National Arbitration Forum

 

DECISION

 

Eastern Metal Supply, Inc. v. Texas International Property Associates - NA NA

Claim Number: FA0812001238822

 

PARTIES

Complainant is Eastern Metal Supply, Inc. (“Complainant”), represented by Evan D. Brown, of Hinshaw & Culbertson LLP, Illinois, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <easternmetalsupply.com>, registered with Compana, LLC.

 

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.

 

CLIVE ELLIOTT as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2008.

 

On December 17, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <easternmetalsupply.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 December 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 12, 2009 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@easternmetalsupply.com by e-mail.

 

A timely Response was received and determined to be complete on January 12, 2009.

 

On 21 January 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

1.      Complainant

 

                   Complainant states it was founded and incorporated in Florida in 1982.  It maintains that it distributes custom and standard aluminum extrusions and sheet products, that it markets its products under its EASTERN METAL SUPPLY mark, and has done so since 1982.  Complainant also asserts it has owned the <easternmetal.com> domain name since August 1996, and has used the <easternmetal.com> domain name in connection with its business since at least March 25, 2005.

 

                   Complainant has asserted common law rights in its mark predating Respondent’s registration of the disputed domain name.  Complainant contends Respondent’s <easternmetalsupply.com> domain name is identical to Complainant’s EASTERN METAL SUPPLY mark.

 

                   Complainant contends Respondent is not commonly known by the disputed domain name.  Complainant maintains the WHOIS information lists Respondent as “Texas International Property Associates – NA NA,” and Respondent has not made a claim that it is commonly known by the disputed domain name.

 

                   Complainant has provided evidence in the form of a screen shot that Respondent is using the disputed domain name to display links to third-party websites, some of which compete with Complainant’s business.  Complainant alleges Respondent receives compensation for its use of the confusingly similar disputed domain name.

 

2.      Respondent

 

2.1         Respondent contends that the <easternmetalsupply.com> domain name is comprised of common, geographical and descriptive terms and as such cannot be found to be identical to Complainant’s mark.  Respondent argues that the common terms in the domain name have many meanings apart from use in Complainant’s EASTERN METAL SUPPLY mark and that Complainant does not have an exclusive monopoly on the terms on the Internet. 

 

2.2         Respondent maintains Complainant has not provided sufficient evidence of secondary meaning in its EASTERN METAL SUPPLY mark.  In particular, Respondent contends Complainant has not provided any evidence of sales invoices, advertisements or revenues beyond Complainant’s Declaration from its CIO.

 

2.3         Respondent thus asserts Complainant has not established common law rights in its EASTERN METAL SUPPLY mark prior to Respondent’s March 25, 2005 registration of the disputed domain name.

 

2.4         Respondent alleges Complainant is trying to hijack the disputed domain name, which Respondent has operated for the past four years.  Respondent contends Complainant has not established rights in its mark predating Respondent’s registration of the disputed domain name and thus Complainant was aware Respondent would prevail under the Policy. 

 

FINDINGS

 

Having considered the Complaint, and given the comments made below, the Panel finds that:

 

(1)        relief by way of the domain name being transferred from Respondent to Complainant is denied; and

 

(2)        Respondent’s allegation of reverse domain name hijacking by Complainant is not made out.

 

 

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

 

Respondent alleges that the <easternmetalsupply.com> domain name is comprised of generic terms.  This point has merit.  However, this argument is not directly applicable to Policy ¶ 4(a)(i), but will be discussed in greater detail in the analyses of Policy 4(a)(ii) and (iii). 

 

More to the point, Respondent maintains Complainant has simply not provided sufficient evidence of secondary meaning in its EASTERN METAL SUPPLY mark.  In particular, it contends Complainant has not provided any evidence of sales invoices, advertisements or revenues beyond Complainant’s Declaration from its CIO.  This contention is well made.  The Panel finds Complainant has not provided sufficient information to support its common law rights, if any, in the EASTERN METAL SUPPLY mark under Policy ¶ 4(a)(i).  See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).

 

Complainant thus fails to establish the first part of the test required under the Policy.

 

Rights or Legitimate Interests

 

Respondent argues that the terms of the <easternmetalsupply.com> domain name are geographical, generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.  The Panel accepts that the contested domain name is comprised of common terms, and concludes that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Respondent asserts Complainant has not established common law rights in its EASTERN METAL SUPPLY mark prior to Respondent’s March 25, 2005 registration of the disputed domain name.  Having found that Complainant has not established common law rights in its mark prior to Respondent’s registration, Panel finds Respondent has rights and legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Warm Things, Inc.  v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark).

 

This ground is not established by Complainant.

 

Registration and Use in Bad Faith

 

Having found that Respondent has rights or legitimate interests in the <easternmetalsupply.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

The Panel further finds that Respondent has not registered or used the <easternmetalsupply.com> domain name domain name in bad faith because it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

 

Respondent contends, with some justification, that the <easternmetalsupply.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s EASTERN METAL SUPPLY mark.  The Panel determines that the disputed domain name contains commonly-used terms and that this indicates that Respondent did not register and use the <easternmetalsupply.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

Reverse Domain Name Hijacking

 

Respondent questions Complainant’s motives in bringing this complaint.

 

Complainant has asserted common law rights in its mark predating Respondent’s registration of the disputed domain name.  The Panel finds Complainant brought this Complaint based on a bona fide belief that it might prevail under the Policy.  On this basis the Panel determines Complainant has not engaged in reverse domain name hijacking.  See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (rejecting the respondent’s assertion of reverse domain name hijacking because there was no evidence that the complainant was using the Policy other than to declare its rights); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“The Panel concludes that Complainant did not begin this action in bad faith and that there is no support for reverse domain name hijacking.”).

 

Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

 

On this basis any allegation of reverse domain name hijacking is not established.

 

DECISION


Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.  Equally, it is found that the allegation of reverse domain name hijacking is not made out.

 

 

 



Clive Elliott, Panelist
Dated: 2 February 2009

 

 

 

 

 

 

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