Florida Weimaraner Rescue, Inc. d/b/a Weimaraner Rescue of Florida v. weimaraner rescue of florida a/k/a Lauren R Simmons and TechKraft Inc. c/o Jim Horn
Claim Number: FA1011001356030
Complainant is Florida Weimaraner Rescue, Inc. d/b/a Weimaraner Rescue of Florida (“Complainant”), represented by Stephen J. Jacobs, Florida, USA. Respondent is weimaraner rescue of florida a/k/a Lauren R Simmons and TechKraft Inc. c/o Jim Horn (“Respondent”), represented by Judith M. Mercier of Holland & Knight LLP, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <weimaranerrescuefla.com>, <weimaranerrescueflorida.com>, and <weimaranerrescue.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert A. Fashler as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2010; the National Arbitration Forum received payment on November 2, 2010.
On November 30, 2010, the Forum advised Complainant that the Complaint contained deficiencies and that the deficiencies needed to be rectified within five calendar days. Complainant corrected the deficiencies within that time frame.
On November 2, 2010, GoDaddy.com, Inc. confirmed by e-mail
to the National Arbitration Forum that the <weimaranerrescuefla.com>,
<weimaranerrescueflorida.com>, and <weimaranerrescue.com>
domain names are registered with GoDaddy.com, Inc. and that:
(a) Weimaraner Rescue of Florida is the current registrant of the names <weimaranerrescuefla.com>
and <weimaranerrescueflorida.com>;
(b) TechKraft Inc. is the current registrant of the name <weimaranerrescue.com>
.
GoDaddy.com, Inc. verified that the domain names have been placed on
registrar-lock in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On November 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2010 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@weimaranerrescuefla.com, postmaster@weimaranerrescueflorida.com, postmaster@weimaranerrescue.com. Also on November 9, 2010, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
On November 29, 2010, in response to a joint request of Complainant and Respondent Weimaraner Rescue of Florida a/k/a Lauren R. Simmons, the Forum, pursuant to NAF Supplemental Rule 6 (a) (i), granted an extension of the time to submit the Response of Weimaraner Rescue of Florida a/k/a Lauren R. Simmons until December 3, 2010. A timely Response by Weimaraner Rescue of Florida a/k/a Lauren R. Simmons was received and determined to be complete on December 3, 2010.
On December 8, 2010, Complainant timely filed additional submissions and documents pursuant to NAF Supplemental Rule No. 7.
On December 13, 2010, Respondent Weimaraner Rescue of Florida a/k/a Lauren R. Simmons timely filed additional submissions and documents pursuant to NAF Supplemental Rule No. 7.
On December 6, 2010, Respondent TechKraft, Inc. requested that the time for filing a Response be further extended to December 9, 2010.
On December 6, 2010, the Forum denied the request of TechKraft, Inc. to extend the time for it to file a Response and advised TechKraft, Inc. that its submissions would nonetheless be forwarded to the Panel for it to decide whether to consider those submissions in its discretion.
On December 9, 2010, Respondent TechKraft Inc. submitted to the Forum a document titled Objection to Denial of Request for Extension of time.
On December 12, 2010, Respondent TechKraft Inc. submitted to the Forum a document titled Motion to Sever the Respondents TechKraft Inc. From Simmons et al.
On December 13, 2010, Respondent TechKraft Inc. submitted to the Forum a document titled TechKraft Inc. Affirmative Defense.
On December 28, 2010, Complainant filed with the Forum a document titled Response to Submissions by Respondent, TechKraft, Inc.
On December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.
On December 21, 2010, pursuant to paragraph 10 (c) of the Rules, the Panel, on its own motion, ordered that the time for rendering the decision in this proceeding be extended until December 28, 2010.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant submits as follows:
(a) In 1999, Casandra Salmond, a Director and the founder of Complainant, adopted and began using FLORIDA WEIMARANER RESCUE (the “Trademark”) as a name and trademark for services that Complainant describes as “not-for-profit rescue and adoption of dogs of the Weimaraner breed” (“Complainant’s Services”).
(b) Between 1999 and December or 2006, Ms. Salmond used the Trademark in connection with Complainant’s Services.
(c) In December of 2006, Ms. Salmond incorporated Complainant as a Florida not-for-profit corporation.
(d) Complainant refers to Ms. Salmond as its predecessor in interest in the Trademark, but neither describes nor provides evidence of the manner in which Complainant is supposed to have acquired its interest in the Trademark from Ms. Salmond.
(e) Complainant (or Ms. Salmond) has acquired a variety of domain names, corporations, and Florida fictitious name filings for names that feature the words “Weimaraner”, “Rescue”, and either “Florida” or an abbreviation of Florida, including Weimaraner Rescue of Florida, which was registered in January of 2008.
(f) “Through the use of its name and mark, Complainant has become well-known in Florida (and beyond) for professional, responsive knowledgeable, and honest service in the field of Weimaraner rescue and adoption”. The Complaint provides minimal evidence demonstrating that the Trademark is well known or how it became well known.
(g) Respondent, Lauren R. Simmons, is also involved in the rescue and adoption of Weimaraner dogs. She is the President and Treasurer of Big Dog Ranch Rescue Inc. a non-profit corporation incorporated on or about September 4, 2008.
(h) For an unspecified time before approximately March 21, 2010, Respondent, Lauren R. Simmons, was an officer and director of Complainant.
(i) On March 21, 2010, Respondent, Lauren R. Simmons, resigned from Complainant.
(j) Since Lauren R. Simmons resigned from Complainant, Respondent, Lauren R. Simmons and/or Big Dog Ranch Rescue Inc. have acquired a variety of domain names, corporate names, and Florida fictitious name filings that feature the words “Weimaraner”, “Rescue”, and either “Florida” or an abbreviation of Florida, including Weimaraner Rescue Ranch of Florida and the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com>.
(k) Respondent, Lauren R. Simmons, or Big Dog Ranch Rescue, Inc. registered the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> under the fictitious name Weimaraner Rescue of Florida, which is a fictitious name registered by Complainant.
(l) The activities of Lauren R. Simmons and Big Dog Ranch Rescue, Inc. are inextricably intertwined such that Big Dog Ranch Rescue is, in effect, an alias of Lauren R. Simmons.
(m) Complainant holds common law trademark rights in the Trademark as a consequence of use by Complainant and Casandra Salmond.
(n) Respondent, Lauren R. Simmons, and Big Dog Ranch Rescue Inc. are actively using the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> and related fictitious names in connection with services that are identical to Complainant’s Services.
(o) On June 29, 2010, Complainant sent a cease and desist letter to Respondent, Lauren R. Simmons.
(p) The minor differences between the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> and the Trademark are de minimus and those domain names would be confusing to even the most knowledgeable member of the general public.
(q) The Respondent, Lauren R. Simmons, and Big Dog Ranch Rescue, Inc., acquired the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> wrongfully and improperly using Complainant’s fictitious name and they have no legitimate interest in those domain names.
(r) Registration and use of the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> by the Respondent, Lauren R. Simmons and Big Dog Ranch Rescue, Inc. is in bad faith for the reasons identified above.
(s) Continued use of the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> by the Respondent, Lauren R. Simmons and Big Dog Ranch Rescue, Inc. is in bad faith and because it would result in likelihood of confusion, and there have been multiple instances of actual confusion. The Complaint does not provide any evidence or particulars of such alleged actual confusion.
(t) Although the domain name <weimaranerrescue.com> is currently registered in the name of Respondent, TechKraft, Inc., there is compelling circumstantial evidence demonstrating that Respondent, TechKraft, Inc., is merely an alias of the Respondent, Lauren R. Simmons. That evidence consists of information and links found on the website accessed via that domain name, which reference or link to Lauren R. Simmons or Big Dog Ranch Rescue, Inc.
B. Respondent, Lauren R. Simmons
Respondent, Lauren R. Simmons, submits:
(a) Respondent, Lauren R. Simmons, does not own or control the domain name <weimaranerrescue.com> and has elected not to respond to the Complaint to the extent that it relates to that domain name.
(b) The Trademark is merely generic or descriptive because it describes Complainant’s Services (rescuing Weimaraner dogs) and the geographic location where Complainant provides Complainant’s Services (the State of Florida). Accordingly, there can be no protectable rights in the Trademark or it is merely a descriptive designation with no secondary meaning and its components are commonly used.
(c) Complainant has not provided evidence that that the Trademark has acquired secondary meaning and Complainant cannot do so.
(c) Respondent, Lauren R. Simmons, has legitimate rights and interests in the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> because: (i) she has been involved with the rescue of Weimaraner and other large dogs in Florida since 2006; (ii) she has been using those domain names continuously since March 21, 2001; (iii) when she resigned from Complainant, she advised Complainant’s Board that she would be creating her own Weimaraner rescue organization named Weimaraner Rescue of Florida as a division of Big Dog Ranch Rescue of Florida and that she “had already purchased the domain names associated for [sic] the name Weimaraner Rescue of Florida”; (iv) Complainant did not object to such domain names.
(d) When she registered the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> , Ms.. Simmons, was not aware that Complainant had registered the fictitious name Weimaraner Rescue of Florida.
(e) Complainant has failed to prove any facts supporting a conclusion that Respondent acted in bad faith.
C. Complainant’s Additional Submissions
Complainant additionally submits:
(a) The Trademark has acquired secondary meaning because, for the purpose of registering a trademark in the United States Patent and Trademark Office, evidence of substantially exclusive and continuous use of the trademark in commerce for five years is sufficient to establish secondary meaning, and Complainant has held and used the Trademark for well over five years.
(b) The Trademark has acquired secondary meaning by virtue of extensive use, advertising, and promotion of Complainant’s services in association with the Trademark, such as: (i) use at an Internet website since 2003; (ii) association with Petfinder.com and similar wwebsites since 2006 and 2007; (iii) use of the telephone number 1-888-FLA-WEIM; (iv) various charitable partnerships; and (v) use of business cards, marketing kits, and other promotional material.
(c) Respondent Lauren R. Simmons has failed to prove any of the circumstances identified in Paragraph 4 (c) of the Policy.
(d) Having been a director and officer of Complainant, Respondent Lauren R. Simmons, was intimately familiar with Complainant’s business, Trademark and domain names, and could only be acting in bad faith by registering and using domain names, fictitious names, and corporate names that are confusing with the Trademark.
(e) Respondent is using its domain names in a deliberately misleading and confusing manner.
(f) Respondent is not commonly known by the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> and does not offer services under those domain names because those domain names resolve to the website identified as Weimaraner Rescue of Florida, which is a fictitious business name owned by Big Dog Ranch Rescue, Inc.
D. Additional Submissions of Respondent Lauren R. Simmons
Respondent, Lauren R. Simmons, additionally submits:
(a) The Trademark is generic and can never function as a trademark.
(b) Respondent Lauren R. Simmons has been using the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> in connection with bona fide Weimaraner rescue services beginning months before she received any notice of this dispute from Complainant, and Complainant does not deny this.
(c) Use of a domain name to redirect Internet traffic to a different URL is a legitimate use of the domain name when the domain name describes the services found at the URL to which Internet traffic is redirected.
(d) Respondent Lauren R. Simmons was forthright and honest in her dealings with Complainant.
(e) As the Trademark is generic, there can be no bad faith in using domain names that incorporate elements of the Trademark.
The Panel finds that:
(a) Complainant has failed to prove that TechKraft, Inc. is a mere alias of Respondent, Lauren R. Simmons, and consequently, the domain name <weimaranerrescue.com> is not proper subject matter for this proceeding and TechKraft, Inc. is not a proper respondent in this proceeding;
(b) Complainant has failed to satisfy its burden under Paragraph 4(a) (i) of the Policy and, consequently, the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> should not be transferred from Respondent to Complainant.
DISCUSSION
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.
A. Preliminary Issues
Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Specifically, Complainant alleges that Respondent Lauren R. Simmons controls TechKraft, Inc., that TechKraft, Inc. is a mere alias of Ms. Simmons, and, that, therefore, Ms. Simmons indirectly owns or controls the third domain name, <weimaranerrescue.com>.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
NAF Supplemental Rule 4 (f) (ii) provides: “If the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel…”.
The facts on which Complainant relies are speculative and inconclusive. At best, they are circumstantial.
Respondent Lauren R. Simmons flatly denies any ownership or control of the domain name <weimaranerrescue.com>. Ms. Simmons has not objected to the characterization that Big Dog Ranch Rescue, Inc. is, effectively, an alias of Ms. Simmons. She has defended all allegations relating to the domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com>, regardless of whether the allegations were directed at herself or Big Dog Ranch Rescue, Inc. It would have required practically no effort by Ms. Simmons to extend those arguments to the third domain name registered to TechKraft, Inc. The Panel finds that Ms. Simmons’ denial of ownership or control of the domain name <weimaranerrescue.com> is credible.
The Panel finds that Complainant has not provided sufficient evidence from which it can reasonably be concluded on a balance of probabilities that TechKraft, Inc. is an alias of Respondent, Lauren R. Simmons. Accordingly, TechKraft is an unrelated registrant within the meaning of NAF Supplemental Rule 4 (f) (ii) and the Panel will not give further consideration to TechKraft, Inc. or the domain name <weimaranerrescue.com> .
Hereafter, all references to “the domain names” mean <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> and all references to “Respondent” mean Lauren R. Simmons.
Submissions of TechKraft, Inc.
The submissions filed by TechKraft, Inc. were late and the Panel sees no reason to consider them, particularly as the Panel rejects Complainant’s assertion that TechKraft, Inc. is a mere alias of Respondent and finds that Complaint has failed to establish that the Trademark is a trademark in which Complainant has rights.
Paragraph 4 (a) (i) of the Policy requires Complainant to establish that Respondent’s Domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights. That paragraph has two distinct components. The first component requires Complainant to prove that the Trademark is a trademark or service mark in which Complainant has rights. If Complainant satisfies that requirement, Complainant must then prove that the domain names are identical or confusingly similar to the Trademark. Complainant has failed to satisfy the first component of paragraph 4 (a) (i) of the Policy.
Complainant makes reference to a number of domain names, corporate names, and fictitious name registrations held by Complainant that feature the words “Weimaraner”, “rescue”, and “Florida” (or an abbreviation for Florida). In and of themselves, those registrations and incorporations are irrelevant to this proceeding. They would be relevant to this proceeding only to the extent that Complainant can prove that they have become common law trademarks. Complainant asserts that it does hold common law rights in the Trademark.
McCarthy on Trademarks and Unfair Competition, 4th ed. (Thomson West: 1992, last updated March 2007) (“McCarthy”) is generally considered to be a leading treatise on trademark law in the United States. At page 16‑4, McCarthy explains the basis on which common law trademark rights arise under the laws of the United States:
To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right. With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol. In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent.
Hence, under U.S. legal principles, common law rights are created by active use of a trademark in association with particular goods and services. The sale and advertising of such goods and services generates goodwill and reputation among customers and potential customers. The strength, or distinctiveness, of a common law trademark is a function of the goodwill and reputation generated by those activities.
When a complainant asserts a UDRP claim based on a common law trademark, it must prove that the trademark is, in fact, associated by the relevant public with the complainant’s goods or services. It must prove that at least some goodwill and reputation has been generated in connection with the mark as a consequence of active use in commerce. In other words, Complainant must provide credible evidence establishing that the common law trademark on which it relies has acquired distinctiveness. See Kip Cashmore v. URLPro, D2004‑1023 (WIPO Mar. 14, 2005), which held that no common law rights were proven where the complainant did not present any credible evidence establishing acquired distinctiveness. Relevant evidence includes the length and amount of sales under the mark, the nature and extent of any advertising, consumer surveys, and media recognition or customer awareness.
Those are the principles that apply to an ordinary common law trademark that has some inherent distinctiveness. Unfortunately for Complainant, FLORIDA WEIMARANER RESCUE is not an ordinary common law trademark. The words “Weimaraner rescue” unquestionably describe Complainant’s Services. There are no better words in the English language to describe those services. Those words are generic. The word FLORIDA is highly descriptive, very nearly generic. Florida, in fact, describes where Complainant operates and provides Complainant’s Services.
Under applicable legal principles Complainant’s burden of proof on the issue of acquired distinctiveness is considerably higher that it would be for a trademark that is not descriptive. Complainant must establish that the Trademark has acquired secondary meaning (that is, that the words FLORIDA WEIMARANER RESCUE have acquired a meaning additional to their primary, merely descriptive, meaning and are understood by the relevant public to designate services provided by Complainant). The law on establishing secondary meaning in a descriptive mark is discussed in Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519, 1522 (11th Cir. 1991), as follows:
Secondary meaning is the connection in the consumer's mind between the mark and the provider of the service.39 Plaintiff has the burden of sustaining a high degree of proof in establishing a secondary meaning for a descriptive term.40 This requisite high degree of proof must be considered by the court when ruling on a motion of summary judgment.41 Absent consumer survey evidence, as is the case here, four factors can be considered in determining whether a particular mark has acquired a secondary meaning:
(1) [T]he length and manner of its use; (2) the nature and extent of advertising and promotion; (3) the efforts made by the plaintiff to promote a conscious connection in the public's mind between the name and the plaintiff's ... business; and (4) the extent to which the public actually identifies the name with the plaintiff's [service].42 [emphasis added]
Complainant has not provided a consumer survey. It relies instead on assertions and documentary evidence indicating a relatively limited level of quite mundane activity. The Complainant’s enterprise is charitable. While the Complainant’s operations are very commendable, it is clear that Complainant is not blessed with abundant resources and has little ability to engage in significant operations or marketing activities. Complainant has not provided any evidence of the volume of business that it has carried on over the relevant period of time. Complainant has not provided evidence indicating the expenditures it has made on advertising. All evidence tendered by Complainant to establish secondary meaning indicates minimal activity of these types and a very small operation.
Complainant’s evidence falls far short of satisfying the applicable burden of proof required to establish secondary meaning of the words FLORIDA WEIMARANER RESCUE.
Further, Complainant has not shed any light on how Complainant is supposed to have acquired its interest in the Trademark from Casandra Salmond (e.g. by way of assignment). Complainant does not even assert that legal title in the Trademark has passed from Ms. Salmond to Complainant. If title in the Trademark had, in fact, been transferred to Complainant, then, evidence of that important fact should have been submitted in this proceeding.
The Panel has no basis for finding that use of the Trademark by Ms. Salmond before Complainant was incorporated in December of 2006 has accrued to Complainant. Any such use should not be considered in evaluating whether the Trademark has acquired secondary meaning. However, even if that use did accrue to Complainant, the evidence still would be inadequate to support a finding that the Trademark has acquired secondary meaning.
Complainant submits that a principle followed by the United States Patent and Trademark Office (“USPTO”) ought to be considered in this proceeding. The principle is that, for registration purposes, secondary meaning is deemed to be established after five years of continuous and relatively exclusive use. The Panel finds that the principle in question has no relevance to the determination of secondary meaning in a UDRP proceeding. This Panel is not the USPTO and it is not examining a trademark application. Furthermore, even if that principle was applicable, Complainant has not established any use of the Trademark by Complainant or a true predecessor in title earlier than December of 2006. Hence, the principle would have no application even in relation to a trademark application being examined by the USPTO because five years have not elapsed since Complainant was incorporated.
The Panel concludes that Complainant has not provided sufficient evidence to the Panel to discharge Complainant’s burden of proof for demonstrating that it has common law trademark rights in the Trademark. The Panel finds that Complainant has not satisfied paragraph 4(a)(i) of the Policy because it has failed to establish that the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) which held that the complainant’s failure to prove one of the elements makes further inquiry into the remaining two elements of the Policy unnecessary.
C. Rights or Legitimate Interests and Bad Faith
Because Complainant has failed to satisfy its burden under paragraph 4(a)(i) of the, it is not necessary for the Panel to consider the other elements contemplated in Paragraphs 4(a)(ii) and (iii) of the Policy.
As Complainant has 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 domain names <weimaranerrescuefla.com> and <weimaranerrescueflorida.com> REMAIN WITH Respondents.
The Panel makes no order in respect of the domain name <weimaranerrescue.com> or the Respondent TechKraft, Inc. as that domain name and that Respondent were not properly included in the Complaint or this proceeding.
Robert A. Fashler, Panelist
Dated: 28 December 2010
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