Commercial Vehicle Group, Inc. v. Worldwide Media, Inc.
Claim Number: FA1309001518310
Complainant is Commercial Vehicle Group, Inc. (“Complainant”), represented by Jeffrey J. Nein of Kegler, Brown, Hill, and Ritter Co., LPA, Ohio, USA. Respondent is Worldwide Media Inc (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roadwatch.com>, registered with 1api GmbH.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hugues G. Richard (Chairman); Anne M. Wallace; Honorable Daniel B. Banks Jr. as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 9, 2013, 1api GmbH confirmed by e-mail to the National Arbitration Forum that the <roadwatch.com> domain name is registered with 1api GmbH and that Respondent is the current registrant of the name. 1api GmbH has verified that Respondent is bound by the 1api GmbH 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 September 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2013 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@roadwatch.com. Also on September 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 30, 2013.
Complainant submitted an Additional Submission, which it was received in a timely manner and determined to be complete on October 7, 2013.
Respondent submitted an Additional Submission as reply to the above. It was received in a timely manner and determined to be complete on October 11, 2013.
On October 7, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hugues G. Richard (Chairman); Anne M. Wallace; Honorable Daniel B. Banks Jr. as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy 4(a)(i)
The Complainant states that it is a recognized world leader in the development, manufacturing and fulfillment of fully integrated system solutions for the commercial vehicle market. To this extent, the Complainant contends that it owns the ROADWATCH mark through its registration with the USPTO (Reg. No. 2159429, filed April 23, 1996, registered May 19, 1998). The original owner of the mark was Sprague Controls, Inc., which assigned the mark to Complainant in March, 2000.
The Complainant alleges that the disputed domain name <roadwatch.com> is identical to the Complainant’s ROADWATCH mark.
Policy 4(a)(ii)
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant adds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not commonly known by the disputed domain name.
The Complainant explains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In essence, the Respondent is misleadingly diverting customers for commercial gain, uses the disputed domain name to resolve to a parked website featuring links to third parties. Concretely, the Complainant states that the Respondent admits that it generates revenue by providing click-through links to things relating to the terms “road watch.”
Policy 4(a)(iii)
The Complainant states that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, an example of such bad faith on behalf of the Respondent is its attempt to sell the disputed domain name for a price ($24,888) in excess of the Respondent’s out-of-pocket costs incurred in registering or acquiring the domain name. The Complainant had initially offered $2,500.
Moreover, the Complainant asserts that the Respondent has a pattern of registering confusingly similar domain names. The Complainant states that:
i. Respondent has recklessly registered numerous domain names that encompass the trademarks of other companies.
ii. Respondent has been a party to numerous UDRP proceedings where it was forced to transfer a disputed domain name.
iii. Respondent registers domain names with popular words for nominal amounts of money, thus preventing the owner of the trademark from registering the domain name with the mark.
The Complainant also asserts that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. According to the Complainant, the Respondent uses the disputed domain name to resolve to a website featuring commercial links in order to profit from click through fees.
B. Respondent
Policy 4(a)(i)
The Respondent asserts that the Complainant failed to describe or explain the scope of goods or services in which it has the exclusive right to use his trademark. Namely, the Respondent provides that the <roadwatch.com> domain name is made of up of two common words, and is not exclusively associated with Complainant. As such, the Respondent states that the Complainant’s registration does not confer a monopoly in the term ROADWATCH.
Policy 4(a)(ii)
The Respondent insists that the term ROADWATCH is made up of two common words that are commonly used in various contexts. In any event, the Respondent states that term ROADWATCH is susceptible to non-infringing legitimate use by others – absent use of the disputed domain name in connection with electronic road sensing devices, the Respondent states it is free to use the domain name for its own purposes.
Policy 4(a)(iii)
The Respondent contends that the Complainant has not shown Respondent’s use to be illegitimate. The Respondent argues that it is only one of numerous parties who are using the term ROADWATCH for something else than electronic road condition sensing devices and it is the reason why the Respondent does not illustrate any bad faith by not responding to threats.
Moreover, the Respondent adds that bad faith is not established by the mere fact that the Respondent replied to a commercial offer made by “Jeffry Nein”, who offered to purchase the domain name for $2,500. According to the Respondent, this individual has no connection to the Complainant’s mark and therefore an attempt to sell to this individual cannot be understood as an attempt to sell the domain name to the Complainant.
C. Additional Submissions
Complainant
In essence, the Complainant’s Additional Submission suggests that the Respondent attempts to discredit the Complainant’s mark as being common words. This cannot be justified considering that the Respondent’s use of the disputed domain name is limited to a pay-per-click system, which is not a legitimate use but a use in bad faith.
The Complainant insists that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services since the Respondent admitted that it is not commonly known by the disputed domain name and is not making a legitimate non-commercial or fair use of the domain name. The Complainant adds that the Respondent uses the disputed domain name to misleadingly divert customers for commercial gain and this, in and of itself, is not legitimate commercial or fair use.
The Complainant also replies to some of the Respondent’s assertions, namely that the Complainant’s mark relates to common words. In response, the Complainant contends that the present matter is not a case involving the mere use of common words in a domain name that happens to comprise elements of trademark owner’s brand, but rather, it is about the fact that the Respondent is capitalizing on the Complainant’s goodwill. As such, the Complainant adds that the Respondent has no legitimate rights in the disputed domain name.
Having regard to bad faith, the Complainant asserts that good faith usage by third parties in connection with unrelated goods and services cannot be used to shield or defend Respondent’s own bad faith usage.
Respondent
The Respondent refutes the Complainant’s Additional Submissions by stating that the Complainant failed to provide sufficient evidence with regard to use, goodwill, advertisement, marketing, etc… of the Complainant’s mark. In any event, the Respondent is highly critical of the Complainant’s additional evidence regarding the use of the mark.
Moreover, the Respondent asserts that the Complainant cannot rely on its mark in order to use an “all-purpose loophole” to argue that the Respondent was attempting to exploit the goodwill of the Complainant’s electronic sensor.
With regard to bad faith, the Respondent strongly answers against the Complainant’s attempt to discredit the Respondent’s behavior with the use of a “false offer.”
The Complainant Commercial Vehicle Group, Inc. operates in the development, manufacturing and fulfillment of fully integrated system solutions for the commercial vehicle market. It sells, in association with the trademark ROADWATCH, driving condition sensors in the form of electronic road surface temperature sensing/warning devices. This is the area where the Complainant has a certain monopoly for the use of the expression ROADWATCH.
While this is not a matter of contention, according to the evidence, the Complainant’s identity having regard to the chain of title in the ROADWATCH mark is a matter of concern.
The Complainant’s name is Commercial Vehicle Group, Inc., located at 7800 Walton Parkway, New Albany, OH 43054. However, in the evidence, the ROADMARK mark was assigned to Commercial Vehicle Systems, Inc. located at 171 Great Oak Drive Canton NC/USA 28716. Moreover, according to the Complainant’s evidence, Commercial Vehicle Systems, Inc. changed its name to Sprague Devices, Inc. in May 2005. Sprague Devices, Inc. is the last registered owner of the ROADWATCH trademark. Therefore, Commercial Vehicle Group Inc. does not appear anywhere in the evidence. This matter will be considered further below.
For the reasons set out below, the Panel is of the opinion that the disputed domain name should remain with the Respondent.
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.
The Panel deems necessary to provide a few remarks with regard to the Complainant’s identity in the present matter.
The Complainant Commercial Vehicle Group, Inc. is located at 7800 Walton Parkway, New Albany, OH 43054. In support of its Complaint, the Complainant provided evidence pertaining to the chain of title of the trademark ROADWATCH. However, the Panel notes that in those documents that the mark has been assigned to Commercial Vehicle Systems, Inc. located on 171 Great Oak Drive in Canton, NC. Moreover, according to the Complainant’s evidence, Commercial Vehicle Systems, Inc. has changed its name to Sprague Devices, Inc. since May 2005. This is a matter of concern since the Complainant as identified does not appear in the chain of title of the ROADWATCH mark provided in the evidence.
Considering this deficiency in the chain of title, the Panel finds that nothing in the evidence proves that the Complainant has any interest in the ROADWATCH mark. As such, the Panel is of the opinion that the Complainant has failed to meet Policy ¶4(a)(i).
In any event, in order not to decide this matter solely on a technical issue, the Panel will consider the matter as though the Complainant provided proper evidence of the registration and related assignment for the ROADWATCH mark with the United States Patent and Trademark Office (Reg. No. 2,159,429 registered on May 19, 1998). To this extent, providing evidence of a registration by virtue of an assignment with the USPTO is enough to demonstrate the acquisition of rights in a mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the marks by registering the marks with the USPTO); Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Form Feb 21, 2008) (finding the complainant held the trademark rights to the federally registered mark by virtue of an assignment). In this regard, the Panel concludes that the ROADWATCH mark is identical to the disputed domain name and as such, in this alternative, Policy ¶ 4(a)(i) is met in favor of the Complainant. The Panel will consider the other criteria having regard to this alternative.
The Panel is reminded that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). It is then up to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). This burden is a light one. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). The Panel holds that the Complainant has met this burden, having regard to the evidence. However, the Panel also finds that the Respondent has met its burden in demonstrating that it has legitimate interests in the disputed domain name.
Considering that the ROADWATCH consists of two common words, the Panel believes that as per the Respondent, the Complainant cannot have an exclusive monopoly regarding those words – the Respondent is entitled to use these generic terms and as such the Panel holds that the Complainant’s claim of illegitimate use is unsupported. See iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the respondent had rights and legitimate interests in the <aleads.com> domain name because it used the term “leads” in the generic sense to refer to the sale of leads over the Internet).
Therefore, the Panel finds Policy ¶ 4(a)(ii) in favor of the Respondent.
Since the Panel found above that the Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the Panel holds that the 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). Nevertheless, the Panel has considered the issue as to the presence of bad faith and conclude that none occurred in the matter at bar.
The Panel notes once more that the ROADWATCH mark is generic in its nature. In this regard, the Panel agrees with the Respondent. The ROADWATCH mark is constituted of two common words not exclusively associated with the Complainant. In fact other parties have registered trademarks before the USPTO where the words “road” & “watch” are prominently used, such as: Reg.# 1743685 ROAD WATCH AMERICA, Reg.# 2488738 ROADWATCHUSA.COM, Reg.# 33234000 ROADWATCH, Reg.# 3227089 ROADWATCH MISSING CHILD ALERT, Reg.# 2857414 ASSISTANCE ROADWATCH 24/7 EMERGENCY SERVICE and Reg.# 2341402 PROJECT FOR SAFER ADOLESCENT DRIVING ROAD WATCH.
The Panel finds that a Respondent, like others, is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. The Panel is of the opinion that the disputed domain name was not registered having in mind the Complainant’s ROADWATCH trademark. As such, the Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also 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).
Furthermore, the Panel finds that there is no bad faith offer to sell in the matter at bar since the disputed domain name is a generic one and there is no direct evidence that the Respondent registered the domain name with the intent to capitalize on the Complainant’s trademark. See Lumena s-ka zo.o v. Express Ventures LTD, FA94375 (Nat. Arb. Forum May 11, 2000).
Moreover, the Panel notes that it was the Complainant that initiated the contact with the Respondent with an offer – this is insufficient evidence of bad faith. See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent replied with an offer to sell its domain name registration for $50,000).
In light of the evidence provided by the parties, the Panel is of the opinion that there was no registration and use in bad faith in the matter at bar. Consequently, Policy ¶ 4(a)(iii) is also met in favor of the Respondent.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <roadwatch.com> domain name REMAIN WITH the Respondent.
Hugues G. Richard,
Chairman
Anne M. Wallace
Panelist
Honorable Daniel B. Banks Jr.
Panelist
Dated: October 18, 2013
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