Calibers National Shooters Sports Center, LC v. W. D. Group Ltd.
Claim Number: FA1310001525053
Complainant is Calibers National Shooters Sports Center, LC (“Complainant”), represented by Jeffrey D. Myers of Peacock Myers, P.C., New Mexico, USA. Respondent is W. D. Group Ltd. (“Respondent”), represented by UDRP POLICE DBS, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calibers.com>, registered with Tucows, 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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2013; the National Arbitration Forum received payment on October 17, 2013.
On October 17, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <calibers.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 October 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@calibers.com. Also on October 18, 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 November 5, 2013.
An Additional Submission was received from the Complainant on November 8, 2013, which was timely.
On November 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm as Panelist.
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
Complainant contends:
a) Complainant is the owner of the CALIBERS mark, used in connection with gun firing ranges, educational services, competitions, and news and articles related to guns and shooting. Complainant registered the CALIBERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,015,997 filed Feb. 2, 2011; registered Aug. 23, 2011).
b) The <calibers.com> domain name is identical to Complainant’s mark.
c) Respondent has no rights or legitimate interests in the disputed domain name.
a. Complainant has not authorized Respondent to use the CALIBERS mark, and Respondent is a private registration, so it cannot claim that it is commonly known by the name “calibers” or the <calibers.com> domain name.
b. Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Sponsored links in Complainant’s area of commerce are displayed at the disputed domain name’s resolving website.
d) Respondent is attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s licensed trademark. The <calibers.com> domain name’s website has been a list of sponsored links, merely taking advantage of the well-known nature of Complainant’s mark in order to attract more Internet users and generate revenue. Respondent uses <information.com> for this service. Respondent intended to earn profit from the confusion created with Internet users who believe they are accessing Complainant’s website.
B. Respondent
Respondent contends:
a) Complainant claims that the marks have been used since at least 1997 but provides no evidence to support this assertion. Simply pointing to a date of first use is not sufficient for the purposes of establishing prior rights in a mark. Further, evidence of two abandoned trademark applications filed in 1997 by Complainant with the status, “No Use Statement Filed” suggest that the application was filed on an intent-to-use basis and Complainant was unable to provide evidence of its use within this time.
b) Respondent does not contest the fact that the <calibers.com> domain name is identical to a trademark in which Complainant has rights.
c) The <calibers.com> domain name is comprised of a descriptive term. The term “calibers” can refer to the diameter of the bore of a firearm, such as a gun barrel, and the use of the term in a gun store is analogous to using the term “wheels” to operate a car dealership. Complainant’s mark would in no way give it the exclusive right to use the terms or to assert a monopoly over such descriptive terms.
d) Respondent operates a web directory at the <calibers.com> domain name and has for 13 years without opposition. Complainant’s assertion that Respondent is attempting to trade off of Complainant’s reputation is unfounded as Respondent is merely using a descriptive term, calibers, which is so closely associated with the industry in which Complainant happens to operate that it lacks any distinctiveness.
e) The marks which Complainant relies upon were registered on August 23, 2011—eleven years following the date when the <calibers.com> domain name was first registered. Complainant’s claimed use dating back to 1997 is unsubstantiated.
f) Respondent only became aware of Complainant at the time of this dispute. Respondent and Complainant do not share close geographical proximity to one and another and there is nothing in Complainant’s filing which would indicate an awareness of Complainant’s mark either by Respondent or the general public as a whole. Without such knowledge, there can be no intention by Respondent to target Complainant, and thus no bad faith.
g) Reverse Domain Name Hijacking
a. Complainant was clearly aware that the domain registration predated Complainant’s trademarks and that it would be difficult, if not impossible, to prove bad faith registration.
b. Complainant is not in a position of ignorance, and Complainant would have been aware of the extensive use and the meaning of the term “calibers” within its industry.
c. These proceedings had caused inconvenience and unnecessary financial loss to Respondent, and Complainant’s ignorance is not a justification for making such serious and baseless allegations against Respondent. This points to an element of harassment in bringing this dispute.
d. The Complaint constitutes a frivolous filing and is a malicious attempt to defame Respondent as a cybersquatter and bully Respondent out of a domain name that has been legitimately held for 13 years.
e. The lack of due diligence carried out by Complainant’s counsel should not excuse it from a finding of Reverse Domain-Name Hijacking.
h) Respondent registered the disputed domain name on February 15, 2001.
C. Additional Submissions
Complainant contends in its Additional Submission:
a) The domain name at issue includes exactly the Complainant’s registered trademark, CALIBERS, and this is not disputed by Respondent.
b) Respondent avers that Complainant does not have rights in the CALIBERS trademark that predate the date of registration of the disputed domain name (February 15, 2001), suggesting that the first use date in the trademark registration in inaccurate, such is not the case. Complainant has done business under the name CALIBERS continuously since 1997 as shown in Attachments 1 through 3. As such, Complainant has established common law rights from prior to the disputed domain name registration.
c) Respondent further submits that abandoned design trademark applications by Complainant somehow demonstrate lack of use of CALIBERS as a word mark. This is ludicrous, and the Attachments hereto show use of the word mark from well prior to the domain registration.
d) Respondent intended to earn profit from the confusion created with Internet users and has attracted users for commercial gain, while creating a likelihood of confusion with Complainant’s trademark as the website in operation by Respondent has been a list of sponsored links. Such operation is evidence that Respondent is seeking to benefit from the confusion created by the confusion similarity, which constitutes bad faith registration and use under Policy Paragraph 4(b)(iv).
e) In light of the Respondent’s bad faith registration and use of the disputed domain name, concomitant denial of Respondent’s request for a ruling of reverse domain name hijacking is requested.
a. Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
b. Respondent has rights to or legitimate interests in the disputed domain name.
c. Respondent did not register and use the disputed domain name in bad faith.
d. Complainant has not engaged in reverse domain name hijacking.
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.
Complainant contends that it is the owner of the CALIBERS mark, used in connection with gun firing ranges, educational services, competitions, and news and articles related to guns and shooting. Complainant states that it registered the CALIBERS mark with the USPTO (e.g., Reg. No. 4,015,997 filed Feb. 2, 2011; registered Aug. 23, 2011). In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to its mark through its federal trademark registrations, and panels such as that in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), have expounded that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence.
Complainant asserts that the <calibers.com> domain name is identical to Complainant’s mark. The Panel notes that Respondent merely adds the generic top-level domain (“gTLD”) “.com” to the CALIBERS mark to create the disputed domain name. In Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000), the panel found that the domain name <gaygames.com> was identical to the complainant's registered trademark GAY GAMES.
Respondent does not contest the fact that the <calibers.com> domain name is identical to a trademark in which Complainant has rights, however, Respondent notes that it will discuss why this is not relevant given the predating of the domain name as Respondent discusses under Policy ¶ 4(a)(iii).
Therefore, the Panel finds that the <calibers.com> domain name, which is merely Complainant’s mark and the gTLD “.com,” is identical to the CALIBERS mark, in which Complainant has rights, under Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it does have rights or a legitimate interest in the disputed domain name. Respondent notes that it operates a web directory at the <calibers.com> domain name and has for 13 years without opposition. According to Respondent, its use of the disputed domain name is one which reflects its business and the domain name itself. In INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006), the panel held that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). As such, the Panel finds that Respondent’s use of the <calibers.com> domain name is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Respondent also argues that the term of the <calibers.com> domain name is common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent argues that the term “calibers” can refer to the diameter of the bore of a firearm, such as a gun barrel, and the use of the term in a gun store is analogous to using the term “wheels” to operate a car dealership. Respondent asserts that Complainant’s mark would in no way give it the exclusive right to use the terms or to assert a monopoly over such descriptive terms.
The Panel notes that Complainant established the use of its mark dating back to 1997 in its Additional Submission. Complainant asserts in its Additional Submission that it has done business under the name CALIBERS continuously since 1997 as shown in Attachments 1 through 3, and thus Complainant has established common law rights from prior to the disputed domain name registration.
However, the Panel notes that attachment 1 to the Complainant’s Additional Submission simply shows that Complainant was incorporated in the State of New Mexico in 1997. Attachment 2 is a local directory showing that Complainant was doing business as CALIBERS National Shooters in that year. Attachment 3 merely shows advertising in place as of 1998 using magnets. None of the Attachments proves that the Complainant’s mark was exclusively, continuously, and substantially used enough for the Panel to recognize Complainant’s mark acquired a secondary meaning before February 15, 2001 when the Respondent registered the disputed domain name in 2001.
As the Panel agrees with Respondent, the Panel finds 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).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
As the Panel concludes that Respondent has rights or legitimate interests in the <calibers.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.”).
Complainant asserts in its Complaint and Additional Submission that Respondent intended to earn profit from the confusion created with Internet users and has attracted users for commercial gain, while creating a likelihood of confusion with Complainant’s trademark as the website in operation by Respondent has been a list of sponsored links. Complainant argues that such operation is evidence that Respondent is seeking to benefit from the confusion created by the confusion similarity, which constitutes bad faith registration and use under Policy Paragraph 4(b)(iv).
Respondent notes that it operates a web directory at the <calibers.com> domain name and has for 13 years without opposition. According to Respondent, its use of the disputed domain name is one which reflects its business and the domain name itself. In INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006), the panel held that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). As such, the Panel finds that Respondent’s use of the <calibers.com> domain name is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) not evidence that Respondent is seeking to benefit from the confusion created by the confusion similarity, which constitutes bad faith registration and use under Policy Paragraph 4(b)(iv).
The Panel further finds that Respondent has not registered or used the <calibers.com> domain name in bad faith as 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 notes that it operates a web directory at the <calibers.com> domain name, and has done so for 13 years. According to Respondent, Complainant’s assertion that Respondent is attempting to trade off of Complainant’s reputation is unfounded as Respondent is merely using a descriptive term, “calibers,” which is so closely associated with the industry in which Complainant happens to operate that it lacks any distinctiveness.
The Panel notes that mere assertions of bad faith are not enough by themselves for a finding of bad faith, and that the use of domain names for web directories and the like does not have an impact on this. See 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 Policy ¶ 4(a)(iii)); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith... pay-per-click websites are not in and of themselves unlawful or illegitimate”). Therefore, the Panel refuses to find bad faith under Policy ¶ 4(a)(iii) because Respondent is fairly using and fairly registered the disputed domain name.
Respondent contends that the mark which Complainant relies upon was registered on August 23, 2011—eleven years following the date when the <calibers.com> domain name was first registered. Respondent also contends that Complainant’s claimed use dating back to 1997 is unsubstantiated. Respondent states that it only became aware of Complainant at this time of this dispute. According to Respondent, Respondent and Complainant do not share close geographical proximity to one and another and there is nothing in Complainant’s filing which would indicate an awareness of Complainant’s mark either by Respondent or the general public as a whole. Respondent asserts that, without such knowledge, there can be no demonstration of intention by Respondent to target Complainant, and thus no bad faith.
The Panel notes that Complainant established the use of its mark dating back to 1997 in its Additional Submission. Complainant asserts in its Additional Submission that it has done business under the name CALIBERS continuously since 1997 as shown in Attachments 1 through 3, and thus Complainant has established common law rights from prior to the disputed domain name registration. However, attachment 1 to the Complainant’s Additional Submission simply shows that Complainant was incorporated in the State of New Mexico in 1997. Attachment 2 is a local directory showing that Complainant was doing business as CALIBERS National Shooters in that year. Attachment 3 merely shows advertising in place as of 1998 using magnets. None of the Attachments proves the Complainant’s mark was widely known enough for the Panel to recognize the Respondent’s awareness of the existence of the Complainant’s mark at the time when the Respondent registered the disputed domain name in 2001.
Complainant has not submitted any evidence that its service mark and its related services are widely known in particular in China, where Respondent markets its directory services. Complainant has further not submitted any other proof showing that Respondent should or could have been aware of Complainant’s trademark for other reasons, i.e., that it had been specifically aware of Complainant’s mark.
The Panel notes that only actual, not merely constructive, knowledge of a complainant’s rights in a mark at the time a disputed domain name is registered has been found by modern panels to be a basis for soiling a respondent’s dry-clean-only professional character with the oil-based stain of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). As such, the Panel refuses to find bad faith under Policy ¶ 4(a)(iii) on the grounds that Respondent did not have actual knowledge of Complainant’s mark when Respondent registered the <calibers.com> domain name. As such, the Panel finds that Respondent did not register the <calibers.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent contends that the <calibers.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s CALIBERS mark. Respondent argues that the term “calibers” can refer to the diameter of the bore of a firearm, such as a gun barrel, and the use of the term in a gun store is analogous to using the term “wheels” to operate a car dealership. Respondent asserts that Complainant’s mark would in no way give it the exclusive right to use the terms or to assert a monopoly over such descriptive terms. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith.
The Panel considers that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such a common term. Especially given the Panel’s finding that the Complainant’s mark is not considered as having acquired a secondary meaning before the registration date of the disputed domain name as reasoned above, the Panel also finds that Respondent did not register or use the <calibers.com> 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).
Reverse Domain Name Hijacking
As the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even though the Panel finds 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).
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 <calibers.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Panelist
Dated: November 14, 2013
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