DECISION

 

Creative Curb v. Edgetec International Pty. Ltd.

Claim Number: FA0207000116765

 

PARTIES

Complainant is Creative Curb, Irvine, CA, USA (“Complainant”) represented by Marcia A. Girard.  Respondent is Edgetec International Pty. Ltd., Sumner Park Queensland, AUSTRALIA (“Respondent”) represented by Gordon Buckland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <creativecurb.com>, registered with Network Solutions, 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.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 18, 2002; the Forum received a hard copy of the Complaint on July 31, 2002.

 

On July 24, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <creativecurb.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 2002 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@creativecurb.com by e-mail.

 

A timely Response was received and determined to be complete on August 15, 2002.

 

Additional submissions were received from Respondent on August 20, 2002, and from Complainant on August 27, 2002.  According to ICANN’s Rule 12 for implementing the Policy, the Panel has sole discretion to request further statements from the parties after they file their Complaint and Response.  In this proceeding, both Complainant and Respondent submitted supplementary filings not requested by the Panel.  However, having reviewed the Complaint and the Response, the Panel finds it does not need and will not consider the additional filings from either party. 

 

On September 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

--Complainant is an American company that produces and sells portable concrete curb extruding equipment as well as the extruded product (i.e., concrete curbs).

 

--Complainant owns California, USA and United States trademarks for CREATIVE CURB in relation to concrete curb extrusion machines.  Complainant’s first use of the CREATIVE CURB mark occurred in 1986.

 

--The disputed domain name is identical to Complainant's trademarks.

 

--Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not own any trademark or service mark rights for CREATIVE CURB. Respondent does not use that mark in the ordinary course of business. Respondent is using the disputed domain name in order to divert Internet users to Respondent’s competing web site, which offers competing products under the trade name "Kwik Kerb".

 

--Respondent registered and is using the disputed domain name in bad faith.  Respondent is benefiting from the likelihood of confusion created by the disputed domain name to sell a product that competes with Complainant’s products.

 

B. Respondent

 

--Respondent is an Australian company, which markets several continuous concrete edging machines and offers business systems designed to train individuals to become self-employed as operators of those machines. 

 

--Respondent is a holder of an Australian trademark for the name CREATIVE CURB, by license from Respondent's chief executive officer.

 

--Respondent has rights and legitimate interests in the disputed domain name.  While Respondent does offer a curb extrusion business system under the trade name "Kwik Kerb," Respondent also sells concrete edging devices bearing the trademark, CREATIVE CURB, as stand-alone machines.  Thus, Respondent does use the latter trademark in ordinary business, and some of its products are commonly known by that name.

 

--Respondent is making fair use of the disputed domain name and without the intent to mislead and divert customers and consumers for commercial gain.  Respondent’s CREATIVE CURB products are promoted exclusively in Australia, while Complainant conducts business in the United States of America and Canada.

 

FINDINGS

--Complainant is an American company which produces and sells portable concrete curb extruding equipment, and the extruded product (i.e., concrete curbs).  It holds both a registered California trademark (Reg. No. 104290, dated October 5, 1998) and a registered United States trademark (Reg. No. 2,305,885, dated January 4, 2000) in the name CREATIVE CURB, relating to the manufacture and sale of concrete extrusion machines (Exhibits 2 and 3 of the Complaint).

 

--Respondent is an Australian company, which produces and sells portable concrete curb extruding equipment. It holds a valid license to use a registered Australian trademark (Reg. No. B485230, dated September 5, 1990, and extended through April 13, 2009) in the name CREATIVE CURB, relating to the manufacture and sale of concrete extrusion machines (Exhibits A and B of the Response).

 

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

 

The Panel finds that Complainant owns valid registrations in the United States for and has rights in the trademark CREATIVE CURB, which it has used over many years in the marketing of concrete extrusion devices.

 

The only differences between the disputed domain name, <creativecurb.com>, and Complainant's trademark, CREATIVE CURB, is the absence of a space between the words CREATIVE and CURB and the addition of the gTLD ".com".  Prior panels, in ruling under the Policy, have concluded consistently that the elimination of spaces between words does not impair a finding of identicality between a domain name and a trademark.  See Laerdal Med. Corp. v. Locks Computer Supply, D2002-0063 (WIPO Apr. 18, 2002) ("The use of one word or two words in a trademark or a domain name is also irrelevant as long as the two words forming the one word are the same").  Furthermore, such panels have uniformly held that the inclusion of a gTLD such as ".com" is immaterial in distinguishing between trade or service marks and domain names.  See, e.g., Treeforms, Inc. v. Cayne Industrial Sales, Corp., FA95856 (Nat. Arb. Forum Dec. 18, 2000); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). 

 

In accordance with the foregoing, the Panel concludes that Complainant has shown that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy sets forth three circumstances, valid evidence of either of which, if found by the Panel, shall be determinative of Respondent's rights or legitimate interests in the domain name at issue.  In this case, Respondent has provided the Panel with abundant evidence that, before notice of this dispute, Respondent was using the disputed domain name (and a valid corresponding Australian trademark) in connection with a bona fide offering of goods or services (the production and sale of concrete edging machines) in satisfaction of the circumstance expressly listed in Paragraph 4(c)(i) of the Policy.    

 

Thus, the Panel finds that Complainant has failed to sustain its burden under Paragraph 4(a)(ii) to prove that Respondent has no right or legitimate interest in the disputed domain name.

 

Because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, Complainant's failure to prove the element listed in Paragraph 4(a)(ii) means that the Panel need not consider whether Complainant has proven the remaining element contained in Paragraph 4(a)(iii) (i.e., whether Respondent registered and used the disputed domain name in bad faith).

 

DECISION

The Panel has found that Respondent demonstrated that it has a legitimate interest in respect of the disputed domain name <creativecurb.com> per Paragraph 4(a)(ii) of the Policy.  Therefore, pursuant to Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name <creativecurb.com> REMAIN registered to the Respondent, Edgetec International Pty. Ltd.

 

 

 

 

Dennis A Foster, Panelist
Dated: September 20, 2002

 

 

 

 

 

 

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