should have known there was no basis for the Complaint and should
not be able to shelter itself in ignorance when a simple call or
E-mail would
have revealed the legitimacy of Respondent’s right to the disputed domain name
and the illegitimacy of Complainant’s
proceeding herein.
1. The Complainant is the owner of two
separate servicemark registrations for the Great American name with the United
States Patent and
Trademark Office. Those registrations are associated with
property, casualty, life, health, accident, and annuity insurance services.
2. The Respondent is the owner of a Florida
trademark registration for GREAT AMERICAN NATURAL PRODUCTS, INC.
3. Respondent has been engaged in the
business of marketing and sales of natural products including herbs, spices,
bulk foods, and other
items since 1985.
4. Respondent’s corporation has been
commonly known by the domain name since at least 1995.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established rights in the Great American mark by registration with the
United States Patent and Trademark Office and
subsequent continuous use.
Respondent’s <greatamerican.biz> domain name contains Complainant’s
formative “Great American” in its entirety. It was therefore concluded by the
Panel to be identical
within the meaning of the STOP Policy.
The Panel concluded the Respondent is the
owner of a Florida trademark registered May 1985. Respondent has rights and
legitimate interests
in the disputed domain by virtue of the registration for a
business commonly known by the domain name. See Argosy Gaming Co. v. Argosy
Publ’g Inc., DBIZ2001-00024 (WIPO Feb. 21, 2002). In that case Respondent
demonstrated that it was known by the name Argosy prior to the registration
of
the domain name.
Respondent’s assertions concerning the
operation of the business in a corporate name since 1985 selling various food
products was
unrebutted in the evidence. It therefore appeared to the Panel
that Respondent had been engaged in bona fide of offering of goods
and services
for more than 15 years prior to any notice to Respondent of a dispute. HBO
Einkuf Und Mktg. GmbH v. Coov Motorland Fahrzeugtechnic GmbH,
DBIZ2001-00052 (WIPO Feb. 14, 2002). In that case Respondent had used the
business identifier MOTORLAND in connection with a bona
fide offering of goods
or services. It’s business in motorbikes and related services served to
establish rights in respect to the
domain name MOTORLAND.
The Panel is persuaded that “Great
American” is an extremely common term subject to substantial third-party use, a
factor which may
weigh heavily towards a finding of Respondent’s legitimate
interests in the disputed domain. A similar fact situation was presented
in First
Am. Funds, Inc. v. Ult. Search, Inc. D2000-1840 (WIPO Apr. 20, 2001). The
disputed name was <firstamerican.com> which was very similar to the one
in dispute here.
Because of the common nature of the term and its extensive
third-party use the Panel found that the Respondent had legitimate interest
in
the disputed name.
Respondent has asked the Panel to make a
finding of attempted reverse domain name hijacking. Rule 1 defines reverse
domain name hijacking
as “using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.”
In order to succeed, Respondent must show
that Complainant knew of Respondent’s unassailable right or legitimate interest
in the disputed
domain name or the clear lack of bad faith registration and use
in that, nevertheless, the Complaint was made. See Sidney Opera House v.
Trilynxpty. LTD., D2000-1224 (WIPO, Oct. 31, 2000).
Panels have found reverse domain name
hijacking in similar situations in which the domain name reflected a mark that
was likely to
have multiple legitimate users. See Smart Design LLC v. Hughes
D2000-0993 (WIPO, Oct. 18, 2000). The Complainant herein must have known of
the more than 300 active pending and registered U. S.
Trademarks which
incorporate the common term “GREAT AMERICAN”. “A search of the United States
Patent and Trademark Office database
revealed no registrations for “GREAT
AMERICAN” in Respondent’s name”. (Paragraph 6b of the Complaint).
Other Panels have found that the lack of
any evidence that the Respondent had registered the name in bad faith would
strongly favor
a finding of reverse domain name hijacking. See Deutsche
Welle v. Diamond Wear Ltd. D2000-1202 (WIPO Jan. 2, 2001). In the Deutsche
Welle case, there was not a shred of evidence to suggest that Respondent in
the United States should have been aware of the Complainant,
a German
broadcasting service, when it registered the disputed domain name in 1994.
The Complaint before this Panel fails to
set forth any bad faith allegations against the Respondent. The Complainant
merely urges
that Respondent’s domain will “diminish the value and investment
Respondent [sic] has made in it’s name, and potentially cause confusion
among users depending upon Respondent’s intentions for that name which are
currently
unknown.”
The Panel also understands that a finding
of reverse domain name hijacking should be reserved for those cases where bad
faith conduct
by the Complainant is utterly clear. This is because to make a
finding of reverse hijacking in all but the clearest of cases would
have a
chilling effect on parties seeking to proceed under the STOP Policy where their
right to relief might not be clear. Certainly
other conduct by the Complainant,
such as granting an extension in the time to file a Response could be called
generous and in the
best of faith and with those thoughts in mind the Panel
concluded that a reverse hijacking finding was unwarranted in this case.
DECISION
In accordance with STOP Rule 15(e)(ii),
it was concluded that the Respondent demonstrated that it has legitimate right
to the domain
name; the Panel therefore orders that the Complaint be dismissed
and that no subsequent challenges under this Policy against the domain
name that is the subject of the Panel’s decision shall be permitted.
James Alan Crary, Panelist
Dated: July 9, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1092.html