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John Hayes v. Vaughan Enterprises [2004] GENDND 1101 (27 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Hayes v. Vaughan Enterprises

Case No. D2004-0531

1. The Parties

The Complainant is John Hayes of Montesano, Washington, United States of America.

The Respondent is Vaughan Enterprises of Newport, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <vaughan.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2004. On July 21, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 23, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 29, 2004. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Response was filed with the Center on August 9, 2004.

The Center appointed Miguel B. O’Farrell as the Sole Panelist in this matter on August 18, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Vaughan Company Inc. owns the trademark registration No. 1,634,659 VAUGHAN for “Pumping machines for liquids and slurries and replacement parts therefore” in class 7, issued on February 12, 1991. Complainant is the Marketing Manager for Vaughan Company, Inc.

Respondent owns the domain name <vaughan.com>.

Respondent agrees that the domain name (minus the gTLD) is identical to the United States trademark registration No. 1,634,659 VAUGHAN.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the domain name is identical to the VAUGHAN trademark registration No. 1,634,659 issued on February 12, 1991 (first used in commerce in 1960) owned by Vaughan Company Inc. covering “Pumping machines for liquids and slurries and replacement parts therefore.” Vaughan chopper pumps are commercial goods marketed worldwide under 33 patents (16 current).

Complainant alleges that Respondent has no rights or legitimate interests in the domain name since the website was only used to host a webpage for the “Association of British Counties” until recently. Respondent has not used the domain name for any commercial gain and has no trademarks or goods to sell.

Complainant alleges that the domain name is considered as having been registered and is being used in bad faith because the site contains no information or goods related to VAUGHAN. Domain names with the “.com” suffix are intended for commercial use, but Respondent’s site has never provided any commercial value. Currently, the site has been deleted all together.

Complainant also claims that a letter was sent via registered mail to Owain Vaughan, dated March 12, 2004, requesting the purchase of the domain name for US$1500 within 60 days of the date of the letter. No response was received from Owain Vaughan within 120 days.

B. Respondent

Respondent agrees that the domain name (minus the gTLD) is identical to the United States trademark registration No. 1,634,659 VAUGHAN.

Respondent asserts that the domain name is identical to Respondent’s surname and mentions WIPO Case No. D2001-0825, Billerbeck Schweiz AG v. Peter Billerbeck, which indicates that the use of one’s own surname in a domain name is sufficient evidence of a legitimate right or interest in the domain name.

Respondent asserts that since 1995, the domain name has been used for electronic mail purposes for members of the Vaughan family, of which Respondent is a member. Specifically, Respondent has used an e-mail address @vaughan.com since the domain name was registered. A Usenet/web search for said address produces many examples of its usage, including an Internet RFC from 1997 (RFC 2240) which, ironically, is regarding a legal basis for domain name allocation.

Respondent fails to see the relevance of the current content of the start page of the website “www.vaughan.com”. Complainant and Respondent are not competitors. The website does not attempt to mislead Internet users into believing that Respondent is in fact Complainant or use Complainant’s mark to attract users for commercial gain.

Respondent rejects the implication that to maintain ownership of a domain name the owner must engage in “commercial gain.”

Respondent rejects the implication that to maintain ownership of a domain name the owner must own a trademark.

Respondent mentions WIPO Case No. D2001-0341, José de Jesús Velázquez Jiménez v. Mailbank.com Inc., which states, regarding domain names that are “bona fide surnames,” that “Respondent is not using the domain name in its trademark sense, but rather is using [domain name] in a legitimate business enterprise.”

Respondent asserts that although unnecessary to maintain ownership of a domain name, a website does exist for the domain name and does contain content related to the Vaughan family - on unpublicized and unlinked URLs of the format “http://www.vaughan.com/firstname.”

Respondent asserts that Complainant’s trademark VAUGHAN for “pumping machines for liquids and slurries and replacement parts therefore” cannot be described as well known worldwide. There are two other VAUGHAN trademarks unrelated to Complainant registered with the United States Patent and Trademark office, namely Nos. 895,466 and 2,497,877. Complainant has no trademark registrations, whatsoever, in the United Kingdom or European Community.

Respondent, therefore, asserts that as Respondent had no knowledge of the Complainant when the domain name was registered there was no intention to act in bad faith.

Respondent rejects the assertion that a domain name must be associated with a website for it to be used in ‘good faith.’ The primary use of the domain name at the present time is for electronic mail.

Respondent rejects the assertion that to maintain ownership of the domain name, a website is required and said website must provide “information or goods related to Vaughan.” There are many examples of websites whose names are totally unrelated to the goods or services offered; for example <amazon.com>.

Respondent rejects the assertion that domain names with the “.com” suffix are intended exclusively for commercial use. Network Solutions, LLC states at “http://customersupport.networksolutions.com/article.php?id=146” that “any extension can be used for any purpose.”

Respondent rejects the assertion that to maintain ownership of a domain name, a website is required and said website must provide “commercial value.” WIPO Case No. D2000-1277, Buhl Optical Co. v. Mailbank.com, Inc., states, “[B]ecause .net and .org were not restricted gTLDs, many commercial enterprises have registered domain names in that space, just as many non-commercial entities have registered ‘.com’ domain names.”

At no time in the past nine years has Respondent ever initiated dialogue with Complainant or any of Complainant’s competitors with regard to selling or renting the domain name.

Respondent is not cybersquatting but has been legitimately using the domain name since 1995 and in doing so he is merely trying to safeguard Respondent’s family name on the Internet for the future.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Preliminary Matters

The Panel notes that Mr. Owain Vaughan filed the Response. However, Vaughan Enterprises is the correct Respondent in this case.

Possibly, this confusion is due to the fact that Mr. Owain Vaughan is the administrative, technical and billing contact of the domain name and was named as Respondent by the Complainant in its first version of the Complaint.

After the Center pointed out this mistake, the Complainant filed an amendment to the Complaint indicating that the correct Respondent is Vaughan Enterprises.

Mr. Owain Vaughan apparently did not notice this amendment and, therefore, filed the Response considering himself as the Respondent.

Despite this mistake, in accordance with paragraph 10(b) of the Rules, the Panel shall ensure that each party is given a fair opportunity to present its case. In this connection, this Panel finds that it would be appropriate to give the Respondent an opportunity to remedy the mistake taking into consideration that the Complainant has an opportunity to correct its Complaint if it is filed with deficiencies. (See paragraph 4(b) of the Rules). Nevertheless, as the decision in this case would have been the same whether the Panel had or had not considered the Response, the Panel considers it unnecessary to give the Respondent an opportunity to remedy the shortcoming.

B. Identical or Confusingly Similar

Both parties agree that the domain name <vaughan.com> is identical to trademark registration No. 1,634.659 VAUGHAN.

However, the Panel notes that the Complainant indicates that trademark registration No. 1,634,659 VAUGHAN, on which the Complaint is based, is owned by Vaughan Company Inc. This has also been confirmed by the Panel on the website of the United States Patent and Trademark Office.

Furthermore, Complainant does not claim to represent Vaughan Company Inc. nor to posses any common law right in the VAUGHAN trademark. Consequently, the Complainant is not, strictly speaking, complying with the first element required in paragraph 4(a)(i) of the Policy. Nevertheless, even if the Panel assumed that the Complainant was acting on behalf of Vaughan Company Inc. since Complainant is its Marketing Manager, a transfer decision could not be issued because, as indicated below, the Complainant has neither met the second nor the third element required in paragraphs 4(a)(ii) and (iii) of the Policy.

C. Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name since the website was only used to host a webpage for the “Association of British Counties” until recently. Complainant states that Respondent has not used the domain name for any commercial gain and has no trademarks, or goods to sell. It also asserts that the site has never provided commercial value.

The Policy indicates that “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” demonstrates Respondent’s rights or legitimate interests in the domain name (Paragraph 4(c)(iii)).

The question of whether, at the present time, the website is active or not is not relevant to decide this case. The Panel finds that Respondent’s use of the domain name admitted by the Complainant is legitimate, noncommercial and fair as described in paragraph 4(c)(iii) of the Policy and is sufficient evidence of Respondent’s legitimate interests and rights.

Furthermore, “VAUGHAN” is part of the name of Respondent “VAUGHAN ENTERPRISES.”

In this regard, the Policy indicates that if “(you [Respondent] as an individual, business, or other organization) have been commonly known by the domain name, even if you [Respondent] have acquired no trademark or service mark rights,” this fact demonstrates that Respondent has rights or legitimate interests in the domain name (Paragraph 4(c)(ii)).

In view of the foregoing reasons, the Panel finds that Respondent’s use of its name in the domain name is also sufficient evidence of its legitimate interests and rights.

Consequently, Complainant has not complied with the second element required in paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Complainant alleges that the domain name is considered as having been registered and is being used in bad faith because the site contains no information or goods related to VAUGHAN. Domain names with the “.com” suffix are intended for commercial use, but Respondent’s site has never provided any commercial value. Currently, the site has been deleted.

As explained above, Respondent has rights and legitimate interests in the domain name.

Even if the site did not contain information or goods related to “VAUGHAN” and were currently inactive, this would not constitute evidence of bad faith in the registration and use of the domain name.

There is no provision in the Policy that indicates that the registration and use of the “.com” suffix for websites with no commercial purposes constitute evidence of bad faith in the registration and use of the domain name.

Complainant has not alleged nor proved that Vaughan Company Inc.’s trademark VAUGHAN for “pumping machines for liquids and slurries and replacement parts therefore” registered in the United States is a well-known or a worldwide trademark.

Furthermore, Complainant has not alleged nor proved that Vaughan Company Inc. is known in the United Kingdom, where Respondent is domiciled, nor in the European Community.

Therefore, the Panel finds that there are no reasons to believe that at the time the domain name was registered Respondent knew the United States company Vaughan Company Inc. or its trademark VAUGHAN.

In view of the above, the Panel finds that the domain name was not registered nor use in bad faith.

Consequently, the Panel finds that the Complainant has not complied with the third element required in the Policy paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Miguel B. O’Farrell
Sole Panelist

Dated: August 27, 2004