Optimas OE Solutions, LLC v. Office Office / Office Webmaster / Mario Dianese
Claim Number: FA2104001943328
Complainant is Optimas OE Solutions, LLC (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Office Office / Office Webmaster / Mario Dianese (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <circleboltnut.com> and <circlebolts.com>, both registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On April 29, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <circleboltnut.com> and <circlebolts.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@circleboltnut.com, postmaster@circlebolts.com. Also on May 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not owned by one party. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that the domain names are effectively controlled by a single person or entity, operating under several aliases. The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
That common control is said to be shown by the facts that neither domain name resolves to an active website and yet both have been used to generate email attempting to impersonate the same former employee of Complainant’s business.
The Panel considers that this is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, referring to them together as “Respondent”.
A. Complainant
Complainant asserts trademark rights in CIRCLE BOLT & NUT and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons which follow, the only factual findings pertinent to the decision in this case are that:
1. Complainant is a provider of supply management programs and systems and acquired another company, Circle Bolt & Nut Co., Inc. in order to expand its fastener and specialty hardware business; and
2. Complainant has since that acquisition filed Trademark Application Serial No. 90527035, for the trademark CIRCLE BOLT & NUT with the United States Patent and Trademark Office (“USPTO”).
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."
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Complaint states that:
“The mark at issue is Complainant’s common law trademark and pending US federal application for CIRCLE BOLT & NUT.”
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). However, the Panel notes that Trademark Application Serial No. 90527035, filed February 12, 2021 with the USPTO, has not so far matured to registration and thus cannot form the basis of a claim to trademark rights under the Policy.
Nonetheless, paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights and UDRP decisions have uniformly found that a governmental registration is not required if the complainant can, instead, establish common law rights (see, for example, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018)).
Proof of common law rights becomes the critical aspect of these proceedings and in that regard the key submissions in the Complaint are that the CIRCLE BOLT & NUT trademark has been in use since 1979 when Circle Bolt & Nut Co., Inc. was founded. In 2018 Complainant acquired Circle Bolt & Nut Co., Inc. to expand its fastener and specialty hardware business. Circle Bolt & Nut Co. Inc. continues to operate as a division of Complainant.
Common law trademark rights may be established through use and public recognition of a putative mark such that it has come to acquire secondary meaning (see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
These are many other similar decisions under the Policy are reflected by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”), which asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? In answer, the expressed consensus of opinion of UDRP panelists is that:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
The evidence in support of the claim to common law trademark rights in this case comprises:
(a) the Declaration of Jim Castellino, President and CEO of Circle Bolt & Nut Co. Inc. (“Castellino”);
(b) a screen capture of the homepage resolving from <circlebolt.com> at November 27, 2002, obtained via the Internet Archive <archive.org> (“WayBack Machine”); and
(c) screenshots from the resolving <circlebolt.com> website in April 2021 (“the Current Use”).
In so far as relevant to the issue of common law rights, Castellino declares that Circle Bolt & Nut Co., Inc. continuously used “the CIRCLE BOLT & NUT trademark” since 1979 and that it “has owned and operated the <circlebolt.com> domain name since 2002”. Castellino does not better define “the CIRCLE BOLT & NUT trademark” and, as will be seen, the evidence provided with the Complaint does not show use of a word mark of that kind.
The WayBack Machine evidence provided is limited to what seems to be the first screen capture of the website resolving from <circlebolt.com> soon after that domain name was registered. It references the company name, Circle Bolt & Nut Co., Inc., and shows a stylised logo where the realistic image of a joined nut and bolt superimpose upon an annulus inside of which the word, CIRCLE, is prominently shown, along with reduced emphasis on two other words, BOLT & NUT (“the Nut and Bolt Logo”).
The Panel observes that the WayBack Machine also shows signs that by 2007-8 the website was lacking functionality and that, by May 2013, when coherent pages reappear, the captures show the company referring to itself as “CBN”, along with the following text:
“Since 1979, Circle has grown from one facility in Northeast PA to national coverage through seven full service branches and other types of satellite warehouse & service locations.” (emphasis added)
Further, the Panel observes that by December 2014 Circle Bolt & Nut Co., Inc. had adopted a very different geometrically styled logo based upon a nut image and prominently using the letters, CBN, set above the smaller, descriptive words, “Fastening Solutions” (“the CBN Logo”). Nowhere can there be seen use of the plain words CIRCLE BOLT & NUT in this material other than as part of the company name in, for example, address or contact information.
As stated, the Current Use comprises screenshots from the website resolving from <circlebolt.com> from April this year - this is - more than two years since the acquisition of Circle Bolt & Nut Co., Inc. by Complainant. Those screenshots show use of a logo comprising a stylized geometric device, different again from anything seen before, used prominently with the name OPTIMAS, underneath which is written in much smaller script, “Circle Bolt & Nut” (“the OPTIMAS Logo”). Furthermore, those pages include the text: “CBN Fastening Solutions (Circle Bolt and Nut Co., Inc.) has a wide range of products …”
In short, there is nowhere in the evidence provided any cogent proof of use of what Castellino described as “the CIRCLE BOLT & NUT trademark”. The high-tide mark is limited evidence of use of those words as part of the company name. There is no evidence of their use in a trademark sense. Instead, the evidence shows, at one time or another, six more likely trademark candidates, being, the Nut and Bolt Logo, the letters “CNB”, the word “CIRCLE”, the CNB Logo, the OPTIMAS Logo and “CBN Fastening Solutions”.
Absent a Response the Panel is, within reason, entitled to decide the matter based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, Complainant must still fundamentally make its case and the statement in the Complaint that “[t]he current and archived webpages illustrate that the mark has been used consistently for 18 years” is simply not substantiated by the evidence provided. There is no evidence of use of the words CIRCLE BOLT & NUT, per se. There is no evidence of use of the words CIRCLE BOLT & NUT in a fanciful mark consisting primarily of those words. There is no sales evidence. In terms of the factors laid out in the WIPO Overview, the claim that the expression, CIRCLE BOLT & NUT, has come to uniquely identify Complainant’s business rests almost entirely on assertion and not on any of the usual factual indicia of acquired distinctiveness.
The Panel is not satisfied that the evidence presented supports that claim to common law rights. The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <circleboltnut.com> and <circlebolts.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: June 7, 2021
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