B&V Associates, Inc. v. Internet
Waterway, Inc.
Claim
Number: FA0303000147531
Complainant is
B&V Associates, Inc., New York, NY (“Complainant”) represented
by Harvey S. Epstein, of Robinson Brog Leinwand Greene Genovese &
Gluck P.C. Respondent is Internet Waterway, Inc., Houston, TX
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ewaterway.com>, registered with Network
Solutions, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 6, 2003; the Forum received a hard copy of the
Complaint on March 10, 2003.
On
March 12, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <ewaterway.com> is registered with Network
Solutions, Inc. and that 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
March 13, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 2, 2003 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@ewaterway.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 11, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ewaterway.com>
domain name is confusingly similar to Complainant’s EWATERWAYS.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <ewaterway.com> domain name.
3. Respondent registered and used the <ewaterway.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
B&V Associates, Inc., holds U.S. Patent and Trademark Office (“USPTO”) Reg.
No. 2,581,093 for the EWATERWAYS.COM mark, registered on June 18, 2002.
Complainant’s mark denotes the “transportation of passengers by boat, arranging
of barge cruises, inland canal and ocean cruises and travel agency services,
namely, making reservations and bookings for transportation.”
As an
international organization, Complainant is a member of several major “industry
organizations,” including the United States Tour Operators’ Association,
American Society of Travel Agents and the International Air Transport
Association Network. In connection with its business, Complainant asserts that
it has continuously used the EUROPEAN WATERWAYS and EWATERWAYS marks since
1996. Complainant has conducted operations from its <ewaterways.com>
domain name and corresponding website since 1996.
Respondent’s <ewaterway.com>
domain name was registered on June 18, 1999. Complainant’s submission
indicates that Respondent’s domain name resolves to <boatingstore.com>.
Complainant’s investigation of Respondent reveals that Respondent does not own
the <boatingstore.com> domain name registration or corresponding website.
The <boatingstore.com> domain name and corresponding website are held by
Land ‘N’ Sea Distributing. The <boatingstore.com> website promotes the
activities of “Boating Store,” which is engaged in the business of selling
marine parts and accessories.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
failed to establish rights in the EWATERWAYS.COM mark for the purposes of this
dispute.
Under the UDRP,
a complainant must fulfill its initial burden to prove, by a preponderance of
the credible, relevant and admissible evidence, that the domain name is
identical or confusingly similar to a mark in which it has rights. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept.
16 2002) (finding that in order to bring a claim under the Policy, Complainant
must first establish a prima facie case. Complainant’s initial burden is
to provide proof of “valid, subsisting rights in a mark that is similar or
identical to the domain name in question”).
Although
Complainant received a USPTO registration for the EWATERWAYS.COM mark, the
registration was granted subsequent to Respondent’s registration of the <ewaterway.com>
domain name. Respondent registered the subject domain name on June 18, 1999
while Complainant applied for its registration on July 26, 2000, which was
granted on June 18, 2002. Complainant’s USPTO registration supports its
assertion of rights in the EWATERWAYS.COM mark since “first use” is indicated
as 1996. However, Complainant’s mark is listed on the Principal Register under
section 2(f) of the U.S. Trademark Act. By registering the mark pursuant to 2(f)
of the Trademark Act, Complainant admits that the term is descriptive (but that
it has acquired secondary meaning as a source indicator for its products). U.S.
Trademark Act, 15 U.S.C. 1052, 2(f); 1115; see also S.A. Bendheim Co., Inc.
v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003). Although
Complainant’s registered mark is entitled to the presumption that it is valid,
and that Complainant possesses the exclusive right to use the registered mark
in commerce in connection with the goods specified in the registration,
Complainant’s mark did not hold this status at the time Respondent registered
the domain name. Therefore, for the purpose of this dispute, Complainant must
demonstrate rights in the EWATERWAYS.COM mark at the time Respondent registered
the disputed domain name (e.g., common law rights, secondary source
identification). See Ode v.
Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the
unanimous view that the trademark must predate the domain name”); cf. Amsec Ent. v. McCall, D2001-0083 (WIPO
Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not
establish any enforceable rights to the mark until a trademark registration is
issued).
As stated, in
initiating a proceeding under the Policy, Complainant bears the initial burden
of presenting a sufficient prima facie case showing rights in the mark.
Numerous decisions have determined that the relevant point in time when
Complainant must evidence rights in a mark is before Respondent’s registration
of the domain name. The panel in Transpark LLC v. Network Administrator,
FA 135602 (Nat. Arb. Forum Jan. 21, 2003), articulated this position in
stating:
Without
establishing rights in a mark that predates a disputed domain name registration
the outcome would allow junior trademark users to contest a prior domain name
registration. Such an outcome is contrary to the Policy, which was intended to
protect against infringement of existing trademark rights by identical or
confusingly similar domain name registrations. Therefore, the Panel concludes
that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate
Respondent’s domain name registration, which numerous, previous decisions have
held. See Phoenix Mortgage Corp. v.
Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i)
“necessarily implies that the Complainant’s rights predate the Respondent’s
registration . . . of the domain name”); see
also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943
(WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain
name registration, which predates Complainant’s trademark rights, is “obviously
contrary to the intent of the Policy and to trademark law generally”).
Transpark LLC
v. Network Adm’r, FA 135602
(Nat. Arb. Forum Jan. 21, 2003); see
also DJR Holdings, LLC v. Paul Gordon a/k/a IQ Mgmt. Corp., FA
141813 (Nat. Arb. Forum Mar. 4, 2003) (“This Panel is satisfied that for
purposes of the UDRP, Complainant has established common law rights in DEF JAM
SOUTH prior to Respondent’s registration”).
Establishing
common law rights in a mark requires a showing by Complainant that its mark has
acquired secondary meaning. In other words, Complainant must establish that the
public associates the asserted mark with its goods and services. See Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its
use was continuous and ongoing, and secondary meaning was established); see
also BroadcastAmerica.com, Inc. v.
Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common
law rights in BROADCASTAMERICA.COM, given extensive use of that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services). If a complainant fails to provide evidence
that the public associates the asserted mark with its goods and services, the
complainant has failed to establish common law rights.
In the present
dispute, Complainant’s USPTO registration indicates that the EGATEWAYS.COM mark
is admittedly descriptive. Therefore, evidence establishing secondary source
identification is important in illustrating that the consuming public has
developed a sense of brand identity with the mark. Although Complainant’s
submission includes a copy of its “European Gateways” brochure, Complainant
fails to adequately support its assertion of rights at the time of Respondent’s
registration with any significant evidence, statements or proof (e.g., sales
figures, advertising expenditures, number of consumers served). Complainant did
not assert common law rights in the EGATEWAYS.COM mark, and failed to submit
relevant evidence that would suggest extensive use and secondary source
identity at the time of Respondent’s registration. See Lowestfare.com LLA v. US Tours & Travel,
Inc., AF-0284 (eResolution Sept. 9, 2000)
(finding that marks classified as descriptive cannot be protected unless
secondary meaning is proven and to establish secondary meaning Complainant must
show that the public identifies the source of the product rather than the
product itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608
(Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove
trademark rights at common law because it did not prove the CYBERIMPRINTS.COM
mark was used to identify the source or sponsorship of goods or services or
that there was strong customer identification of the mark as indicating the
source of such goods or services).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has not been satisfied. Because satisfaction
of each element listed under paragraph 4(a) is mandatory, it is not necessary
to pursue analysis under Policy ¶¶ 4(a)(ii) or (iii). Kuwait Airways Corp.
v. Noronha, FA 127713 (Nat. Arb. Forum Dec. 2, 2002); see also Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
Having failed to
establish all three elements required under ICANN Policy, the Panel concludes
that relief shall be DENIED.
Accordingly, it
is Ordered that the Complaint be DISMISSED.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 15, 2003
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