DECISION

Republic Sheet Metal and Manufacturing Co. Inc. v. Velocity Industries

Claim Number:  FA0408000314283

PARTIES

Complainant is Republic Sheet Metal and Manufacturing Co. Inc. (“Complainant”),  represented by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.  Respondent is Velocity Industries (“Respondent”), 43153 Business Park Drive, Temecula, CA 92590.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <republicsales.net> and <republicblowers.net>, registered with Go Daddy Software, 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 August 18, 2004; the Forum received a hard copy of the Complaint on August 19, 2004.

On August 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <republicsales.net> and <republicblowers.net> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 2004 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@republicsales.net and postmaster@republicblowers.net 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 September 16, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <republicsales.net> and <republicblowers.net> domain names are confusingly similar to Complainant’s REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks.

2. Respondent does not have any rights or legitimate interests in the <republicsales.net> and <republicblowers.net> domain names.

3. Respondent registered and used the <republicsales.net> and <republicblowers.net> domain names in bad faith.

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

FINDINGS

Complainant, Republic Sheet Metal and Manufacturing Co. Inc., began operation in 1962 as a metal fabricator and has done business under its name since that time. Currently, Complainant provides product design, layout, fabrication, installation and plant maintenance, and distributes industrial equipment such as blowers, filters, and vacuum pumps. Complainant has been using the REPUBLIC SALES & MANUFACTURING mark since 1962. In 1999, Complainant discovered a mechanical design for a centrifugal blower and air knife drying system and created a line of products under the REPUBLIC BLOWER SYSTEMS mark.

Complainant applied to register four different marks with the USPTO. Complainant applied to register REPULIC SALES & MANUFACTURING (Ser. No. 76,598,908 and Ser. No. 76,598,911., app’s. filed on June 23, 2004). Complainant also applied to register REPUBLIC BLOWER SYSTEMS (Ser. No. 76,598,910 and Ser. No. 76,598,909, app’s filed on June 23, 2004).

Complainant’s main websites are located at the <republicsales.com> and <republicblowers.com> domain names where Complainant actively promotes its products and services. Complainant has operated these websites since December 1998 and July 2001, respectivly. Due to the length of Complainant’s name and mark, Complainant’s customers have shortened Complainant’s marks to “republic sales” and “republic blowers,” and Complainant has done the same on its websites.

Respondent registered the <republicsales.net> and <republicblowers.net> domain names on August 15, 2003. Respondent used the domain names to redirect Internet users to websites that offer links to and advertising for domain name search engines, companies through which to purchase domain names, web-hosting, spam filtering, and various other website manufacturing products and services. Respondent repeatedly refused to transfer the domain names to Complainant, and Respondent offered to sell Complainant the domain name registrations for $3000. On July 15, 2003, Respondent informed Complainant that it was taking the websites down. Respondent made another offer to sell the domain name registrations to Complainant and again refused to transfer them to Complainant. Currently, Respondent is not using the domain names for any active 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

Registration of a mark with a governmental authority is unnecessary for a complainant to establish rights in a mark if a common law mark has been established. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant has established rights in the REPUBLIC SALES & MANUFACTURING  and REPUBLIC BLOWER SYSTEMS marks through ownership of common law marks. A common law mark is established when a complainant’s mark becomes distinctive and acquires secondary meaning. Complainant established that through Complainant’s long-term, continued use of the REPUBLIC SALES & MANUFACTURING mark since 1962, and the REPUBLIC BLOWER SYSTEMS mark since 1999, Complainant and Complainant’s related goods and services have acquired secondary meaning and become distinctive of Complainant’s goods and services. Thus, Complainant has established secondary meaning in the REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks through its continued and exclusive use. Furthermore, Complainant’s pending trademark application for the REPULIC SALES & MANUFACTURING  and REPUBLIC BLOWER SYSTEMS marks further supports Complainant’s ownership of common law marks. 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”); 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).

Respondent’s <republicsales.net> domain name is confusingly similar to Complainant’s common law mark because the domain name incorporates the principal elements of Complainant’s REPUBLIC SALES & MANUFACTURING mark and only deviates with the removal of the generic words “& manufacturing,” and the addition of the top-level domain “.net,” thus entirely incorporating the shortened version of Complainant mark. Respondent’s <republicblowers.net> domain name is confusingly similar to Complainant’s common law mark because the domain names incorporates the principal elements of Complainant’s REPUBLIC BLOWER SYSTEMS mark and only deviates with the removal of the generic word “systems,” and the addition of the letter “s” and the top-level domain “.net,” thus entirely incorporating the shortened versions of Complainant’s marks. Incorporating Complainant’s mark in it’s entireity with the mere removal of generic words and the addition of a top-level domain renders a domain name confusingly similar to a Complainant’s mark with regard to Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down E. Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <republicsales.net> and <republicblowers.net> domain names. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <republicsales.net> and <republicblowers.net> domain names to divert Internet traffic to websites that offer links to and advertising for domain name search engines, companies through which to purchase domain names, web-hosting, spam filtering, and various other website manufacturing products and services unrelated to Complainant’s products and services. Respondent’s use of domain names that are confusingly similar to Complainant’s REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks to redirect Internet users interested in Complainant’s products and services to a commercial website that offers and advertises unrelated services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name) ; see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).

Furthermore, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <republicsales.net> and <republicblowers.net> domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the <republicsales.net> and <republicblowers.net> domain names for its own commercial gain. Respondent’s domain names divert Internet users, who intend to search under Complainant’s REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks, to commercial websites sponsored by Respondent that offer products and services unrelated to Complainant’s products and services. Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

Furthermore, Respondent registered the <republicsales.net> and <republicblowers.net> domain names with the intent of selling the domain name registrations to Complainant in excess of the documented costs directly related to the domain names. Respondent twice offered to sell Complainant the <republicsales.net> and <republicblowers.net> domain name registrations for $3000. Registering domain names for the purpose of selling the domain name registrations to Complainant in excess of documented out-of-pocket costs directly related to the domain names evidences bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <republicsales.net> and <republicblowers.net> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  September 29, 2001

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