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Generic Top Level Domain Name (gTLD) Decisions |
General Steel Domestic Sales LLC, d/b/a
General Steel Corporation v.
LR Malinuwskii d/b/a and or a/k/a
generalsteel.com
Claim Number: FA0301000140653
PARTIES
The
Complainant is General Steel Domestic
Sales LLC, d/b/a General Steel Corporation, Lakewood, CO, USA
(“Complainant”) represented by David S.
Fien, of David S. Fein, P.C. The Respondent is LR Malinuwski, d/b/a and/or a/k/a generalsteel.com, Golden, CO,
USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <generalsteel.com>,
registered with DomainDiscover.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict
in serving as a panelist in
this proceeding.
Linda
M. Byrne, Esq. as Panelist.
PROCEDURAL HISTORY
The
Complaint was submitted by Complainant and received by the National Arbitration
Forum (“the Forum”) on January 13, 2003.
On
January 14, 2003, DomainDiscover confirmed by e-mail to the Forum that the
domain name <generalsteel.com>
is registered with DomainDiscover and that Respondent is the current registrant
of the name. Respondent is bound by the
DomainDiscover 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 15, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 4, 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@generalsteel.com by e-mail.
A
timely response was received and determined to be complete on February 4, 2003.
On February 17, 2003, pursuant to Complainant’s request
to have the dispute decided by a one
member Panel, the Forum appointed Linda M.
Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent's Domain Name <generalsteel.com> is
identical or confusingly similar to its trademark GENERAL STEEL CORPORATION;
that Respondent does not have any right or legitimate
interest in respect of
the infringing Domain Name <generalsteel.com>; and that the
infringing Domain Name <generalsteel.com> was registered by
Respondent in bad faith and is being used in bad faith.
B.
Respondent
Respondent
denies the allegations of the Complaint, and contends that Complainant has no
rights to the descriptive term GENERAL STEEL.
Respondent contends that it has a legitimate interest in using <generalsteel.com>. Respondent further contends that it did not
register the Domain Name <generalsteel.com> in bad faith and that
it does not intend to use the Domain Name <generalsteel.com> to
sell products that compete with those of Complainant.
FINDINGS
Complainant
has registered the trademark GENERAL STEEL CORPORATION (with Design) in the
United States (U.S. Registration No. 2,668,226). Complainant has been using the mark GENERAL STEEL CORPORATION
since 1995 for prefabricated, portable metal buildings. Complainant spends millions of dollars per
year marketing and advertising its name and pre-fabricated steel building
products. Complainant is one of the
United States' leading distributors of pre-fabricated steel buildings. The above facts are not disputed by
Respondent. Complainant operates a
website at <gensteel.com>.
Respondent
is an employee of Sunward Corporation.
Respondent indicates that Sunward Corporation sells, or intends to sell,
oil well pumping units and heavy steel.
Although not specifically indicated by Respondent, Sunward (or an
affiliated company) also sells metal buildings. Sunward Corporation owns a U.S. federal trademark for SUNWARD in
connection with steel buildings and components thereof (U.S. Reg.
No.
1,117,555). Respondent represents the
Wedgcor Group, an entity affiliated with Sunwood Corporation and an entity in
direct competition with Complainant
and its products.
In the fall of 2002, Respondent purchased
the domain name <generalsteel.com>. The domain name was officially transferred to Respondent on
October 18, 2002. On December 16, 2002,
Complainant contacted Respondent and requested that the domain name <generalsteel.com>
be transferred and/or sold to Complainant.
The Respondent informed Complainant that the domain name <generalsteel.com>
was not in use and declined to sell it to Complainant. Two days later a website was activated at
the domain name <generalsteel.com>. The website was only active for a short period. The content of the website included a
statement that <generalsteel.com> was the "Internet's
Complete Source for Factory Direct Wholesale Metal Buildings." However, the website did not identify
Respondent or Respondent's employer, nor did the website contain any active
hypertext links.
On December 26, 2002, Respondent, through
its attorney, advised Complainant that it does not intend to use the domain
name <generalsteel.com> to sell products that compete with those
sold by Complainant. Respondent's
attorney advised Complainant that the brief operation of the website at <generalsteel.com>
was a mistake and that Respondent only intended to test the functionality
of the site and its server connection.
Respondent's attorney also indicated that it will not use the domain
name <generalsteel.com> to divert traffic from Complainant or
otherwise cause consumer confusion.
Finally, Respondent's attorney alluded to the existing bad relationship
between the Complainant and Respondent by noting that a number
of other legal issues
"could be sparked by the filing of a complaint."
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
Moreover, the respective goods and
services of Complainant and Respondent are highly related. They sell competing steel products. See Slep-Tone Entm't Corp. v. Sounds
Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000)
(stating that "likelihood of confusion is further increased by the fact
that the Respondent
and [Complainant] operate within the same
industry").
Accordingly,
this panel finds that the
domain name <generalsteel.com> is confusingly similar to the Complainant's registered mark
GENERAL STEEL CORPORATION.
Rights or Legitimate Interests
Respondent contends that
"Respondent's interest in owning the descriptive or generic domain <generalsteel.com>
is at least as legitimate as those of Complainant and of a multitude of third
parties who might sell steel, steel products, or use
"general steel"
in their trade name or as a trademark for their goods." This argument is without merit for several
reasons.
In its context of Complainant's
trademark, the term "GENERAL STEEL" is not merely descriptive or generic. Complainant has used its registered mark
"GENERAL STEEL CORPORATION" since 1995, and U.S. trademark law
presumes that the
mark has acquired distinctiveness during this period of use. As Respondent has pointed out, Complainant's
federal trademark registration of GENERAL STEEL CORPORATION disclaims the use
of the
words "STEEL CORPORATION."
Although this disclaimer is evidence that the U.S. Trademark Office
considered "STEEL CORPORATION" to be merely descriptive,
the
disclaimer does not mean that the U.S. Trademark Office considers the words
"GENERAL STEEL" to be merely descriptive. If the disputed domain name was <steelcorporation.com>,
then this Panel may have concluded that the term is merely descriptive
or
generic. However, the domain name is <generalsteel.com>
and the term GENERAL was not disclaimed in the registration of GENERAL
STEEL CORPORATION. In view of
Complainant's trademark rights, Respondent's sale of steel products does not
give Respondent the right to identify itself
with the mark GENERAL STEEL.
Respondent cannot make a bona fide
offering of goods and services when any use of the domain name by Respondent
would cause consumer
confusion. See,
e.g., I.C. Investigations Canada v. J.V. Bennett, FA 127707 (Nat. Arb.
Forum Dec. 9, 2002)(no bona fide use where Respondent uses a domain name that
is confusingly similar to Complainant's
mark and operates within the same
industry as Complainant).
Unauthorized commercial use of
Complainant's mark does not constitute any rights or legitimate interests in
the <generalsteel.com> domain name under Policy ¶¶ 4(c)(i)
and (iii). See Vapor Blast Mfg. Co.
v. R & S Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that 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 Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's
website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
This Panel concludes that the Respondent
has not established rights or legitimate interests in the <generalsteel.com>
domain name.
Registration and Use in Bad Faith
Respondent alleges that to date, no use
has been made of the domain name other than "a benign test use." Respondent alleges that its future
commercial use of the domain name will not be in association with products that
compete with Complainant's
product line. Respondent asserts that it intends to
sell heavy steel in connection with an oil well pumping equipment business,
i.e.,
steel that is too heavy for use in Complainant's metal buildings.
Complainant asserts that Respondent's
registration and use of the subject domain name illustrates that Respondent
registered the domain
name primarily for the purpose of disrupting the business
of Complainant; thus, Respondent's actions constitute bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See 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); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA
96102 (Nat. Art. 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); see also S. Exposure v. S.
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 and
Respondent are competitors.
Complainant's president is a former employee of the company associated
with Respondent, and the relationship between Complainant and
Respondent has
been antagonistic. Respondent cannot
contend that it was unaware of Complainant's use of the mark GENERAL STEEL
CORPORATION. See Aloe Vera of
Am. v. Norins, FA 97291 (Nat. Arb. Forum July 3, 2000)(given Respondent’s former employment by
Complainant, he was obviously aware of Complainant’s mark upon registering the
domain name); William Hill Org. v.
Fulfillment Management Servs., D2000-0826 (WIPO Sept. 17, 2000) (finding
bad faith registration and use, even though no pattern of conduct existed,
where Respondent's
employee must have had the Complainant's trademarks in mind
when choosing the disputed domain name); Inverlink Consultores S.A. v. BESA,
S.A., FA 97387 (Nat. Arb. Forum July 23, 2001) (the fact that Respondent
was a former employee of Complainant evidences that the registration
and use of
the disputed domain name was in bad faith).
Respondent's use of the domain name was to promote "metal buildings,"
which is Complainant's product line.
Based on these
facts, the only plausible explanation is that Respondent registered the
disputed domain name in order to gain customers
from Complainant and/or to
disrupt Complainant’s business. See
State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum
Sept. 27, 2000) (use of domain name comprised of Complainant's mark to divert
consumers to a web site
that promotes competing goods is evidence of bad
faith); EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA
94385 (Nat. Arb. Forum July 7, 2000) (use of Complainant's mark in domain name
disrupts Complainant's business and constitutes
bad faith); Surface Protection Indus., Inc. v. The
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's
business).
Respondent has used the domain name <generalsteel.com>
in bad faith, although the Respondent currently has no operational website at <generalsteel.com>. As noted above, Respondent has used the
domain name in connection with the sale or advertisement of the same kind of
goods that Complainant
sells.
The Panel concludes that Complainant has
provided sufficient proof of its allegations for all elements under paragraph
4(a) of the
Policy so as to establish a prima facie case upon which the relief
it now seeks can be granted.
DECISION
It is the decision of this Panel that the
Domain Name at issue, <generalsteel.com>, be TRANSFERRED
from Respondent to Complainant.
Linda M. Byrne, Esq.
Arbitrator
Dated: March 4, 2003
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