DECISION

Portland Bolt & Manufacturing Co., Inc. v. Power Fasteners

Claim Number:  FA0212000137713

PARTIES

Complainant is Portland Bolt & Manufacturing Co., Inc., Portland, OR (“Complainant”) represented by David J. Buono, of Buono Block PC. Respondent is Power Fasteners, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <portlandbolt.com>, registered with 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 23, 2002; the Forum received a hard copy of the Complaint on December 26, 2002.

On December 30, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <portlandbolt.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the 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 January 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2003 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@portlandbolt.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions in the Complaint:

1. Respondent’s <portlandbolt.com> domain name is confusingly similar to Complainant’s PB mark and <portland-bolt.com> domain name.

2. Respondent does not have any rights or legitimate interests in the <portlandbolt.com> domain name.

3. Respondent registered and used the <portlandbolt.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Portland Bolt & Manufacturing Co., is the holder of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,123,864 reflecting the PB mark. Complainant’s PB mark was registered with the USPTO on December 23, 1997 and designates “metal fasteners, namely, high-strength bolts, rods, anchor bolds and U bolts.”

Complainant states that it derives its trade name from the location of its headquarters, manufacturing facilities and distribution warehouse located in Portland, Oregon.

Complainant holds the registration for the <portland-bolt.com> domain name, and offers its product line of bolts, rods, anchor bolts and accessories from a corresponding website. Complainant maintains that its products and related goods are manufactured and distributed worldwide.

Respondent registered the <portlandbolt.com> domain name on June 9, 1998. Complainant’s investigation of Respondent’s use of the <portlandbolt.com> domain name indicates that Respondent does not maintain a website at the subject domain name, or use the domain name for any purpose.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar 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 and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant fails in establishing rights in a trademark or service mark identical or confusingly similar to the domain name under Policy ¶ 4(a)(i).

Complainant asserts that Respondent’s <portlandbolt.com> domain name is confusingly similar to Complainant’s <portland-bolt.com> domain name.  Although Complainant’s contention may have merit, it is not an assertion that the UDRP is designed to accommodate. Policy ¶ 4(a)(i) states:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (emphasis added).

More specifically, unless Complainant establishes that secondary source identification exists with its domain name among the related industry or consumers, Complainant cannot establish rights in a domain name under Policy ¶ 4(a)(i).  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

The Complaint does include information pertaining to Complainant’s trademark registration of PB with the USPTO.  Although trademark registrations are routinely used to establish rights in a mark identical or confusingly similar to the domain name in question, in the present case, PB is too remotely related to the <portlandbolt.com> domain name to fulfill Policy ¶ 4(a)(i).  “Portland Bolt” is not the likely meaning that most people would give to Complainant’s PB mark, and Complainant has provided no evidence to the Panel that would indicate otherwise.  See ISL Mktg. AG, & Fed'n. Int’l de Football Ass’n. v. Chung, D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “wc” is an abbreviation for WORLD CUP, it is not likely the meaning most people would give to those letters); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter").

Further, Complainant did not assert common law rights or rights in the trade name PORTLAND BOLT, and failed to submit any evidence suggesting extensive use or secondary source identification.  Relevant UDRP precedent does not support merely protecting Complainant’s corporate name, absent evidence of secondary source identification or extensive use of the name in relation to the specified product.  Under the UDRP, a complainant must fulfill its initial burden to prove, by a preponderance of the credible, relevant and admissible evidence, that the domain name is identical or confusingly similar to a mark in which it has rights.  See FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that 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 despite Complainant’s mark being the dominant feature of Complainant’s trade name); see also Kuwait Airways Corp. v. Noronha, FA 127713 (Nat. Arb. Forum Dec. 2, 2002) (determining that Complainant had failed its burden to provide sufficient evidence supporting its rights in the KUWAIT AIRWAYS mark).

As stated, in initiating a proceeding under the UDRP, Complainant bears the initial burden of presenting a sufficient prima facie case showing rights in a mark identical or confusingly similar to the domain name.  In the present dispute, Complainant asserts that Respondent’s domain name is confusingly similar to its domain name, an argument that is not explicitly included under the UDRP unless secondary meaning has been established in the domain name itself.  The Complaint fails to adequately support the transfer of the <portlandbolt.com> domain name with any evidence, statements or proof of extensive use and identification of the mark in the relevant industry (e.g., business letterhead, sales figures, advertising expenditures).  See Do the Hustle v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that paragraph 4(a) of the Policy outlines three elements implying that Complainant has the burden of proof as to each of the three elements); see also TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied. Because satisfaction of each element listed under paragraph 4(a) is mandatory, it is not necessary to pursue analysis under Policy ¶¶ 4(a)(ii) or (iii).  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to fulfill Policy ¶ 4(a)(i) as required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <portlandbolt.com> domain name registration

REMAIN with Respondent.

The Honorable Charles K. McCotter, Jr. (Ret.) Panelist

Dated:  February 5, 2003

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