DECISION

Larry G. Pillstrom v. Dana Savorelli

Claim Number: FA0403000248717

PARTIES

Complainant is Larry G. Pillstrom (“Complainant”), 66 Holland Drive, Farmington, AR 72730.  Respondent is Dana Savorelli (“Respondent”), 14505 S. Harris Road, Greenwood, MO 64034 and PO Box 1799, Lee’s Summit, MO 64034.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pillstromtongs.com>, registered with Gandi.

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.

Rodney C. Kyle as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 21, 2004; the Forum received a hard copy of the Complaint on March 25, 2004.

On March 22, 2004, Gandi confirmed by e-mail to the Forum that the domain name <pillstromtongs.com> is registered with Gandi and that the Respondent is the current registrant of the name.  Gandi has verified that Respondent is bound by the Gandi 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 April 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 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@pillstromtongs.com by e-mail.

A timely Response was received and determined to be complete on April 21, 2004.

On May 3, 2004 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name at issue be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Basically, Complainant makes three main sets of contentions.

FIRST MAIN SET

In the first main set of contentions, Complainant basically makes contentions by way of three points.

The first point is that, as evidenced by Complaint Attachment IV, the domain name at issue is registered to Respondent.

The second point is that there is a trademark as to PILLSTROM TONGS, in which Complainant has rights. More particularly, Complainant contends by five sub-points that (i) U.S Patent 2807495 for a tongs invention issued to Complainant’s father, as sole inventor of the invention, on September 24, 1957 (as evidenced by the copy of that U.S. patent that is Complaint Attachment III); (ii) since then, as a family business, Complainant’s father and, in turn, Complainant, have been manufacturing and marketing such tongs (primarily by word-of-mouth and an address on such tongs) and have been selling such tongs, including applying the mark PILLSTROM TONGS to the handles of such tongs (all as evidenced by the picture of such a handle that is Complaint Attachment VII, the inventor’s history of the invention that appears on Complainant’s web site and a copy of which is Complaint Attachment IX, and the copy of page 58 of Ross Allen’s Catalog from February 1964 and of page 138 of Field and Stream from November 1979 that are Complaint Attachment VIII); (iii) Complainant’s father died in October 2003 and since then Complainant has run that family business; (iv) tongs manufactured by Complainant are also sold on various sites on the internet (as evidenced by the copy of the web site pages that are Complaint Attachment X) and by Complainant’s distributors; and (v) on February 1, 2004, Complainant applied for a trademark registration of that mark.

The third point basically is that the domain name at issue is identical to said contended trademark.

SECOND MAIN SET

In the second main set of contentions, Complainant basically contends that Respondent has no “rights or legitimate interests” in respect of the domain name at issue. More particularly, Complainant contends by two points that, as evidenced by the copy of the “Contact us” portion of a Respondent web page at <www.tongs.com> which is Complaint Attachment V, (i) Respondent has another domain name (i.e. <tongs.com>); and (ii) although Respondent sells snake tongs and other snake handling items through one or more web sites, Respondent has not bought or sold any of Complainant’s tongs through any web site or otherwise and Respondent does not have a web site that mentions Complainant’s tongs.

THIRD MAIN SET

In the third main set of contentions, Complainant basically contends that Respondent registered, and is using, the domain name at issue in “bad faith.” More particularly, Complainant contends by six points that (i) Respondent has not sold any of Complainant’s tongs; (ii) Respondent registered the domain name at issue so people would be directed to Respondent’s web site and with the hope of selling Respondent’s tongs to those people; (iii) Complainant’s father contacted Respondent on February 16, 2003 asking Respondent to cancel the registration of the domain name at issue or to sell it to Complainant’s father (as evidenced by a copy of an e-mail from Complainant’s father to Respondent that is Complaint Attachment I); (iv) Respondent’s response to that e-mail was to decline to effect such a cancellation or sale and (as evidenced by Complaint Attachment II) to park the domain; (v) Complainant contacted Respondent by telephone on February 9, 2004 asking Respondent to cancel that registration or sell it to Complainant; and (vi) Respondent’s response to that telephone call was to decline to effect such a cancellation or sale and (as evidenced by Complaint Attachment II) to leave the domain parked.

B. Respondent

Basically, Respondent makes three main sets of contentions.

FIRST MAIN SET

In response to Complainant’s first main set of contentions, Respondent makes contentions by two points.

First, Respondent does not dispute Complainant’s contention that the domain name at issue is registered to Respondent. Indeed, Respondent contends It registered the domain name at issue on February 16, 2002.

Second, Respondent contends that there is no trademark of PILLSTROM TONGS in which Complainant has rights because Complainant’s February 2004 application for a trademark registration has not yet resulted in issuance of a trademark registration.

Respondent does not make any contentions as to whether the domain name at issue is identical to said contended trademark.

SECOND MAIN SET

In response to Complainant’s second main set of contentions, Respondent may well be relying on Respondent’s third main set of contentions in contending that Respondent has rights or legitimate interests in respect of the domain name at issue. More particularly, Respondent contends by at least nine points that (i) Respondent met with Complainant’s father in 1996 regarding the internet and other types of advertising, as to tongs and other snake-handling equipment, and, from that meeting and subsequent communications between Complainant’s father and Respondent, Complainant’s father did not express a desire to advertise such equipment, whether it would be advertising through the internet or otherwise; (ii) at that meeting Respondent stated to Complainant’s father that Respondent had sold some of Complainant’s father’s tongs which Respondent had purchased from distributors or had directed prospective purchasers directly to Complainant’s father; (iii) in any event, Respondent stated to Complainant’s father that Respondent would be more than happy to sell Complainant’s father’s tongs along with Respondent’s, as well as promote and advertise; (iv) Respondent’s business has been his whole livelihood and income for him and his family, whereas Respondent had conversations with Complainant’s father whereby Respondent perceived that Complainant’s father perceived that Complainant’s father’s business was just a hobby type of business; (v) although the Pillstrom family had a web site since 1997, the Pillstrom family did not express any desires regarding the domain name at issue for the intervening five years between then and when the domain name at issue was registered; (vi) Respondent had the foresight to apply for and obtain the registration of the domain name at issue, “in good business for the future”; (vii) Complainant’s father never had any desire to buy the domain name at issue and purchase of the domain name at issue has come up only after the death of Complainant’s father; (viii) although the domain name at issue was pointed at Respondent’s web site, once Complainant’s father brought that fact to Respondent’s attention and requested that such pointing stop, Respondent immediately saw to it that such pointing stopped; and (ix) Respondent would be more than happy to put up a web page about Complainant’s tongs and to distribute them.

THIRD MAIN SET

In response to Complainant’s third main set of contentions, Respondent may well be relying on Respondent’s second main set of contentions in contending that Respondent did not register, and is not using, the domain name at issue in bad faith. More particularly, Respondent contends by at least two points that (i) at the time the domain name at issue was first registered, there was no trademark of PILLSTROM TONGS or Respondent had no knowledge of the trademark PILLSTRM TONGS; and (ii) Respondent’s registration and use of the domain name at issue was never meant to hurt the Pillstrom family business in any manner.

FINDINGS

The Panel finds

(i)         the domain name at issue is registered to Respondent, there is a common-law trademark as to PILLSTROM TONGS and in which Complainant has rights, and the domain name at issue is identical thereto;

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

(iii) the domain name at issue has been registered and is being used in bad faith.

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 and 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:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. “real evidence”); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode “3”, that Rule 10(d) provides that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Third, as to construing and applying Rule 10(d), especially as to whether mode “1” rather than mode “3” applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not “put in issue”) by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being “relevant to”) establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode “2” rather than either of mode “1” or mode “3” applies, a canvassing of law and commentary shows that 

It was not desirable, nor indeed possible, to foreclose the trier’s use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that “The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question.”[5]

Identical or Confusingly Similar

The domain name at issue is registered to Respondent. Respondent’s not disputing Complainant’s contention that the domain name at issue is registered to Respondent results in the third of the four rules and principles of law set out in the immediately preceding paragraph hereof applying: Complainant’s contention is admitted by Respondent and Complaint Attachment IV is immaterial, and hence inadmissible, as to establishing that fact.

There is a common-law trademark as to PILLSTROM TONGS and in which Complainant has rights. The second point of Respondent’s first main set of contentions puts in issue the second point of Complainant’s first main set of contentions (i.e. the point that there is a trademark as to PILLSTROM TONGS, in which Complainant has rights) and, more particularly, puts in issue the fifth of Complainant’s associated five sub-points (i.e. the sub-point that on February 1, 2004, Complainant applied for a trademark registration of that mark). Respondent does not, however, put in issue the first four of those five sub-points. Respondent therefore admits those first four sub-points. In turn, the evidence referred to in those first four sub-points is immaterial, and hence inadmissible, as to establishing those facts. However, the facts ascertained by Respondent’s admission of those first four sub-points prove the existence of a common-law trademark as to PILLSTROM TONGS and in which Complainant has rights. See, e.g., British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000), which includes that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” and applies the Policy to “unregistered trademarks and service marks”;  Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000), which includes that the Complainant therein has common-law rights in the mark FISHTECH, which it used since 1982.

The domain name at issue is identical to PILLSTROM TONGS. Respondent’s not disputing Complainant’s contention that the domain name at issue is identical to what Complainant contends is Complainant’s trademark, results in Respondent admitting the Complainant contention that the domain name at issue is identical to what Complainant contends is Complainant’s trademark. Moreover, that the domain name at issue omits the space between the words “Pillstrom” and “tongs” does not significantly distinguish the domain name at issue from the mark.  See, e.g., Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000), finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark; Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000), finding that the domain name <croatiaairlines.com> is identical to that complainant’s CROATIA AIRLINES trademark.

In view especially of the three immediately preceding paragraphs hereof, Policy ¶ 4(a)(i) is proven as to the domain name at issue.

           

Rights or Legitimate Interests

The context in which this part of this discussion occurs includes (i) Policy ¶ 4(c); and 4(a)(ii) administrative panel decisions as to burden of production.

Policy Paragraph 4(c)

Policy ¶ 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy ¶] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

(See endnote 2 hereof for some provisions of Rule 5.)

Complainant’s second main set of contentions amounts to a pleading of Policy ¶ 4(a)(ii) and of negatives of the enumerated parts of Policy ¶ 4(c), together with the corresponding Complaint Attachment V evidence of the “Contact us” portion of a Respondent web page at <www.tongs.com>. In view thereof, Complainant has made a prima facie showing that the domain name at issue is within Policy ¶ 4(a)(ii).

Administrative Panel Decisions As To Burden Of Production

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue” (emphasis in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).)

Respondent has not met that burden. Instead, Respondent’s second main set of contentions puts in issue Complainant’s second main set of contentions and as a result Complaint Attachment V is material evidence. Moreover, that attachment is relevant and proves what Complainant contends it proves. In contrast, Respondent has not submitted any evidence; moreover, even if any of the nine points contained in Respondent’s second  main set of contentions were supported by evidence, neither individually nor in any combination with one another would any of those nine points remove the domain name at issue from within Policy ¶ 4(a)(ii).

Instead, Respondent was appropriating Complainant’s mark to sell various competing products and that is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use, pursuant to Policy ¶ 4(c)(iii). See, e.g., Computerized Sec. Sys., Inc.  v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods; Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003), finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing web site.  Nor is there anything in the record that indicates that Respondent is currently known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). See, e.g., Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; 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.

Summary

In view especially of the two immediately preceding paragraph hereof, Policy ¶ 4(a)(ii) is proven as to the domain name at issue.

Registration and Use in Bad Faith

The context in which this part of this discussion occurs includes Policy ¶ 4(b).

Policy ¶ 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy ¶] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

As for each of Policy ¶¶ 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced via application of the respective one of those three provisions. In this proceeding, none of them appears to have been contended for by Complainant.

As for Policy ¶ 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced via application of that provision. Complainant’s third main set of contentions amounts to a pleading of Policy ¶ 4(b)(iv), together with the corresponding Complaint Attachment I evidence (of e-mail from Complainant’s father to Respondent, basically commencing this dispute and concerning Respondent’s using the domain name at issue to point to Respondent’s web site) and Complaint Attachment II evidence (of Respondent’s response to that e-mail, i.e. the response of parking the domain). That evidence proves what Complainant contends it proves, aside from the inconsequential matter of whether Complainant’s father sought to purchase the domain name at issue from Respondent as contrasted with seeking cancellation of that registration. In contrast, Respondent’s third main set of contentions does not put in issue the basic facts of Complainant’s third main set of contentions, and to the extent that Respondent relies on one or more of the nine points from Respondent’s second main set of contention, they do not suffice: they are not supported by evidence, and points “i” to “vii” and “ix” are as irrelevant in this context as in the Policy ¶ 4(c) context and point “viii” (i.e. that Respondent was unaware of the pointing) is as implausible in this context as it was in the Policy ¶ 4(c) context. Moreover, Respondent’s contentions that at the time the domain name at issue was first registered there was no trademark of PILLSTROM TONGS or that Respondent had no knowledge of the trademark PILLSTROM TONGS are respectively (i) not evidenced, and wrong in view of the evidence referred to in Complainant’s first main set of contentions; and (ii) not evidenced, and implausible. Respondent’s contention that Respondent’s registration and use of the domain name at issue was never meant to hurt the Pillstrom family business in any manner is, likewise, not evidenced and is implausible.

In contrast to Respondent’s contentions and in accordance with Complainant’s contentions, Respondent is using a domain name identical to Complainant’s mark to sell goods. Respondent was creating a likelihood of confusion for commercial gain, as defined by Policy ¶ 4(b)(iv). See, e.g., Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with that Complainant’s illustrates that Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv); TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001), finding bad faith where a respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of a Complainant. Respondent has also averred that it knew of Complainant’s business when it registered the disputed domain name.  While notice itself does not indicate bad faith, in this case the relationship between Respondent and Complainant implies a predatory intent and bad faith registration and use, pursuant to Policy ¶ 4(a)(iii). See, e.g., 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”; Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002), holding that “Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.” 

In view especially of what is set out in the two immediately preceding paragraphs, Policy ¶ 4(b)(iv) is proven.

In view especially of the three immediately preceding paragraphs hereof, Policy ¶ 4(a)(iii) is proven as to the domain name at issue.

DECISION

All three elements required under the ICANN Policy having been established, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <pillstromtongs.com> domain name be TRANSFERRED from Respondent to Complainant.

Rodney C. Kyle, Panelist
Dated: May 14, 2004

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