Progressive Specialty Glass Company, Inc. v. Progressive Specialty Co Inc.
Claim Number: FA1507001629046
Complainant is Progressive Specialty Glass Company, Inc. (“Complainant”), represented by Ryan T. Beard, Texas, USA. Respondent is Progressive Specialty Co Inc. (“Respondent”), represented by Becky Schumacher, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressivespecialty.com>, registered with Network Solutions, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2015; the Forum received payment on July 15, 2015.
On July 17, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <progressivespecialty.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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@progressivespecialty.com. Also on July 20, 2015, 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 August 10, 2015.
On August 17, 2015 Complainant sent an Additional Submission that was compliant with Supplemental Rule 7. On August 19, 2015 Respondent also sent an Additional Submission that was compliant with the rule.
On August 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" 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 owns the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,040,914, first used in commerce Feb. 28, 1984, filed Dec. 2, 2010, registered Oct. 18, 2011). Complainant uses the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark in connection with its goods and services, which includes generally drinkware, and “advertising and marketing services, namely, promoting the goods and services of other by providing customized point-of-sale exhibits for promoting take-home souvenir drinkware.” The <progressivespecialty.com> domain name is confusingly similar to Complainant’s PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark. The <progressivespecialty.com> domain name removes the “GLASS COMPANY, INC.” portion of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent’s website indicates that Respondent is commonly known by “Progressive by Halo” rather than <progressivespecialty.com>. Respondent is not affiliated with, sponsored by, or authorized by Complainant to use the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark. Further, Respondent lacks rights or legitimate interests in the <progressivespecialty.com> domain name, as Respondent has failed to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to offer drinkware that is competitive with Complainant’s products.
Respondent has engaged in bad faith registration and use of the <progressivespecialty.com> domain name. Respondent uses the domain name to intentionally attract, for commercial benefit, Internet users through a likelihood of confusion with Complainant. Further, Respondent had knowledge of Complainant’s rights in the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent registered the <progressivespecialty.com> domain name on June 15, 1999, which predates Complainant’s trademark registration of the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark. Consequently, it is invalid to say Respondent registered a domain name that is the same or confusingly similar to an existing registered trademark since the registered trademark didn’t exist at the time Respondent registered the domain. There are no instances of actual consumer confusion, as no one has contacted Respondent believing they were contacting Complainant.
Complainant has no rights to the <progressivespecialty.com> domain name because Respondent has rights and legitimate interests in the disputed domain name. Respondent (as both an individual and a business) has been commonly known by the domain name, dating back to as early as 1968/69 when Respondent’s father started and traded as “Progressive Specialty Co.” The business was incorporated May 1, 1984, and Respondent has conducted active business under the name “Progressive Specialty” for almost 32 years. Respondent’s bona fide offering of promotional products includes calendars, pens, magnets, coffee mugs, among many other products. Respondent’s use of the disputed domain name is and has always been in complete and total connection with a bona fide offering of goods and services.
Respondent registered the disputed domain name prior to becoming aware of Complainant. It is completely false for Complainant to assert that Respondent has created a website to confuse and lure Complainant’s customers. Respondent’s website was created more than 12 years prior to Complainant’s trademark registration.
Respondent requests a finding of reverse domain-name hijacking.
C. Additional Submissions
Complainant contends that Respondent admitted that confusing similarity existed between the disputed domain name and Complainant’s mark when Respondent began operating under a new domain name. Complainant further asserts that Respondent does not dispute Complainant’s first use of mark date in 1984 and that even if Respondent previously had any bona fide use of the domain name that use was abandoned by Respondent. Complainant denies that it has engaged in bullying Respondent in regards to the disputed domain, contrarily stating that Respondent actions indicate an admission that there has been confusion and Respondent was given sufficient time by Complainant to transition to doing business under its new domain name.
Respondent asserts that any moves toward rebranding were done only in response to Complainant’s scare tactics and/or in response to negotiations to sell the disputed domain name to Complainant. Respondent disagrees with Complainant’s contention that any abandonment of the disputed domain name took place. Respondent again claims that she is the senior user of the domain name and therefore did not infringe, but is instead the victim of domain name hijacking under the present circumstances.
Complainant is Progressive Specialty Glass Company, Inc. of Plainville, CT, USA. Complainant is the owner of the 2011 domestic registration for the mark PROGRESSIVE SPECIALTY GLASS COMPANY, INC. which Complainant claims to have first used in commerce in 1984. Complainant provides no evidence in support of the latter claim other than its USPTO registration nor does Complainant specifically address common law rights in the mark at any point in its pleadings. Complainant states that is has continuously used the mark since inception in the marketing of goods and services in the take-home souvenir drinkware business.
Respondent is Progressive Specialty Co Inc. of Millsboro, DE, USA. Respondent registered the disputed domain name <progressivespecialty.com> in 1999. Respondent is the owner of a business that provides goods and services in the personalized promotional products business, said products including, but not limited to, pens, magnets, coffee mugs and calendars. Respondent incorporated the business in 1984 but claims that the business originated in the late 1960’s. Respondent’s evidence of usage prior to 1984 is limited to affidavits from parties who were alleged customers in the 1970’s. Respondent does provide additional evidence of continued operation since 1984. Respondent does not specifically address common law rights anywhere in its pleadings.
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 states that it owns the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark through its registration with the USPTO (Reg. No. 4,040,914, first used in commerce Feb. 28, 1984, filed Dec. 2, 2010, registered Oct. 18, 2011). Complainant contends that it uses the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark in connection with its goods and services, which includes generally drinkware, and “advertising and marketing services, namely, promoting the goods and services of other by providing customized point-of-sale exhibits for promoting take-home souvenir drinkware.” Prior panels have concluded that the relevant date for determining rights in a registered mark is the date of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel here finds that Complainant has established rights in the PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark under Policy 4(a)(i), dating back to December 2, 2010.
The Panel notes that Respondent registered the <progressivespecialty.com> domain name on June 15, 1999, which predates Complainant’s PROGRESSIVE SPECIALTY GLASS COMPANY trademark registration. When a disputed domain name predates a registration and filing date of a trademark, a complainant may establish common law rights through evidence of prior use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Prior panels have found common law rights where a complainant establishes its popularity with the public through evidence of sales figures, advertising, and number of customers. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
Here, Complainant has failed to provide evidence of sales or advertising expenditures, customer numbers, or any indication of the geographic scope of its initial use of the mark. As the Panel cannot speculate on scope of use or other evidence required to prove secondary meaning the Panel finds Complainant has failed to establish common law rights dating back to 1984. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Complainant argues that the <progressivespecialty.com> domain name is confusingly similar to Complainant’s PROGRESSIVE SPECIALTY GLASS COMPANY, INC. mark. The <progressivespecialty.com> domain name removes the “GLASS COMPANY, INC.” portion of Complainant’s mark, and adds the gTLD “.com” to the disputed domain name. Past panels have found that confusing similarity may exist where a respondent merely removes a portion of Complainant’s registered mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Further, previous panels have found that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. The Panel here finds that the <progressivespecialty.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has NOT met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent’s website indicates that Respondent is commonly known by “Progressive by Halo” rather than <progressivespecialty.com>. The Panel notes that the WHOIS information for the disputed domain name lists “Progressive Specialty Co Inc.” as the registrant of record, thereby indicating Respondent is known by the domain name. Respondent’s contention that Complainant abandoned the domain name is unsupported. Abandonment of one domain name does not occur by the mere usage of an additional domain name. Abandonment is a function of behavior and intent indicating the relinquishment of all dominion and control over the subject matter in question. Here, since Respondent maintains its registration of the disputed domain name and has expressed a desire to preserve its interest in the same, no abandonment can be found. Respondent’s past and current business cards also reflect the Progressive Specialty Inc. name.
Respondent argues that it has rights and legitimate interests in the disputed domain name. Respondent asserts that it has been commonly known by the domain name, both as an individual and a business, dating back to as early as 1968/69 when Respondent’s father started and traded as “Progressive Specialty Co.” Respondent claims that the business was incorporated May 1, 1984, and Respondent has conducted active business under the name “Progressive Specialty” for almost 32 years. The Panel notes Respondent has provided some limited evidence of use of the “Progressive Specialty Co., Inc.” name in connection with its business offerings date as far back as the 1970’s. The Panel also notes Respondent’s evidence of Progressive Specialty Inc. as an incorporated business in 1984 and documentation indicating business being done consistently since that time. Prior panels have found that respondents can demonstrate rights and legitimate interests in a disputed domain name where they can provide evidence of being commonly known by the disputed domain name. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”). The Panel finds that Respondent has provided sufficient evidence that it has been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent claims that its bona fide offering of promotional products includes calendars, pens, magnets, coffee mugs, among many other products. Respondent alleges its use of the disputed domain name is and has always been in complete and total connection with a bona fide offering of goods and services. Prior panels have found that respondents can demonstrate rights and legitimate interests in a disputed domain name where they can provide evidence of a bona fide offering of goods and services. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”). The Panel here finds that Respondent has rights and legitimate interests in the disputed domain name as per Policy ¶ 4(c)(i).
Complainant has NOT proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <progressivespecialty.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel 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 has NOT proven this element.
Respondent contends that Complainant has used scare tactics and bullying to force Respondent to transfer the disputed domain name to Complainant. Complainant disputes that it has operated outside of proper business etiquette in any manner. The Panel notes that Respondent registered the disputed domain name in 1999 and operated its business for many years prior to Complainant’s mark registration and that Complainant’s own domain name <progressiveglass.com> was registered in 2001. Respondent contends that she was unaware of Complainant’s existence until receipt of Complainant’s C&D letter and the threat of filing the present UDRP action. The Panel notes the parties engaged in negotiations over the possible sale and transfer of the disputed domain name but were unable to come to a satisfactory agreement. Complainant argues that its subsequent actions were warranted due to Respondent’s infringement of Complainant’s mark but Complainant provides no evidence of infringement. Complainant’s registration of the mark PROGRESSIVE SPECIALTY GLASS, INC. does not give Complainant exclusive rights to control the use of the individual words that constitute its mark. The marks are not identical and the parties businesses coexisted for more than a decade without any apparent conflict. Complainant did not contact Respondent until after Complainant registered its mark. But registration of a mark does not make prior use of similar marks suddenly infringing uses. The Panel here finds that the evidence supports a conclusion that Complainant’s assertions of Respondent’s bad faith registration or use are unfounded and Complainant has used the UDRP as a Plan "B" option to attempt to secure the domain after commercial negotiations have broken off. The Panel finds that reverse domain name hijacking is present.
Because Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <progressivespecialty.com> domain name REMAIN WITH Respondent.
In regards to Respondent’s request that the Panel enter an order finding reverse domain name hijacking the Panel so orders in favor of Respondent.
Darryl C. Wilson, Panelist
Dated: August 25, 2015
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