DECISION

Curb King Borderline Edging Inc. v. Edgetec International Pty. Ltd.

Claim Number: FA0203000105892

PARTIES

The Complainant is Curb King Borderline Edging, Inc., Surrey, B.C., CANADA,  (“Complainant”) represented by Sandra Laurino.  The Respondent is Edgetec International Pty. Ltd., Brisbane, AUSTRALIA (“Respondent”) represented by Carlos Colombo of Zimmerman, Shuffield, Kiser & Sutcliffe, P.A., Orlando, FL.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <curbking.com>, registered with Verisign - Network Solutions, 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.

G. Gervaise Davis III, Esq. acted as Sole Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 14, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 18, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <curbking.com> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. 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 March 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 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@curbking.com by e-mail.

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

On April 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq. as Panelist.

Due to exceptional circumstances, the Panel was granted an extension until May 10, 2002 to issue a decision.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that <curbking.com> is identical to its CURB KING mark.  It urges that the Panel may find, even though the disputed domain name does not incorporate the spaces of Complainant’s mark, the domain name and mark are identical since spaces in domain names are not permissible.  Further, the generic top-level domain name “.com” in <curbking.com> does not differentiate the disputed domain name from Complainant’s mark.  See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”);  see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name based on the fact it does not own a trademark in CURB KING.  See Charles Jourdan Holding 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Complainant asserts that, since both the Complainant and Respondent are engaged in a similar business that, Respondent has registered and is using the disputed domain name to disrupt Complainant’s business.  Such registration and use is considered to be in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection 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); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Complainant also contends that Respondent registered the disputed domain name for the purpose of misleading potential customers of Complainant to Respondent’s website.  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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as those of Complainant).

Significantly, Complainant submitted no significant documentary evidence, beyond its mere allegations, that the latter two allegations were true.  Thus, the Panel is asked to found its decision on mere allegations as to these key elements.

B. Respondent

Respondent admits that its domain name is substantially similar to CURB KING.  However, Respondent contends that since it is an authorized licensee of the U.S. trademark owner of CURB-KING (Reg. No. 2,429,272, registered on February 20, 2001), the domain name accurately reflects its licensor’s mark.  SeeB2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001), (holding that complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS).

Respondent points out that Complainant (a Canadian business) failed to advise the Panel in this Proceeding that Complainant lost a U.S. Cancellation Proceeding for the mark in question in the USPTO, brought by the U.S. company that is the present licensor of the mark to Respondent.  Specifically, Complainant’s CURBKING U.S. Trademark No. 2,083,719 was cancelled on June 2, 2000 for being confusingly similar to Team, Inc.’s Curb-King mark pursuant to Team, Inc.’s Petition for Cancellation in Cancellation No. 29,585. This critical fact establishes that Complainant is far from being the exclusive owner of the mark in question, and that there are multiple trademark owners of similar CURB-KING marks in different countries.  Respondent is an Australian company operating from the City of Brisbane, and its licensor is a U.S. company using the mark in the U.S. and perhaps elsewhere in the world.

The Petitioner in the Cancellation Proceeding and licensor of Respondent, Team, Inc., uses the domain name <curb-king.com>.  Respondent is a licensee of Team, Inc., holder of US Trademark Mark “Curb-King” filed April 15, 1999 registered February 20, 2001 to Team, Inc., d/b/a Tool Engineering & Manufacturing, 807 West Forest, Brigham City, Utah  84302, U.S. Registration Number: 2,429,272.  Respondent attached a copy of the Licensing Agreement dated December 1, 1999 between Respondent and Team as an Exhibit.  The trademark held by Team, Inc. in the U.S. is for the following goods, and with the following claimed dates of first use:  power-operated cement landscaping edging equipment products, namely mixers, sod trimmers, cutters, and extruding machines, in Class 7, First use 3-26-1978; hand-operated cement landscaping edging equipment products, namely mixers, sod trimmers and cutters in Class 8, First use 3-26-1987; trailers for use in cement landscape edging in Class 12, First use.

To the best of the Respondent’s knowledge and belief, Complainant is not currently conducting business in Canada under the mark “curbking.”  Instead, to the best of Respondent’s knowledge, Complainant is apparently using the name “curbmaker.” The Panel notes also that the Complainant’s main Canadian registration appears to be for a logo with the name CurbKing, and does not appear to be a word mark.

Respondent claims that since it is a licensee of the CURB-KING mark and uses this mark to reflect its products and services at the website associated with <curbking.com>, Respondent has a legitimate right and interest in the disputed domain name.  See Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services, providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of Respondent); see also Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that Respondent has rights and legitimate interests where Complainant failed to show that he should be granted exclusive use of the domain name, <daf.com>, as many other organizations use the generic term "DAF" and that it was not available to him at the time he commenced business utilizing the name); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).

Respondent contends that it has not registered nor used the disputed domain name in bad faith, since it is the licensee of a U.S. company that is commonly known as CURB-KING and that holds a U.S. trademark on it.  See DJF Assocs,. Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute).

FINDINGS

Complainant registered the trademark “CURB KING” with the Canadian Intellectual Property Office on March 13, 1997, Registration Number TMA472,607.  Complainant claims to have used its mark in connection with providing concrete extruding and installing services.  Respondent registered its domain name <curbking.com> on December 6, 1999, after first obtaining a December 1999, license to use the mark from the U.S. trademark owner, although the U.S. trademark owner had not yet obtained its registered mark in the U.S., but which licensor claims first use going back as early as  1978 and later dates for other goods that are all first use dates prior to that of Complainant’s Canadian mark.  (See the facts on the dates of the various events in the foregoing section.)  For the reasons argued in the Complaint, the Panel deems the mark and the domain name substantially identical within the purview of the ICANN Rules.

The Respondent, as a licensee of the U.S. trademark owner on the mark in question, has demonstrated that it is a legitimate user of the mark as a domain name.  Complainant, on the other hand, has failed to demonstrate to this Panel that Registrant has no legitimate interest in or right to use the mark as a domain name.  Beyond unsupported allegations of Respondent’s lack of right and bad faith registration and use, Complainant has proven nothing.  In fact, Complainant has shown bad faith in its failure to advise this Panel of the competing U.S. mark and Complainant’s loss of the U.S. mark in the Cancellation Proceeding, which obviously affects Complainant’s exclusive right to preclude others from using the mark in a world market like the Internet.

There are cases holding that, if Respondent uses a domain name substantially identical to Complainant’s mark to market competing goods and services, such activity is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).   This Panel does not believe these cases are applicable here, on these facts.  See, for example, Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services). 

Rather, this Panel finds that Respondent is not truly a competitor with Complainant, since there was no evidence presented that a Respondent operating in Australia under license from a U.S. trademark owner directly competes in the same market for heavy concrete construction and equipment with a Complainant operating in Canada.  Furthermore, the failure of Complainant to disclose its dispute with Respondent’s trademark licensor and the loss of Complainant’s U.S. trademark registration to such licensor indicates, at least to this Panel, that Complainant was and is fully aware that it is not the exclusive, worldwide owner of this mark, no matter how fanciful the mark may be.  Therefore, Respondent has not registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii).  Contra, Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).  Absent a specific showing that trading on the Internet under a particular domain name is a worldwide market for the specific goods in question, this Panel is unwilling to grant exclusive rights to one national trademark owner over another, especially when there are at least two companies using the mark for similar goods and equipment in different countries.

DISCUSSION

 

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.

Identical and/or Confusingly Similar

The Panel is convinced that the disputed domain name <curbking.com> is substantially the same as Complainant’s trademarked term CURB KING.

Rights or Legitimate Interests

The Panel believes that Respondent has a legitimate right to use the domain name and the CURB KING mark, as the licensee of the U.S. trademark owner, as described in detail in the allegations of Respondent and Findings set out above.

Registration and Use in Bad Faith

While Complainant’s failure to establish Respondent’s lack of legitimate use or right to use the mark as a domain name effectively ends the case -- in favor of Respondent -- it is clear to the Panel that Respondent would also have prevailed on the final evidentiary requirements relating to the requirement of proving bad faith registration and use.  The Panel does not find any bad faith on the part of the Respondent, and Complainant demonstrated none. 

Furthermore, the Panel is most disappointed with the lack of candor on the part of the Complainant, who was clearly aware of the basis for Respondent’s rights to use the mark, to the point that if this were a contested case in a court of law, the Panel might well be justified in sanctioning the Complainant for its misconduct.  In lieu of that, the Panel will find this to be a case of attempted Reverse Domain Name Hijacking.

DECISION

The Respondent has asked that a finding of attempted Reverse Domain Name Hijacking be entered against the Complainant based on the facts set forth in its Response to the Complaint.  That request is hereby granted for the reasons set forth above.

In accordance with the ICANN Rules and NAF Supplemental Rules, the Panel hereby denies the Complainant’s request to have the <curbking.com> domain name transferred to it from the Respondent, and that an Order be entered denying such request and that the appropriate parties be so informed.

                 

G. Gervaise Davis III, Sole Panelist
Dated: May 10, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/704.html