national arbitration forum

 

DECISION

 

United Security Seals, Inc. d/b/a Edgemaker v. USA10.com Web Site Services

Claim Number: FA1107001399225

 

PARTIES

Complainant is United Security Seals, Inc. d/b/a Edgemaker (“Complainant”), represented by Mallory Sander, Oregon, USA.  Respondent is USA10.com Web Site Services (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <edgemakerpro.com>, registered with GoDaddy.com, 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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2011; the National Arbitration Forum received payment on July 18, 2011.

 

On July 21, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <edgemakerpro.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2011 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@edgemakerpro.com.  Also on July 21, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on August 2, 2011.

 

On August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is in the business of designing, making, and selling knife sharpeners under the marks EDGEMAKER and EDGEMAKER PRO.  These marks are the subject of U.S. Trademark Registrations currently owned by Complainant.  See Complaint, Exhibits A and B.  Complainant’s predecessor-in-interest first used the EDGEMAKER mark in 1985 and first used the EDGEMAKER PRO mark in 1988.

 

The disputed domain name, <edgemakerpro.com>, was registered in 2002.

 

Complainant alleges that the disputed domain name is identical to its registered EDGEMAKER PRO mark.  Complainant notes that the only difference between the two is that there is a space between the words “EDGEMAKER” and “PRO” in the mark.  Complainant points out that spaces cannot be used in domain names, “so for all practical and logical purposes, the domain name edgemakerpro is not only confusingly similar, but identical, to the registered trademark `edgemakerpro’.”

 

Complainant further point out that it has rights in the EDGEMAKER PRO mark, as demonstrated by its ownership of the mark and its continued use thereof.

 

Complainant maintains that Respondent will not be able to establish that he has rights or legitimate interests in the disputed domain name.  Complainant indicates that the homepage of the offending website identifies itself as edgemakerpro.com and that the main content of the website disparages Complainant’s products and uses a slogan similar to that used by Complainant.[1]

 

Complainant asserts that Respondent is not commonly known by the name “edgemakerpro,” nor is he using the domain name for the bona fide offering of goods or services.  “Instead, Respondent is utilizing the website to criticize Complainant EDGEMAKER, specifically the new owners, and encourage customers not to buy Edgemaker products.  In fact, the website states, `for new orders I suggest that you do not buy the edgemaker from this new owner … take a look at the hunterhoner.com for something very similar, cheaper, smaller ect (sic)’.”  See Complaint, Exhibits D1 and D2.

 

According to Complainant, Respondent’s intent is clearly to misleadingly divert consumers from Complainant and/or to tarnish Complainant’s mark and reputation, possibly for commercial gain.  While Complainant acknowledges that a respondent has the right to maintain a website critical of a complainant, it argues that “a respondent cannot identify itself as the complainant.”

 

With respect to the issue of “bad faith” registration and use, Complainant alleges that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor and is using the domain name for purposes of intentionally attempting to attract, for commercial gain, internet users to his site by creating a likelihood of confusion as to the source of the site and/or of the products or services found thereon.

 

B. Respondent

Respondent, in his Response, explains as follows:

 

I am not the owner of www.edgemakerpro.com.  Another party who has been using the name for several years now has it illegally registered in my name.

 

Approximately 10 years ago I built a website for a client. He operated the Edgemaker Knife Sharpening booths at tradeshows all over the West Coast.  I registered that name (www.edgemakerpro.com) for him. Soon after building the website we had issues and he demanded that I deliver the website contents and domain name to him. I did so on the promise that he’d take the domain name out of my name and put it in his own name. I believe that a domain transfer was not able to take place within 60 days of an ownership change and he was demanding that he get it immediately so I just moved the domain name to his account.

 

Since then he has continued to use the domain and has never changed it to his own name. I have called him but he has not returned my calls. I have emailed him but he has never returned my emails. I have contacted GoDaddy (where the domain name is registered) and they have told me that there is nothing they can do. I have responded to the “IMPORTANT NOTICE REGARDING YOUR DOMAIN NAME” that tells me to “insure the accuracy” of the domain registration information, but when I enter the code they (GoDaddy) sends me I get an “invalid code” message. I called them and explained all this. They told me to go to a particular GoDaddy address, fill out the form and send them proof/copy of my business license and proof/copy of my driver’s license. They said that once they received and verified that information that they’d move the domain to my account. Then I could put it in the correct person’s name or do whatever I wanted to do with it. I followed their instructions and submitted everything. They responded saying that the domain was “locked” and could not be moved to my account. They told me they had closed the claim. I had a follow up communication with them but now they are unable to open an investigation because there is an active ICANN dispute.

 

I am willing to do anything I can to make the WHOIS information correct but I have been unsuccessful at everything I have tried.

 

·        I have tried on several occasions to get the owner of the domain name to correct the WHOIS information but he will not respond to any of my communications.

·        He and I have absolutely nothing to do with each other and no affiliation whatsoever.

·        He pays the annual renewal fees for the domain name and has done so for the last 8 or so years.

·        The domain name is in his own account at GoDaddy.

·        The nameservers point to his hosting account at Yahoo.

·        I have no idea in the world what he hopes to gain by refusing to change/correct the WHOIS information on the domain name.

I will cooperate in every possible to help you with anything you need. Please let me know if there is anything else I can do and I will do my absolute best to comply. The last contact information I had for him was:

 

Randy Ferringer

5325 Elkhorn Blvd

Sacramento, Ca   95842

 

Elsewhere in his Response, Respondent indicates that he did not engage in any of the activities set forth in the Policy as relevant to the issue of “bad faith” registration and use, noting that “Mr. Ferringer either built the current website himself or contracted to have someone else build it.”

 

Significantly, however, Respondent “requests that the Administrative Panel denies [sic] the remedy requested by the Complainant.”[2] 

 

FINDINGS

The Panel finds that: (1) the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; (2) Respondent has rights or legitimate interests in the disputed domain name; and (3) the domain name was not registered and is not being used in bad faith. 

 

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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the disputed domain name, <edgemakerpro.com>, for all intents and purposes, is identical to a trademark in which Complainant has rights.  As noted by Complainant, while Complainant’s mark, unlike the domain name, has a space between the terms “Edgemarker” and “Pro,” spaces cannot be used in domain names.  Further, addition of the top-level domain “.com” is of no significance from the standpoint of this element of the policy.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Complainant’s ownership of a U.S. trademark registration for the EDGEMAKER PRO mark establishes rights in such mark under paragraph 4(a)(i) of the Policy.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”)

 

Rights or Legitimate Interests

The Panel concludes that Respondent has rights or legitimate interests in the disputed domain name insofar as the web site is being used primarily for bona fide, noncommercial purposes, i.e., as a criticism or comment site.  The site includes the following text:

we are sorry to report that this site was forced to shut down due to the new owner of the factory has changed the entire marketing program to all in house sales and has forced us out … by forcing us to sign a paper saying that we would not sell the 4 step on line … literally taking all the profit out of out [sic] site!

we feel that this was very predatory and wrong but are powerless to do anything about this sudden and abrupt end of our cash flow after 25 years of hard work … has caused us to file bankruptcy … we are not taking any new orders – old orders are now the responsibility of the new factory owner, contact him for your product at edgemaker.com

for new orders I suggest that you do not buy the edgemaker from this new owner … take a look at the hunterhoner.com for something very similar, cheaper, smaller ect [sic]

Complainant concedes that a respondent has the right to maintain a website critical of a complainant, but contends that “a respondent cannot identify itself as the complainant.”  While the Panel is aware that there is a split among ICANN panels on the question presented in this case, it notes that in many, if not most, cases involving U.S. parties and/or panelists, panels have ruled that the First Amendment protects domain names when they are used in connection with legitimate criticism sites, irrespective of whether the domain name, itself, connotes criticism.[3]  The Panel is also aware that at least four federal circuit courts of appeals in the U.S. have ruled, in the context of proceedings brought under the “Anticybersquatting Consumer Protection Act,”15 U.S.C. §1125(d), that criticism sites may constitute noncommercial use of the domain name in issue even where the domain name itself does not communicate criticism.  See TMI Inc. v. Maxwell, 368 F.3d 433 (5^th Cir. 2004) (reversing transfer of <trendmakerhome.com> site used to criticize plaintiff’s TrendMaker Home houses); see also Lucas Nursery & Landscaping v. Grosse, 359 F.2d 806 (6^th Cir. 2004) (refusing to order transfer of <lucasnursery.com> domain where it was used for legitimate criticism site and defendant showed no intent to mislead visitors or commercially profit from use of domain name); see also Nissan Motor Co. v. Nissan Computer Co., 378 F.3d 1002 (9^th Cir. 2004) (injunctive relief denied where defendant placed links on <nissan.com> and <nissan.net> sites to other sites that post negative commentary about Nissan Motors); see also Lamparello v. Falwell, 420 F.3d 309 (4^th Cir. 2005) (reversing injunction against use of domain name <fallwell.com> for criticism site of Reverend Jerry Falwell).

 The relevant policy requires a respondent to make a noncommercial use “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”  There is no evidence that Respondent intended to misleadingly divert consumers.  As noted in Howard Jarvis Taxpayers Ass’n v. McCauley, D20004-0014 (WIPO Apr. 22, 2004), the concept of “misleadingly diverting consumers” refers to the kind of confusion that arises in the trademark infringement context when a competitor diverts consumers to its site and, potentially, diverts sales. Such does not appear to be the case here.  The site’s suggestion that one not buy the edgemaker from Complainant and instead “take a look at the hunterhoner.com” is just that – a suggestion; a suggestion that the site’s owner is free to make.  While the inclusion on the disputed site of a slogan similar to that used by Complainant is problematic, there is no evidence of any intent to divert sales to Respondent.

Finally, Respondent’s site does not tarnish Complainant’s mark, as that term has been defined by the courts.  In order to find that a mark has been “tarnished,” courts generally require evidence that the mark is being used in association with unwholesome or vulgar concepts, such as drugs, sex, or violence.

 Registration and Use in Bad Faith

While Complainant contends that the requisite “bad faith” registration and use exists in this case because Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor and is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion as to the source of the site and/or of the products or services found thereon, the evidence supports neither theory.  The evidence does not establish that Respondent competes with Complainant or that Respondent is using the domain name for commercial gain.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.[4]

 

Accordingly, it is Ordered that the <edgemakerpro.com> domain REMAIN WITH Respondent.

 

 

Jeffrey M. Samuels, Panelist

Dated:  August 24, 2011