START-UP TRADEMARK OPPOSITION POLICY

DECISION

Woodworker’s Supply Inc. v. Roloff Marketing, Inc.

Claim Number: FA0112000103055

PARTIES

Complainant is Woodworker’s Supply Inc., Caspar, WY (“Complainant”) represented by Sheldon H. Klein, Esquire of Arent, Fox, Kinter, Plotkin & Kahn, PLLC.  Respondent is Roloff Marketing Inc., Sandy, UT (“Respondent”) represented by John B. Berryhill, Esquire of Dann, Dorfman, Herrell & Skillman.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <woodworker.biz>, registered with TierraNet, Inc.

PANEL

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.

M. KELLY TILLERY, ESQUIRE AS PANELIST

PROCEDURAL HISTORY

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 December 14, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.

On December 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 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”).

A timely Response was received and determined to be complete on January 7, 2002.

Respondent’s Additional Submission was received January 15, 2002.

Complainant’s Additional Submission was received after the deadline for submissions.

On January 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. COMPLAINANT

Complainant contends that it is the owner of the <woodworker.com> domain name, made available to the public at least as early as October 22, 2001 and that the <woodworker.com> name and mark is used prominently on its website, with the “sm” service mark designation to identify the unique and personalized services offered by Complainant.

Complainant contends that it offers over 15,000 products for professional and amateur woodworkers on its website which is the most comprehensive selection in the woodworking market. 

Complainant contends that Woodworker’s Supply, Inc. was founded in 1972, is well known among professional and amateur woodworkers as a supplier of a complete range of woodworking tools and supplies and that it has annual revenues of approximately 44 million dollars.

Complainant contends that it has established a reputation among its customers for fast and efficient service and that its customers have come to recognize the <woodworker.com> name and mark as a distinctive indication of a single source of quality woodworking products.

Complainant further contends that Respondent’s domain name <woodworker.biz> is identical in all respects to that of Complainant and that Complainant’s customers and potential customers are likely to be confused by the similarity of the domain names.

Complainant further contends that Respondent is in the business of representing companies that provide restaurant supplies and equipment and has no rights or legitimate interests with respect to the domain name in question.  Complainant contends that Respondent is not named “woodworker” or any variation thereof and does not manufacture or sell woodworking tools or supplies.

Complainant contends that Respondent’s registration should thus be considered in bad faith.

Complainant further contends that Respondent registered its domain name on November 19, 2001 over six (6) years after Complainant registered <woodworker.com> and further contends that Respondent was well aware of Complainant’s existing registration and the nature of Complainant’s business prior to registering the domain name in question. 

Complainant contends that on information and belief, Respondent is not in any business related to woodworking and has no plans to enter such a business and thus Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration or to prevent Complainant from reflecting its <woodworker.com> and mark as a “.biz” domain name.

B. RESPONDENT

Respondent contends that it started in 1996 as a manufacturer’s representative firm for restaurant equipment and supplies but has grown to encompass other areas, to include its love of woodworking and currently owns and manages the website <forestblades.com> by which it distributes Forrest saw blades with its bestsellers being the Woodworker I and the Woodworker II series of saw blades.

Respondent contends that it will be marketing Woodworker saw blades by Forrest Manufacturing, Inc. at its <woodworker.biz> site.

Respondent contends that it is located in Utah, has had no dealings with Complainant and that Complainant is not a distributor or a competitor of <forestblades.com>.

Respondent further contends that planning and construction of its site began shortly after it secured approval of the <woodworker.biz> domain name and that its site will feature its best-selling blades in the Woodworker series and will include other Forrest products as well and it should be completed in January of 2002.

Respondent contends that it has no plans to rent or sell the domain name to Complainant, a competitor of Complainant or any third party and that the site will be used to feature its woodworker blades and to promote its commitment to the woodworking industry. 

Respondent contends that it has neither registered nor is using the domain name in bad faith for it has owned and managed <forestblades.com> since 1997 and its best selling blade is the Woodworker 1 saw blade.

C. ADDITIONAL SUBMISSIONS

COMPLAINANT

Complainant, by Declaration of John Wirth, Jr., one of its principals, further contends it has marketed its products on a nationwide basis through the use of a catalog, retail outlets in New Mexico, Wyoming and North Carolina respectively, trade shows and recently through its website <woodworker.com>.  Complainant contends that its name “Woodworker’s Supply, Inc.” is famous and well-known within the woodworking industry.

Complainant contends that it sells a complete line of woodworking machines, tools and supplies including table saws and saw blades at its website <woodworker.com> and through its catalogues and retail outlets.  Complainant contends that because Respondent states that it offers saw blades for sale and that it intends to use its <woodworker.biz> website to sell saw blades, that the parties are in fact direct competitors. 

Complainant further contends that if Respondent had conducted a complete “Who Is” search prior to registering its domain name in question, it would have been well aware of <woodworker.com> registration of the Complainant.

Complainant further contends that it has 1,800 to 3,000 visitors per day at its <woodworker.com> website.

Complainant contends that Respondent has no legitimate interest in the domain name in question because it does not use “woodworker” or any variation thereof as a company name or trade name and has produced no written license showing it has a legitimate interest in the alleged Woodworker I and Woodworker II trademarks used on any Forrest Manufacturing, Inc. products that it might sell.

Complainant contends that even if Respondent is a bona fide distributor of Forrest Manufacturing, Inc. saw blades, that is has no trademark rights in any of the alleged marks used in connection with the products sold on the website.

Complainant contends that Respondent intends to profit directly from the confusion of unknowing customers who will visit the new <woodworker.biz> website and/or purchase products from the site believing that they have reached the <woodworker.com> site of Complainant.

RESPONDENT

Respondent contends that Complainant has changed the basis of its initial claim that it had trademark rights in “woodworker” based upon its operation of a website of <woodworker.com> since October, 2001 to now claim that it has secondary meaning in a generic term “woodworker” based upon its use of the “Woodworker’s Supply” trademark for a number of years.

Respondent contends that Complainant has presented no evidence that it either uses the term “woodworker” simpliciter as a trademark or that any such use of the isolated term “woodworker” is recognized among relevant consumers as having secondary meaning as an indicator of source or origin of any goods or services.

Respondent contends that Complainant cannot now deny that Respondent has been selling “woodworker” brand saw blades for several years prior to Complainant’s operation of the <woodworker.com> website

Respondent contends that Complainant has intentionally concealed material information in its Complaint in that Complainant does in fact possess a Federal Trademark Registration for “Woodworker’s Supply” and that the U.S. Patent and Trademark Office maintains numerous live registrations for other marks utilizing “woodworker” as a formative term.

Respondent contends that “woodworker” is merely a formative term used in a number of trademarks and is freely used as a generic and/or descriptive term in the woodworking trade. 

Respondent contends that Complainant now acknowledges that Respondent sells “Woodworker” brand saw blades and further that it is not necessary for the Respondent to possess a trademark right in the term for purposes of a “legitimate right or interest” under STOP Policy. 

Respondent contends that if there is any dispute regarding the use of the term <woodworker.biz>, it is not between Respondent and Complainant but between others and the Respondent.

Respondent further contends that the term “woodworker” is generic and may be used by any persons for any purposes.

Respondent contends that Complainant has presented no evidence whatsoever that Respondent has registered or is using the domain name in question in bad faith.  Respondent points out that other parties own <woodworker.net>, <woodworker.org> and <wood-worker.com> and further that Respondent has perfectly legitimate interest in and reason to use <woodworker.biz>.

Respondent further contends that Complainant’s Complaint constitutes Reverse Domain Name Hijacking and the Complainant has and had no basis whatsoever to file same.

FINDINGS

(1)        Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights.  STOP Policy 4(a)(i).

(2)        Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that Respondent has no rights or legitimate interest in respect of the domain name.   STOP Policy 4(a)(ii).

(3)        Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name has been registered or is being used in bad faith.   STOP Policy 4(a)(iii).

DISCUSSION

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 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 Complainant has rights; and

(2) 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’S RIGHTS IN THE MARK

Complainant’s corporate name is “Woodworker’s Supply, Inc.”  Complainant owns a service mark registered with the U.S. Patent and Trademark Office for “Woodworker’s Supply”(Registration No. 163,7203; Registered: 3/5/91 for “retail store and catalogue services for woodworking tools, equipment and supplies”) and Complainant has utilized the domain name <woodworker.com> available to “beta” users as early as August 28, 2002 and generally available to the public on or about October 22, 2001, approximately three months ago.

Since the domain name in question here is <woodworker.biz>, Complainant bears the burden to prove that it has trademark rights in and to the mark “woodworker” which is identical to the pertinent portion of the domain name.

This Record clearly reflects that Complainant has trademark and/or service mark rights in and to the mark “Woodworker’s Supply”, but its rights to the mark “woodworker” are considerably less clear.   The Record does not reflect any registration in any registry by Complainant of the mark “woodworker” in any class.  While Complainant claims that it has utilized the mark as part of its domain name and on the website <woodworker.com> since as early as August 28, 2001 to “beta” users, the Record does not explain who those “beta users” might be and whether products were actually sold or services provided through that site utilizing that mark as early as August 28, 2001.

However, the record does reflect that since at least as early as October 22, 2001, approximately three (3) months ago, Complainant has been providing goods and/or services under the <woodworker.com> domain name. However, those portions of the website attached as Exhibits to Complainant’s Complaint appear to utilize “Woodworker’s Supply,” “Woodworker’s Supply, Inc.” and only occasionally use <woodworker.com> and then only to reference the domain name for the website.  Further, “woodworker” does not appear to be affixed to or connected with any of the products actually sold on that website.

The Declaration of James Wirth, Jr., one of the principals of Complainant, Woodworker’s Supply, Inc., goes to great lengths to describe the extent and nature of Complainant’s business, advertising and sales.  However, those allegations refer primarily to the use of the “Woodworker’s Supply” mark and not “woodworker.”

The only references to <woodworker.com> are to the effect that it has been used since October 22, 2001, and that the website gets approximately 1,800 to 3,000 hits a day.

While such “hits” to a website are substantial and admirable, since “woodworker” is at best a descriptive term and at worst a generic term, in order to establish trademark rights in and to that mark, Complainant must set forth sufficient evidence to establish that there is secondary meaning in such mark such that consumers associate “woodworker” with Woodworker’s Supply, Inc. as the source of particular goods and/or services.

Considering the absence of such evidence in Complainant’s submissions, the very brief period of Complainant’s use of “woodworker” and the reference in the Respondent’s submissions to numerous other Federally Registered Trademarks which include “woodworker” as part thereof, this Panel cannot conclude that there is sufficient evidence to find secondary meaning in “woodworker” as it relates to Complainant.  Because of this finding, it need not be decided herein whether “woodworker” is descriptive or generic. 

Under these circumstances, Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a mark in which Complainant has rights.

RIGHTS OR LEGITIMATE INTERESTS

Complainant acknowledges that Respondent is in the business of and has been selling saw blades known as Woodworker I and Woodworker II on its website <forestblades.com> and it intends to similarly sell such blades on its new website <woodworker.biz>.  However, Complainant claims that because Respondent has no trademark rights in respect to the domain name that it can have no “rights or legitimate interests” for purposes of the STOP Policy, Complainant, however, has failed to present any authority to the effect that Respondent must actually own trademark rights in and to the domain name in question in order to have “rights or legitimate interests,” as required by STOP Policy 4(a)(ii).

The STOP Policy requires that Respondent be found to have “no rights or legitimate interests in respect of the domain name.”  The draftsmen of that provision could easily have said no trademark rights in or to the domain name, as they did for the reverse claim required in STOP Policy 4(a)(i), but they did not.  While Forrest Manufacturing, Inc. (or others) may have something to say about whether and to what extent Respondent may utilize <woodworker.biz> and sell its blades, Complainant has presented no evidence to refute the position of Respondent that it is authorized to sell such blades bearing the “Woodworker” marks and that it has done so since 1997 at the <forestblades.com> website.

Respondent claims that it is in the process of constructing its <woodworker.biz> website and that it will be completed in January 2002, of which there is left one (1) day.  As the owner of <forestblades.com> and a distributor of Forrest saw blades, the best sellers of which are Woodworker I and Woodworker II, Respondent claims that it has very legitimate interests in this domain name by which it will be selling such saw blades.  Although Complainant has had ample opportunity to contradict these allegations, it has not done so. 

Although Respondent does not make such a claim directly, it is also arguable that Respondent is the “beneficiary” of a trademark identical to the domain name and therefore has rights to and legitimate interests in the domain name.  STOP Policy 4(a)(i). 

In addition, Respondent has presented ample evidence, unrefuted by Complainant, that it made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services before receiving actual notice of this dispute.  STOP Policy 4(a)(ii). 

Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests to the respect of the domain name.

REGISTRATION OR USE IN BAD FAITH

Although Complainant contends that Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of the Complainant for valuable consideration or to prevent Complainant from reflecting its <woodworker.com> name and mark as a “.biz” domain name, Complainant has offered no evidence in support of such contention or any of the elements set forth in STOP Policy 4(b).  On the other hand, Respondent has presented evidence to the effect that it is developing a business and Website for the sale of certain woodworking tools in connection with <woodworker.biz> and has no intention of selling or transferring the domain name.  Complainant has offered no evidence to counter such allegations.  Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name has been registered or is being used in bad faith.

UNTIMELY ADDITIONAL SUBMISSIONS

Complainant’s Additional Submission was received by the Forum after the deadline for submissions and is therefore not in compliance with Supplemental Rule #7.  However, it appears that Respondent received a timely copy, the Forum received the dominant portion on time and the delay was due to an understandable faxing error.  Under these circumstances, this Panel will exercise his discretion and consider the Additional Submission.  Forum STOP Supp. Rule 7; STOP Rules 10(b), (c), (d).

REVERSE DOMAIN NAME HIJACKING

Complainant’s Complaint was filed in good faith and upon reasonable basis, it does not constitute Reverse Domain Name Hijacking.  STOP Rule 15(d).

DECISION

                  Complainant’s Complaint is hereby dismissed.

M. KELLY TILLERY, ESQUIRE, PANELIST

Dated: January 30, 2002

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