DECISION

Angstrom Corporation v. Name Administration Inc. (BVI)

Claim Number: FA0405000281591

PARTIES

Complainant is Angstrom Corporation (“Complainant”), represented by Dean Boland, 3723 Pearl Road, Cleveland, OH 44109.  Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill of Dann, Dorfman, Herrell, and Skillman P.C., 1601 Market Street, Suite 2400, Philadelphia, PA 19103.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartgauge.com>, registered with Tucows Inc.

PANEL

            The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Honorable Irving H. Perluss, Alan L. Limbury and Tyrus R. Atkinson, Jr. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 28, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On May 28, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <smartgauge.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 June 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 22, 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@smartgauge.com by e-mail.

A timely Response was received and determined to be complete on June 22, 2004.

On July 8, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Irving H. Perluss, Alan L. Limbury and Tyrus R. Atkinson, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant manufactures, installs, calibrates and repairs the SMARTGAUGE systems for end users.  The SMARTGAUGE is an electronic stain measuring device that is used primarily in the metal forging, metal stamping, and metal rolling industries.

The SMARTGAUGE mark is covered under two patents.  Complaint used the term SMARTGAUGE in marketing material from November 1995.  Complainant’s SMARTGAUGE system was discussed in print in the Summer 1997 issue of FORGING magazine.

Complainant registered the <smartguage.com> domain name on July 23, 1997.  The site was launched shortly thereafter.  Complainant was active in electronic commerce, operating an informational and sales web site at <smartgauge.com>.  Through inadvertence and miscommunication between Complainant and its registrar, the <smartguage.com> registration mistakenly expired without notice to Complainant.

Over the years, SMARTGAUGE has developed a national reputation for quality and value.  The well-deserved and hard-earned reputation is reflected in the substantial and valuable body of goodwill symbolized by the well-known SMARTGAUGE mark.  The SMARTGAUGE mark enjoys an extremely high degree of recognition with the forging industry in the United States.

The <smartgauge.com> domain name fully incorporates Complainant’s SMARTGAUGE mark.  Respondent’s domain name is identical to Complainant’s SMARTGAUGE mark.

Respondent is not a licensee of Complainant.  Respondent is not commonly known as <smartgauge.com>.  Respondent is not using the domain name in connection with a bona fide offering of goods and services.  Respondent is not making any legitimate noncommercial or fair use of the domain name.

Respondent registered and used the domain name after the SMARTGAUGE mark was already distinctive and famous.  Respondent is capitalizing on the confusingly identical domain name to direct users to their website.  Internet users are misleadingly led to conclude that they are visiting a legitimate website affiliated with Complainant.

B. Respondent

This proceeding concerns the registration of a common descriptive term registered as a domain name at a time when the domain name was freely available for public registration.  The Respondent registered the domain name from among a list of expired and abandoned domain names for the purpose of providing targeted advertising relevant to the concepts embodied in the two generic terms comprising the domain name.  Some months after registering the domain name, Respondent received e-mail messages from Complainant stating that the domain name was protected by “patents” and by “copyright”.  Respondent investigated and found no federal trademark registration issued to Complainant for the SMARTGAUGE mark.  Respondent denies any knowledge of Complainant’s use of SMARTGAUGE prior to registration of the domain name.

 

U.S. state trademark registrations are perfunctory, legally effective in limited areas, and do not provide notice of a trademark outside of their respective states.  Respondent and Complainant are not residents of the same state.

The term, SMARTGAUGE, as applied to measuring and testing gauges is merely descriptive according to decisions of the United States Patent and Trademark Office.  A term which is merely descriptive cannot acquire secondary meaning in the absence of long established exclusive use.  Complainant has presented no such proof.  Furthermore, there exists extensive third-party use of the term SMARTGAUGE.

Complainant fails to prove that the domain name is identical or confusingly similar with a trade or service mark in which the Complainant has rights.

The term at issue is a common term used in the field of measurement instruments to which no party may claim a distinctive interest.  No party may establish a trademark interest in the term SMARTGAUGE for measurement instruments.  Respondent has rights and legitimate interests in the domain name.

Respondent was without actual or constructive notice of any rights Complainant may have had in SMARTGAUGE at the time of registration of the <smartgauge.com> domain name.  Respondent is not, by use of the domain name, attempting to divert consumers of the Complainant by causing a likelihood of confusion.  There is no basis for concluding that Complainant is somehow the target of a bad faith intent on the part of Respondent in registering the domain name, and the Complainant has produced no evidence to support its allegation of bad faith.

FINDINGS

1. Complainant is an Ohio corporation that manufactures and sells a device that is used in the metal forging business and is sold under the name, Smart Gauge Stain Monitor.

2. Complainant owns a trademark certificate issued by the State of Ohio for the trademark SMARTGAUGE on the August 4, 1997.

3. Complainant operated an Internet presence under the domain name <smartgauge.com> from 1997 until the domain name expired by operation of time.

4. On October 5, 2003, Respondent registered the domain name <smartgauge.com>.

5. Respondent operates under a name that appears to identify a corporation located in the Cayman Islands.  Respondent fails to state its purpose, either business or otherwise, except to allege that it registered the domain name <smartgauge.com> “from a list of expired and abandoned domain names for the purpose of providing targeted advertising relevant to the concepts embodied in the two generic terms comprising the domain name”.  The domain name, as used by the Respondent, resolves to a list of hyperlinks that presumably direct Internet users to other websites.

6. Complainant’s mark, SMARTGAUGE, is identical to Respondent’s domain name, <smartgauge.com>.

7. Complainant fails to prove that Respondent has no rights or legitimate interests in the domain name since SMARTGAUGE is a descriptive term.

8. Complainant fails to prove that Respondent acted in bad faith by the registration of the <smartgauge.com> domain name which includes a descriptive term.

9. The domain name <smartgauge.com> will not be transferred from Respondent to Complainant.

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.

Identical and/or Confusingly Similar

Complainant’s first element of proof is to show that the domain name <smartgauge.com> is identical or confusingly similar to a trademark in which the Complainant has rights.  See Policy ¶ 4(a)(i).

This requirement has been interpreted to mean that that Complainant may show its “rights” by a modest showing of proof for the purposes of this Paragraph.  See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of ‘exclusive rights’ is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that the Complainant has a bona fide basis for making the Complaint in the first place.”).  Complainant presents a document issued by the State of Ohio granting a trademark in the term SMARTGAUGE in the year 1997.  State registrations have been found to be sufficient to show rights under this Paragraph.  See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding that complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials).  See also Quality Custom Cabinetry, Inc. v. Cabin wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that complainant’s trademark registration in Pennsylvania and New Jersey operated as evidence that complainant had sufficient standing to bring a claim under the UDRP).  The state registration in Ohio is found, in this case, to be sufficient to show “rights” in the mark so as to permit Complainant to proceed.

There is no question that Complainant’s mark, SMARTGAUGE, is identical to Respondent’s domain name <smartgauge.com>.  See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov.6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s NIKE mark).   See also Am. Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct 23, 2000) (finding that the domain name <americangolf.net> is identical to Complainant’s AMERICAN GOLF mark).

Complainant prevails under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.  See Policy ¶ 4(a)(ii).  This requirement has been found to mean that Complainant must make, at a minimum, a prima facie evidentiary showing.  When Complainant makes a prima facie showing, the burden shifts to Respondent to illustrate its rights or legitimate interests.  See 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 because this information is uniquely within the knowledge and control of the Respondent).  See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 24. 2000).

Complainant contends that Respondent is not commonly known by the <smartgauge.com> domain name and therefore lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish County Store, FA96209 (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 RMO, Inc. v. Burbridge, FA96949 (Nat. Arb. Forum May 26, 3002) (interpreting the Policy to require a showing that one has been commonly known by the domain name prior to registration to prevail).  No evidence is presented in this case to suggest that Respondent is, or was ever known as SMARTGAUGE or <smartgauge.com>.

Complainant contends further that the domain name <smartgauge.com> diverts Internet users to a website which offers a search engine and a series of links relating to a variety of topics.  Complainant argues that such a factual situation does not amount to a bona fide offering of services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).  Panels have found that the use of a mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.  See Disney Enters. Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003); Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003).  Complainant includes in its exhibits a printout of the website at <smartgauge.com> that shows that Respondent’s website is a series of hyperlinks to unrelated websites.

Complainant is found to have established a prima facie showing of Respondent’s lack of rights or legitimate interests.

“The majority of Panel decisions on this point have taken the position that while the complainant has the burden of proof on this issue, once 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.”  Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug 21, 2000).

Concrete evidence is defined in the majority of Panel decisions on this point as constituting more than personal assertions. 

Respondent meets this burden by presenting concrete evidence.  The first series of evidentiary documents presented by Respondent consists of a Trademark Application dated August 1, 2002, made by a third party, not a party to these proceedings, to the United States Patent and Trademark Office for a Trademark for the word, SMARTGAUGE.  The United States Patent and Trademark Office issued an Office Action.  The Office Action stated as follows: 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods…A mark is merely descriptive under Trademark Section 2(e)(1)…if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods…Here the applicant applied to register the mark SMARTGAUGE for ‘scientific apparatus, namely a diagnostic tool used for identifying air conditioning system problems’.  The mark is merely descriptive because it describes a feature of the applicant’s goods, namely, a gauge incorporating smart technology.  The term ‘smart’ describes a feature of software or hardware that has a built in computing capability that is referred to as intelligence…based on the evidence and argument presented, registration is refused under Section 2(e)(1).

Complainant markets its product as the SmartGauge Stain Monitor.  Complainant’s exhibits describe the device as an “integrated process monitoring and control system that collects real-time tonnage, billet temperature, bearing temperature, press motor current, and many other process critical points. The system collects the data and stores this information in a powerful Oracle data base.  One can then analyze their tonnage and temperature data over an entire production run…”  Furthermore, “SmartGauge measures defection/strain in steel rolling mill housings on a continuous basis in real time…”

Both the Complainant’s device and the device sought to be registered with the mark SMARTGAUGE with the United States Patent and Trademark Office are measuring tools that use computer technology which cause them to be “smart” measuring devices.  The Panel can find no real difference in the uses made of the two devices nor find any reason why the words, SMARTGAUGE, should not be found to be merely descriptive of Complainant’s device.

A descriptive mark can warrant protection if the trademark has achieved a sufficient level of secondary meaning in the relevant community.  See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000).  One cases states: 

A word or phrase originally, and in that sense primarily, incapable to exclusive appropriation with reference to an article on the market…might nevertheless be used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product; in other words has come to be to them, his trade name.

Broadway Trading, LLC v. Gene Weissman, FA94310 (Nat Arb. Forum Apr. 25, 2000).

The burden of proof is upon Complainant to show secondary meaning.  See Staples, Inc., et al v. Staple.com, D2003-1028 (WIPO Mar. 17, 2004).  Complainant’s evidence consists of an article in a trade magazine in 1997, and its bare allegations that SMARTGAUGE is a famous mark in the metal forging industry.  The Panel finds that Complainant has produced insufficient evidence to establish secondary meaning.  Compare Pet Warehouse v. Pets.com (sales figures, customer lists and catalogs were presented in evidence); Broadway Trading LLC v. Gene Weissman (gross sales of merchandise were an item of evidence on the issue of secondary meaning); Staples, Inc., et al v. Staple.com.  In the case of General Machine Products Company, Inc. v. Prime Domains, FA92531 (Nat. Arb. Forum Mar. 16, 2000), the Panel considered the domain name <craftwork.com>.  Complainant owned a trademark for Craftwork.  The Panel held that Complainant had not proven that Respondent had no legitimate interests in respect of the domain name <craftwork.com>.  Complainant’s trademark was not fanciful or arbitrary, and Complainant had submitted no evidence to establish either fame or strong secondary meaning in its mark, such that consumers were likely to associate <craftwork.com> only with Complainant.  Respondent had shown that craftwork was in widespread use in a descriptive sense.  This showing was sufficient for the Panel to find for the Respondent under Policy ¶ 4(a)(ii).

Respondent in this case produced evidence in its exhibits to show that many business entities employ the term SMARTGAUGE, either alone or in conjunction with other words, to describe various products that such entities offer for sale. Respondent’s evidence shows that the term SMARTGAUGE is in widespread use in a descriptive sense. 

From the evidence, Complainant fails to prove that Respondent’s rights or legitimate interests in respect of the domain name <smartgauge.com> are less valid than those of Complainant.

Complainant cannot prevail under the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered the domain name after it had become distinctive and famous and that Respondent did so to capitalize on the SMARTGAUGE mark to redirect users to Respondent’s website.  Such action, Complainant argues, is evidence of bad faith. 

Complainant offers no evidence that Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration.  Complainant’s registration was notice in the State of Ohio.  Respondent is not a resident of Ohio.  The Panel has found that Complainant’s mark has not been proven to be distinctive or famous. 

Respondent registered the domain name from among a list of expired and abandoned domain names.  Complainant permitted the domain name to expire. 

The domain name is descriptive.  Any secondary meaning associated with SMARTGAUGE, absent some evidence to the contrary, is most likely unknown to anyone outside the specialized industry of metal stamping and metal forging.  See Seaway Bolt & Specials Corp. v. Digital Income, Inc., FA 1146 72 (Nat. Arb. Forum Aug. 5, 2002) (finding that because complainant’s mark was not particularly well-known outside of its field, the complainant failed to show that respondent knew or should have known about complainant at the time of registration, and that respondent did not register the domain name in bad faith).  See also Meredith Corp. v. CityHome, Inc. D2000-0223 (WIPO May 18, 2000).

Parties are free to register domain names that have been allowed to lapse by their owners and this procedure is not evidence of bad faith under the UDRP unless the selection of the domain name and the manner in which it is used are related to the willful exploitation of another’s trademark.  See Mutineer Rest. v. Ultimate Search, Inc. FA 114434 (Nat. Arb. Forum Aug. 23, 2003); Interactivos S.A. v. Ultimate Search, Inc. D2002-0189 (WIPO May 29, 2002); Canned Foods Inc. v. Ult. Search Inc, FA 96320 (Nat. Arb. Forum Feb. 13, 2001).

Complainant offers no evidence that Respondent knew of Complainant’s trademark, either actually or constructively, that Respondent had ever heard of Complainant or its SMARTGAUGE Stain Monitor prior to registration of the domain name, that Respondent is attempting to capitalize on Complainant’s goodwill, or any other fact or circumstance upon which a decision could be made in Complainant’s favor on the issue of Respondent’s bad faith registration and use.

Complainant fails to prove the elements of Policy ¶ 4(a)(iii).

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <smartgauge.com> domain name be NOT TRANSFERRED from Respondent to Complainant.

Honorable Irving H. Perluss, Alan L. Limbury and Tyrus R. Atkinson, Jr., Panelists

By Tyrus R. Atkinson, Jr., Panel Chair
Dated: July 21, 2004

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