Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc. [2002] GENDND 1375 (7 September 2002)

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DECISION

Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc.

Claim Number: FA0207000115349

PARTIES

Complainant is Quality Custom Cabinetry, New Holland, PA (“Complainant”). Respondent is Cabinet Wholesalers Inc., Lebanon, NJ (“Respondent”) represented by Robert Mahoney, of Norris, McLaughlin & Marcus PA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qualitycustomcabinetry.com>, registered with Network Solutions.

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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2002; the Forum received a hard copy of the Complaint on July 17, 2002.

On July 22, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <qualitycustomcabinetry.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 July 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 2002 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@qualitycustomcabinetry.com by e-mail.

A timely Response was received and determined to be complete on August 9, 2002.

On August 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

A. Complainant has no trademark rights in the term QUALITY CUSTOM CABINETRY and therefore, Respondent’s domain name for the same term is not likely to confuse consumers that the parties’ goods or services come from a common source.

Complainant possesses neither federal nor common law rights to the term QUALITY CUSTOM CABINETRY. As to federal rights, Complainant abandoned its own application for federal registration of the term QUALITY CUSTOM CABINETRY as of February 2002. Complainant’s abandonment arose due to a failure to respond to the Trademark Office’s Official Action, wherein Complainant’s application for trademark protection of the term QUALITY CUSTOM CABINETRY was refused on the basis that said mark was likely to be confused with three prior registrations incorporating the terms “QUALITY” and/or “CABINETRY.” It is evident from the existence of these other “cabinet” – formative marks that the term QUALITY CUSTOM CABINETRY is not subject to exclusive appropriation by any given trader in the marketplace, and therefore, it is unlikely that consumers of such goods would mistakenly confuse the source of one cabinet maker’s goods with those of another. Furthermore, the Official Action in Annex 2 indicates that, even if Complainant had sought to preserve its federal application by responding to the Trademark Examiner’s refusal to register the mark, the Examiner required a disclaimer of the entire term “QUALITY CUSTOM CABINETRY” because the wording is “descriptive or generic for cabinetry made or finished to order, and the word QUALITY ascribes laudatory attributes [of] the goods/services.” As the Examiner indicated, the wording is alternatively descriptive or generic. Generic terms are incapable of identifying an applicant’s goods and distinguishing them from the goods of others, and therefore, cannot ever function as a trademark. See, In re Gould Paper Corp., [1987] USCAFED 724; 834 F.2d 1017 (Fed.Cir. 1987); see also In re Pennzoil Prod. Co., 20 USPQ2d 1753 (TTAB) 1991). Accordingly, Complainant cannot claim rights to a generic term as a matter of federal law or common law.

As a matter of common law, Complainant alleges that the term QUALITY CUSTOM CABINETRY has become distinctive of its goods and services. Assuming arguendo that Complainant’s term is not generic but instead merely descriptive of the goods to which it pertains and thus capable of acquiring distinctiveness, Complainant has not met its burden of proof that the term QUALITY CUSTOM CABINETRY is distinctive of Complainant’s goods or services.

B. Based on the arguments above, Complainant has no rights or legitimate interests in respect of the domain name in dispute.

At all times relevant to this proceeding, Respondent has been in the business of selling cabinet products. As Complainant has no trademark rights, at common law or otherwise, to the term QUALITY CUSTOM CABINETRY, Respondent is not precluded from using this generic term on the Internet to advertise itself as a cabinet dealer, or to link this domain name to any other website in which Respondent has an interest. Further, Respondent was a dealer for Complainant at least as early as 1981. At no time then or prior to the discovery of Respondent’s domain name registration did Complainant seek to register the disputed domain name despite having nationwide distributorships as alleged in Complainant’s Declaration.

C. Complainant has not demonstrated a pattern of conduct sufficient to support its assertion that Respondent registered the domain name in bad faith.

Complainant contends that Respondent registered the domain name to disrupt Complainant’s business for commercial gain by diverting Internet traffic intended for Complainant’s business to Respondent’s business. However, Complainant’s Declaration at Exhibit 7 of the Complaint states that Complainant’s cabinet sales revenues were over $15,800,000 for 1998, over $17,000,000 for 1999, and have generally increased from year to year thereafter. By comparison, Respondent’s cabinet sales were approximately $2,400,000 in 2001. Accordingly, as Respondent’s cabinet sales account for but a fraction of the sales enjoyed by Complainant, Complainant has failed to demonstrate that Respondent’s use or registration of the disputed domain name (i) confuses consumers as to the source or origin of the products offered for sale; (ii) has disrupted the Complainant’s business; or (iii) resulted in a loss of revenue directly or indirectly attributable to Respondent’s registration or use of the name.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform 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.

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts that it has used the QUALITY CUSTOM CABINETRY mark continuously since 1995 in relation to its cabinet business. Complainant asserts and provides documentation that it holds various state trademark registrations for its QUALITY CUSTOM CABINETRY mark, including: two registrations with Pennsylvania filed on May 17, 2001 and June 24, 2002, and one New Jersey trademark registration filed on June 25, 2002. WE SO FIND.

Complainant also asserts that it has common law trademark rights in numerous states in the U.S. stemming from acquired distinctiveness, continuous and exclusive use of the QUALITY CUSTOM CABINETRY mark since 1995. See SeekAmerica Networks Inc. v. Masood, D-2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). WE SO FIND.

Complainant asserts that Respondent’s <qualitycustomcabinetry.com> domain name is identical to its QUALITY CUSTOM CABINETRY mark. The Panel finds that Respondent’s domain name reflects Complainant’s mark in its entirety, failing to deviate in spelling, form or connotation. Because generic top-level domains (“gTLD”) are required of domain name registrants, they are considered to be insubstantial when conducting a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9^th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite ... assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com’”).

Rights and Legitimate Interests Policy ¶ 4(a)(ii).

Complainant contends that Respondent was an authorized dealer of Complainant’s products from 1987 until December 31, 2000 and conducted business under the Cabinet Wholesalers, Inc. name at all times. Complainant asserts that, as a dealer, Respondent sold cabinet products bearing Complainant’s QUALITY CUSTOM CABINETRY mark. Complainant argues that, as a general rule, dealers are not considered to have rights in the trademarks they are licensed to sell or deal. WE AGREE. See Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum March 1, 2000) (holding use of a domain name is subject to the terms of a license agreement and any use in violation of the agreement would not be bona fide use within the meaning of the Policy); see also Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding although some employees or agents of Complainant were aware of Respondent’s unlicensed use of <sandalbeaches.com> and may have tacitly approved its use, that does not indicate Respondent had a trademark license, implied or otherwise).

Complainant maintains that at no time during the period when Respondent was an authorized dealer of Complainant was Respondent granted rights to use the QUALITY CUSTOM CABINETRY trademark as its own mark. Complainant asserts that it was a contractual licensing agreement, and when Complainant terminated Respondent as a dealer of its products Respondent ceased to have any right to use the QUALITY CUSTOM CABINETRY mark in any fashion. Complainant’s Submission suggests that Respondent’s intentions in registering the infringing domain name were to divert Complainant’s interested customers to its competing website, which uses Complainant’s copyrighted photographs as content. The Panel finds that Respondent’s attempts to divert Internet users to its infringing website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Although following correspondence with Complainant at or around June 6, 2001, the subject domain name has been disabled and resolves to an “Under Construction” web page. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding thay Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complaint’s trademarks).

Complainant contends that Respondent has never been known by the <qualitycustomcabinetry.com> domain name or any variation of the QUALITY CUSTOM CABINETRY trademark pursuant to Policy ¶ 4(c)(ii). Complainant also argues that at no time has Respondent used the QUALITY CUSTOM CABINETRY trademark, or a trademark incorporating any combination of the words, in association with the subject domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nokia Corp. v. Private, D-2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”); see also Charles Jourdan Holdings AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question). WE SO FIND.

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Paragraph 4(b) of the Policy represents a non-exhaustive list of bad faith evidence. Therefore, it is proper for the Panel to consider the totality of circumstances when determining if Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). Complainant asserts that Respondent had actual knowledge of Complainant’s QUALITY CUSTOM CABINETRY trademark when it sought registration of the infringing domain name. The Panel finds that Respondent’s registration of an infringing domain name, despite knowledge of Complainant’s preexisting rights, constitutes bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Complainant contends that Respondent attempted to sell its rights in the subject domain name for an exorbitant price, which included an agreement by Complainant not to terminate Respondent as an authorized dealer for ten years. Complainant contends that Respondent’s actions evidence bad faith registration and use under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent’s offer to sell the domain name at issue to Complainant was evidence of bad faith). WE AGREE.

Complainant asserts Respondent registered and uses the <qualitycustomcabinetry.com> domain name in bad faith because Respondent’s intention in registering the domain name was to disrupt Complainant’s business. Complainant believes that Respondent’s intentional infringement of Complainant’s mark represents bad faith registration and use under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “...one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant’s business and create user confusion). WE SO FIND.

Complainant also argues that Respondent utilizes Complainant’s copyrighted materials on its website in an effort to commercially capitalize on the infringing domain name. Complainant asserts that such use represents bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant). WE SO FIND.

DECISION

For the various reasons discussed above, we find in favor of Complainant and against Respondent and we direct that the domain name <qualitycustomcabinetry.com> be transferred from Respondent to Complainant, Quality Custom Cabinetry, Inc.

JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

Dated: September 7, 2002

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Generic Top Level Domain Name (gTLD) Decisions

Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc. [2002] GENDND 1375 (7 September 2002)

National Arbitration Forum