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Generic Top Level Domain Name (gTLD) Decisions |
Leader Industries, a division of Halcore
Group, Inc. v. Digital Kansas
Claim Number: FA0302000144590
PARTIES
Complainant
is Leader Industries, a Division of
Halcore Group, Inc., Grove City, OH (“Complainant”) represented by Kevin A. Bowman, of Sebaly Shillito + Dyer. Respondent is Digital Kansas, Hutchinson, KS (“Respondent”) represented by Wade Kerrigan, of Blackwell Sanders
Peper Martin LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <leaderambulance.com>,
registered with Bulkregister.Com, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelist in
this proceeding.
The
Honorable Daniel B. Banks, Jr. (Ret.), Jeffrey M. Samuels and David Sorkin as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 3, 2003; the Forum received
a hard copy of the
Complaint on February 6, 2003.
On
February 4, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain name <leaderambulance.com>
is registered with Bulkregister.Com, Inc. and that the Respondent is the
current registrant of the name. Bulkregister.Com,
Inc. has verified that Respondent is bound by the Bulkregister.Com, 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
February 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 10, 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@leaderambulance.com by e-mail.
A
timely Response was received and determined to be complete on March 10, 2003.
On March
17, 2003, the Forum received a timely additional submission from Complainant.
On March 20, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Jeffrey M.
Samuels, David Sorkin and Daniel B. Banks, Jr., as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant:
In
its initial complaint, Complainant alleges that "Leader Ambulance" is a well-established trademark,
which is owned by Leader Industries, a division of Halcore Group, Inc. Leader Industries specializes in Type II
ambulances, wheelchair cars and executive coach transportation. Leader Industries has owned and used the registered
domain name "leader-ambulance.com" since at least 1999. In September 2002, Digital Kansas, on behalf
of Wheeled Coach, registered and began using the domain name <leaderambulance.com>. Wheeled Coach is a manufacturer of
ambulances.
Complainant
further alleges that "Leader Ambulance" is a well-established
trademark for products and services associated
with Leader Industries and is a
registered trademark with the State of California and Texas. Neither Digital Kansas nor Wheeled Coach has
ever been commonly known by, used or ever demonstrated preparations to use the
disputed
domain name in connection with a bona fide offering of goods and
services.
The
domain name was registered in bad faith and patently infringes upon Leader
Industries' established rights in the name "Leader"
within the
emergency-vehicle industry. The domain
name is intentionally confusing and directly imitates the trademarked name
"Leader Ambulance."
Complainant has registered the domain name for the purpose of disrupting
the business of Leader Industries and has intentionally attempted
to attract,
for commercial gain, Internet users to Respondent's website by creating a
likelihood of confusion with Complainant's
mark as to the source, sponsorship,
affiliation, or endorsement of Respondent's website or location of a product or
service on Respondent's
website or location.
B. Respondent:
Respondent,
Digital Kansas, operates the domain name <leaderambulance.com> for
Wheeled Coach Industries. Respondent
has attempted to transfer the domain name to Wheeled Coach Industries but the
account is frozen and transfers are not permitted
pending the current dispute.
Respondent
first argues that the Complaint must fail because Complainant cannot establish
rights in its alleged mark "Leader
Ambulance." Complainant has offered no evidence of
ownership to the mark and in fact, makes a false claim that it has registered
the mark with
the States of California and Texas. To the contrary, that mark is not a registered trademark in
either California or Texas.
(Respondent's Exhibits A and B are certificates from California and
Texas indicating that the mark is not registered in either State.)
The
mark is not registered with the U.S. Patent and Trademark Office and Respondent
is not aware of any registration of the mark in
any jurisdiction.
Respondent
submits that the reason the mark is not registered by Complainant or anyone
else is likely due to the fact that the mark
is descriptive, if not generic,
and incapable of registration.
Respondent
is the leader in the ambulance market and Complainant also sells
ambulances. The fact that Complainant
uses the word "Leader" in its corporate name does not give
Complainant exclusive rights in the
mark "Leader Ambulance."
In
order to claim common law rights in the mark, Complainant would have to show
evidence of use of the mark. Under
common law, trademark ownership rights are "appropriated only through
actual prior use in commerce." Tally-Ho,
Inc. v. Coast Cmty College Dist., 889F.2d 1018, 1022 (11th
Cir 1989).
Complainant
cannot, and has not, shown any evidence of use of the mark. The only evidence offered at all is its
registration of the domain name "leader-ambulance.com." And a search of that website reveals that
Complainant does not use the mark "Leader Ambulance" on a single
occasion on its
website or in connection with the sale of goods. Complainant does not use the mark in
commerce and has not shown sufficient evidence to establish common law rights
in the mark.
Respondent
has rights and legitimate interests in the domain name <leaderambulance.com>. First, Respondent used the domain name and
made demonstrable preparations to use the name in connection with a bona fide
offering
of goods and services before notice of this dispute. Respondent registered the name in September
2002, and has since continuously used the domain name to advertise and offer a
wide variety
of information concerning Respondent's goods and services. Respondent sells, among other things,
emergency vehicles, including ambulances, and uses the domain name to promote
its goods and
services, offer useful information to its customers, and convey
to its customers that it is the leader in the ambulance market. Respondent received notice of this dispute
in February 2003, more than five months after registration and use of the
disputed domain
name. Respondent is
making a fair use of its domain name without intent to misleadingly divert
customers or to tarnish the trademark at
issue. Respondent's use of the name remains independent of any
connection with Complainant and does not misleadingly divert customers from
Complainant. Respondent's use of the
domain name does not tarnish the trademark at issue because Complainant has no
rights in the mark "Leader
Ambulance" and because Respondent is
making a fair use of the domain name.
Complainant's
allegation that Respondent has no rights or legitimate interests in the domain
name consists entirely of two statements;
(1) that Respondent has never been
known by the domain name, which is true, and (2) that Respondent has never used
or demonstrated
preparations to use the domain name in connection with a bona
fide offering of goods or services, which is absolutely false.
Complainant
has not demonstrated that Respondent registered the domain name in bad
faith. There is no allegation that it
was registered for the purpose of selling, renting, or otherwise transferring
the domain name to Complainant
or a competitor. There is no allegation that the domain name was registered in
order to prevent Complainant from reflecting any of Complainant's trademarks
in
the corresponding domain name.
Complainant's
allegations of bad faith center on Complainant's assertion that the domain name
is intentionally confusing to Complainant's
alleged trademark and that
Respondent registered the allegedly confusing domain name to disrupt
Complainant's business and to attract
Internet users from Complainant's
website. These allegations must fail
for two reasons. First, Complainant has
not established rights in the mark "Leader Ambulance." Second, even if Complainant has rights in
the mark, Respondent has shown that it has a legitimate interest in the domain
name.
Complainant
asserts, without support or evidence of any kind, that the domain name is
causing confusion and that Respondent is using
the domain name for the purpose
of disrupting Complainant's business.
Complainant has not offered sufficient proof of bad faith to warrant a
transfer of the domain name.
C. Additional Submissions:
COMPLAINANT:
Complainant
submits documents in support of its claimed use of the mark "Leader
Ambulance." These documents
include the affidavit of Gary Hunter, President of Leader Industries; business
registration information from California
and Texas showing use of the name
Leader Industries; excerpts from the Leader Industries website; examples of
companies that have
registered the word "Leader" with the U.S. Patent
and Trademark Office; and the trademark-recognition survey of the mark
"Leader Ambulance."
As
set forth in the affidavit of Gary Hunter, the business registration forms from
California and Texas and the excerpt from the website
for Leader Industries,
the "Leader," "Leader Ambulance" and "Leader
Industries" marks have been uninterruptedly
used in commerce since 1975,
in connection with the manufacture and sale of ambulances. Wheeled Coach Industries, for which
Respondent operates the disputed domain name, is a longtime competitor of
Leader Industries and
was aware of Leader Industries' trademark and nearly identical
domain name before registration of Respondent's <leaderambulance.com>.
Complainant
submits that its original statement that it registered its trademark in
California and Texas was a mistake.
Leader Industries in fact registered to do business with these states
under the name Leader. There was no
attempt to mislead the panel as Respondent maintains.
Contrary
to Respondent's assertions, the "Leader" mark is used throughout the
Leader Industries website and the "Leader
Ambulance" mark is used
therein relating to the sale and promotion of its ambulances. The home page of Leader Industries website
greets visitors with "Leader Emergency Vehicles." From this page, a visitor can select the
specific vehicle-category in which he or she is interested. This selection includes Ambulances. Therein, Leader Industries specifically
refers to its ambulances as "Leader Ambulances." Furthermore, Leader's trademark rights are
guaranteed under Sections 43(a) and (d) of the Federal Lanham Act, 15 U.S.C.
Section 1125(a),
(d), which guarantee rights in both registered and
unregistered trademarks against infringement and bad-faith registration of
domain
names.
The
marks "Leader Industries" and "Leader Ambulance" are
neither generic nor descriptive. In
fact, the U.S. Patent Office has registered a myriad of marks using the term
"Leader." And, even if the
mark were descriptive, Leader's continuous use of that mark since 1975 would be
more than ample evidence of secondary
meaning.
Respondent
registered its domain name in bad faith.
It directly imitates Complainant's mark, is unquestionably designed to
divert traffic from Complainant's to Respondent's website,
and is obviously
intended to disrupt Complainant's business.
RESPONDENT:
Complainant
bases its Complaint solely on the mark "Leader Ambulance." However, in its Additional Submission,
Complainant attempts to amend its Complaint to broaden the scope of the panel's
analysis by
asserting alleged rights in the marks "Leader" and
"Leader Industries." This
attempt to amend is improper under NAF Supp. Rule 7 (d). As a result, the panel should disregard all
references to alleged rights in "Leader" or "Leader
Industries."
Complainant
has not met its burden of proof that it has rights in the trademark or service
mark "Leader Ambulance." The
mark is not registered with the U.S. Patent and Trademark Office and
Complainant does not own any other state registrations for
the mark. And, Complainant stated that its rights in
the trademark "Leader" and
"Leader Ambulance" are not common-law rights. Apparently Complainant is basing its
Complaint on the Federal Lanham Act, which guarantees rights in both registered
and unregistered
trademarks against infringement and bad-faith registration of
domain names. It is true that the Lanham
Act provides a civil cause of action for trademark owners; however,
it is not true the Lanham Act provides Complainant with rights in the mark
since Complainant does not claim common law rights
and does not own a
registration of the mark.
Complainant
has submitted evidence that it has registered and used the trade name
"Leader Industries" in both California
and Texas for some time. However, the trade name "Leader
Industries" is not at issue.
Complainant offers no evidence of secondary source identification and
offers no new evidence that Respondent has no rights or legitimate
interests in
the domain name at issue.
FINDINGS
1. The Respondent’s disputed domain name
<leaderambulance.com> is identical 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.
3. The Respondent registered and used the
domain name in bad faith.
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.
The domain name <leaderambulance.com>
is identical to the trademark or service mark of the Complainant. It is undisputed that Complainant has been
using this mark since 1975. Although
Complainant is incorporated as "Leader Industries", it has used the
mark "Leader Ambulance" in connection
with its ambulance division
since 1975. As such, the Panel
concludes that Complainant has established common law rights in the mark
pursuant to Policy 4(a)(i). See
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the UDRP Policy does not require "that a trademark be
registered by a governmental
authority for such rights to exist"); see
also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established).
The disputed domain name is identical
because it merely deletes the space between the words "Leader
Ambulance" and adds
the generic top-level domain ".com" to the
end of the mark. Neither of these
sufficiently distinguish Respondent's domain name from Complainant's mark. See Wembley Nat'l Stadium Ltd. V.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.nte> is identical to the WEMBLEY STADIUM mark);
see
also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to
Complainant's registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference").
The Panel finds that Respondent does not
have any rights or legitimate interests in the <leaderambulance.com>
domain name. It is a confusingly
similar domain name to Complainant's mark to sell competing goods, which is not
a bona fide offering of goods
or services pursuant to Policy 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Ticketmaster Corp. DiscoverNet, Inc.
D2001-0252 (WIPO Apr.9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's website to a competing website); see
also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec.11, 2000) (finding that
"It would be unconscionable to find a bona fide offering of services in a
respondent's
operation of a website using a domain name that is confusingly
similar to the Complainant's mark and for the same business").
Furthermore, Respondent has never been
and is not now commonly known by Leader Ambulance. As such, the panel finds Respondent has no rights or legitimate
interests in the disputed domain name pursuant to Policy 4(c)(ii). See Gallup Inc. v. Amish County 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
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the
disputed domain name or using the domain name in
connection with a legitimate or fair use).
Also, Respondent is creating a likelihood
of confusion with Complainant's mark because the parties provide substantially
the same
goods and services and are direct competitors. This use constitutes bad faith pursuant to
Policy 4(b)(iv). See 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); see also
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr.22m 2000)
(finding bad faith where Respondent attempted to attract customers to its
website and confusion by
offering similar products for sale as Complainant).
DECISION
Having
established all three elements required under ICANN Policy, the Panel
unanimously concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leaderambulance.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panel Chairman
Professor Jeffrey M. Samuels, Panelist
Professor David Sorkin, Panelist
Dated: April 2, 2003
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