DECISION

B&V Associates, Inc. v. Internet Waterway, Inc.

Claim Number:  FA0303000147531

PARTIES

Complainant is B&V Associates, Inc., New York, NY (“Complainant”) represented by Harvey S. Epstein, of Robinson Brog Leinwand Greene Genovese & Gluck P.C. Respondent is Internet Waterway, Inc., Houston, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ewaterway.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 6, 2003; the Forum received a hard copy of the Complaint on March 10, 2003.

On March 12, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ewaterway.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 March 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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@ewaterway.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 April 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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:

1. Respondent’s <ewaterway.com> domain name is confusingly similar to Complainant’s EWATERWAYS.COM mark.

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

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

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

FINDINGS

Complainant, B&V Associates, Inc., holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,581,093 for the EWATERWAYS.COM mark, registered on June 18, 2002. Complainant’s mark denotes the “transportation of passengers by boat, arranging of barge cruises, inland canal and ocean cruises and travel agency services, namely, making reservations and bookings for transportation.”

As an international organization, Complainant is a member of several major “industry organizations,” including the United States Tour Operators’ Association, American Society of Travel Agents and the International Air Transport Association Network. In connection with its business, Complainant asserts that it has continuously used the EUROPEAN WATERWAYS and EWATERWAYS marks since 1996. Complainant has conducted operations from its <ewaterways.com> domain name and corresponding website since 1996.

Respondent’s <ewaterway.com> domain name was registered on June 18, 1999. Complainant’s submission indicates that Respondent’s domain name resolves to <boatingstore.com>. Complainant’s investigation of Respondent reveals that Respondent does not own the <boatingstore.com> domain name registration or corresponding website. The <boatingstore.com> domain name and corresponding website are held by Land ‘N’ Sea Distributing. The <boatingstore.com> website promotes the activities of “Boating Store,” which is engaged in the business of selling marine parts and accessories.

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 has failed to establish rights in the EWATERWAYS.COM mark for the purposes of this dispute.

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 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”).

Although Complainant received a USPTO registration for the EWATERWAYS.COM mark, the registration was granted subsequent to Respondent’s registration of the <ewaterway.com> domain name. Respondent registered the subject domain name on June 18, 1999 while Complainant applied for its registration on July 26, 2000, which was granted on June 18, 2002. Complainant’s USPTO registration supports its assertion of rights in the EWATERWAYS.COM mark since “first use” is indicated as 1996. However, Complainant’s mark is listed on the Principal Register under section 2(f) of the U.S. Trademark Act. By registering the mark pursuant to 2(f) of the Trademark Act, Complainant admits that the term is descriptive (but that it has acquired secondary meaning as a source indicator for its products). U.S. Trademark Act, 15 U.S.C. 1052, 2(f); 1115; see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003). Although Complainant’s registered mark is entitled to the presumption that it is valid, and that Complainant possesses the exclusive right to use the registered mark in commerce in connection with the goods specified in the registration, Complainant’s mark did not hold this status at the time Respondent registered the domain name. Therefore, for the purpose of this dispute, Complainant must demonstrate rights in the EWATERWAYS.COM mark at the time Respondent registered the disputed domain name (e.g., common law rights, secondary source identification). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”); cf. Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued).

As stated, in initiating a proceeding under the Policy, Complainant bears the initial burden of presenting a sufficient prima facie case showing rights in the mark. Numerous decisions have determined that the relevant point in time when Complainant must evidence rights in a mark is before Respondent’s registration of the domain name. The panel in Transpark LLC v. Network Administrator, FA 135602 (Nat. Arb. Forum Jan. 21, 2003), articulated this position in stating:

Without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held.  See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration . . . of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).

Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003);  see also DJR Holdings, LLC v. Paul Gordon a/k/a IQ Mgmt. Corp., FA 141813 (Nat. Arb. Forum Mar. 4, 2003) (“This Panel is satisfied that for purposes of the UDRP, Complainant has established common law rights in DEF JAM SOUTH prior to Respondent’s registration”).

Establishing common law rights in a mark requires a showing by Complainant that its mark has acquired secondary meaning. In other words, Complainant must establish that the public associates the asserted mark with its goods and services. See 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); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).  If a complainant fails to provide evidence that the public associates the asserted mark with its goods and services, the complainant has failed to establish common law rights. 

 

In the present dispute, Complainant’s USPTO registration indicates that the EGATEWAYS.COM mark is admittedly descriptive. Therefore, evidence establishing secondary source identification is important in illustrating that the consuming public has developed a sense of brand identity with the mark. Although Complainant’s submission includes a copy of its “European Gateways” brochure, Complainant fails to adequately support its assertion of rights at the time of Respondent’s registration with any significant evidence, statements or proof (e.g., sales figures, advertising expenditures, number of consumers served). Complainant did not assert common law rights in the EGATEWAYS.COM mark, and failed to submit relevant evidence that would suggest extensive use and secondary source identity at the time of Respondent’s registration. See Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself); see also 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).

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). Kuwait Airways Corp. v. Noronha, FA 127713 (Nat. Arb. Forum Dec. 2, 2002); see also 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 establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the Complaint be DISMISSED.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 15, 2003

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