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Generic Top Level Domain Name (gTLD) Decisions |
Republic Sheet Metal and Manufacturing
Co. Inc. v. Velocity Industries
Claim
Number: FA0408000314283
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.
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.
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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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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