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Generic Top Level Domain Name (gTLD) Decisions |
Future Steel Holdings Ltd. v. Kim
Majercik
Claim Number: FA0401000224962
PARTIES
Complainant
is Future Steel Holdings, Ltd.
Brampton, Canada (“Complainant”), represented by Olivia Maria Baratta, of Kilpatrick
Stockton LLP, 1100 Peachtree
St. N.E., Suite 2800, Atlanta, GA 30309.
Respondent is Kim Majercik,
47 Dillard Street, Murphy, NC 28906 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <steelmasterdirect.com> and <steelmasteronline.com>, 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 January 9, 2004; the Forum received
a hard copy of the
Complaint on January 12, 2004.
On
January 9, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <steelmasterdirect.com> and <steelmasteronline.com> are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
name. 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
January 14, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 3, 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@steelmasterdirect.com and
postmaster@steelmasteronline.com by e-mail.
Respondent
requested an extension of 17 days for the Response. The Forum granted this extension on February 3, 2004.
A
timely Response was received and determined to be complete on February 19, 2004.
Complainant
submitted an untimely Additional Submission.
The Submission does not fulfill UDRP Supplemental Rule 7, which states a
submission must be submitted within five days of the submission
of the Response
or the Response due date. Neither the
hard copies nor the payment were received by the February 24, 2004
deadline. However, the Panel in its
discretion elects to consider the Additional Submission despite the
deficiencies. Cf. Strum v. Nordic
Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that
"[r]uling a Response inadmissible because of formal deficiencies would
be
an extreme remedy not consistent with the basic principles of due
process").
On March 1, 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant, Future Steel Holdings, Ltd., makes the following assertions:
1. Respondent’s <steelmasterdirect.com> and <steelmasteronline.com>
domain names are confusingly similar to Complainant’s STEEL MASTER mark.
2. Respondent does not have any rights or
legitimate interests in the <steelmasterdirect.com> and <steelmasteronline.com> domain names.
3. Respondent registered and used the <steelmasterdirect.com> and <steelmasteronline.com> domain names in bad faith.
B.
Respondent
Respondent,
Kim Majercik, is a collector of vintage Volkswagen autos. Because of Respondent’s hobby, she asserts
that she and her 1972 Volkswagen are known as the “Steelmaster Bug.” Respondent alleges that she intends to use
the domain name in conjunction with her Volkswagen hobby; however, Respondent
has submitted
no evidence of preparations to use the domain name.
Respondent
contends that because the terms “steel” and “master” are generic, Respondent
cannot use them in bad faith.
Respondent
contends that Complainant only has rights in the STEEL MASTER mark as the two
separate words are used together.
Respondent asserts that Complainant should not be able to exclude all
uses of the words “steel” and “master”.
C.
Additional Submissions
Complainant
alleges that Respondent sells domain names for a profit. Complainant says that Respondent has not
offered evidence to show that she has been called “Steelmaster Bug” for over a
decade. Complainant asserts that
Respondent is employed or affiliated with Complainant’s former business
partners.
FINDINGS
Since
January 1983, Complainant has used the STEEL MASTER mark to offer and sell
prefabricated steel buildings to the general public. Complainant registered the STEEL MASTER mark on December 31, 1985
(Reg. No. 1,376,644). Complainant also
registered the STEELMASTER design mark on February 23, 1993 (Reg. No.
1,753,587). Additionally, Complainant has
used the <steelmasterusa.info> domain name since 2001.
Complainant
has invested substantial efforts and sums of money on national and local
advertising promoting its products provided under
and identified by
Complainant’s STEELMASTER marks.
Respondent
registered the <steelmasterdirect.com> and <steelmasteronline.com> domain names on December 16, 2001.
Respondent also has registered the domain name <steelmaster.us>
which incorporates Complainant’s STEELMASTER marks. Respondent is not commonly known as “steelmasterdirect.com” and
“steelmasteronline.com”.
Respondent,
prior to her adoption and use of the domain names <steelmasterdirect.com> and <steelmasteronline.com>,
was aware that Complainant was the owner of the STEELMASTER marks because of
the widespread and long-standing advertising and marketing
of products under
the STEELMASTER marks and the marketing of Complainant’s products in connection
with the STEELMASTER marks, including
online.
Moreover, Respondent is aware of Complainant’s rights because Respondent
is associated with a competitive business, owned by Complainant’s
former
business partners, and therefore would have known about her employers’
competitors.
On
November 24, 2003, Respondent told Complainant’s counsel that she would sell the
domain names to Complainant for US $500 each.
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.
Complainant
has used the STEEL MASTER mark since January 1983, registering it on December
31, 1985. It also registered the
STEELMASTER design mark on February 23, 1993 (Reg. No. 1,753,587). Additionally, it has used the
<steelmasterusa.info> domain name since 2001. Complainant has rights in the STEEL MASTER mark because of its
use in commerce and registration. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning”).
The
<steelmasterdirect.com> and <steelmasteronline.com> domain
names are confusingly similar to the STEEL MASTER mark. The only difference is the omission of the
space between the words, the addition of the gTLD “.com,” and the addition of
the descriptive
words “direct” or “online,” which do not significantly
distinguish the domain names from the mark.
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible
in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see
also State Farm Mut. Auto. Ins. Co.
v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that
<statefarmdirect.com> is confusingly similar to Complainant’s registered
mark); see also Broadcom Corp. v.
Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to Complainant’s
BROADCOM mark).
Accordingly,
the Panel finds that the <steelmasterdirect.com> and <steelmasteronline.com>
domain names are confusingly similar to the STEEL MASTER mark under Policy ¶ 4(a)(i).
Respondent is
not the owner or beneficiary of a trade or service mark that is identical to
the domain name, pursuant to UDRP Policy
¶ 4(c)(i) nor is it commonly known as
the domain name, pursuant to UDRP Policy ¶¶ 4(c)(iii). Given the WHOIS registration information,
the Panel concludes that Respondent does not have rights and legitimate
interests in the
domain name. 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 interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name).
Respondent is
not using the domain name nor has it demonstrated preparations to use the
domain name. Thus, Respondent’s actions
constitute passive holding. Therefore,
Respondent is not using the <steelmasterdirect.com>
and <steelmasteronline.com>
domain names in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use, pursuant to
UDRP Policy ¶¶ 4(c)(ii) and 4(c)(iv).
See Melbourne IT Ltd. v.
Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate
interests in the domain name where there is no proof that Respondent
made
preparations to use the domain name or one like it in connection with a bona
fide offering of goods and services before notice
of the domain name dispute,
the domain name did not resolve to a website, and Respondent is not commonly
known by the domain name);
see also Am.
Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no
rights or legitimate interests in the domain name <solgarvitamins.com>
where Respondent
merely passively held the domain name).
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the <steelmasterdirect.com>
and <steelmasteronline.com> domain names under Policy ¶ 4(a)(ii).
Respondent
is affiliated with Complainant’s competitor.
The Panel infers that Respondent has registered the domain names to
disrupt Complainant’s business pursuant to UDRP Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent
likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion); see also SR
Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001)
(finding it "obvious" that the domain names were registered for the
primary purpose
of disrupting the competitor's business when the parties are
part of the same, highly specialized field).
Respondent
had notice of Complainant’s rights in the STEEL MASTER mark based on
Complainant’s trademark registrations.
Registration of a domain name confusingly similar to a registered mark,
despite constructive knowledge of the marks holder’s rights,
evidences bad
faith registration and use. See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can
infer an intent to confuse").
Respondent also held the disputed domain
names without evidencing a bona fide intent to use them. Respondent has not made use of the disputed
domain names. The Panel may construe
this “passive holding” as evidence of bad faith registration. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (finding that “it is possible, in certain circumstances, for inactivity
by the Respondent to amount
to the domain name being used in bad faith”); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith).
Furthermore,
Respondent offered to sell the domain names to Complainant for $500 each. Therefore, the Panel infers that Respondent
used the domain names in bad faith because he offered to sell the domain names
for valuable
consideration in excess of any out of pocket costs. See Pocatello Idaho Auditorium Dist. v.
CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence
that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer
to
sell it to the trademark owner or a competitor of the trademark owner"); 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).
The Panel thus finds that Respondent
registered and used the <steelmasterdirect.com> and <steelmasteronline.com>
domain names in bad faith, and that
Policy ¶ 4(a)(iii) is 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 <steelmasterdirect.com>
and <steelmasteronline.com> domain names be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: March 15, 2004
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