Silver Streak Industries, LLC v. Vietze, Dan / Frederick Manufacturing
Claim Number: FA1510001643236
Complainant is Silver Streak Industries, LLC (“Complainant”), represented by Kenneth M. Motolenich-Salas of Gallagher & Kennedy, P.A., Arizona, USA. Respondent is Vietze, Dan / Frederick Manufacturing (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silverstreak.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2015; the Forum received payment on October 20, 2015.
On October 21, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <silverstreak.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 October 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@silverstreak.com. Also on October 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. 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
Complainant asserts trademark rights in SILVER STREAK and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells gift items, souvenirs and jewelry by reference to the trademark SILVER STREAK;
2. at the time of these proceedings Complainant has applications pending since September 2015 with United States Patent & Trademark Office (“USPTO”) to register that trademark;
3. the disputed domain name was registered on August 27, 1996; and
4. the domain name redirects users to another website described later.
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.
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)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. In this case Complainant has an application pending before the USPTO to register the trademark. A pending application does not give rights under paragraph 4(a)(i) of the Policy. Nevertheless, the Policy does not distinguish between registered and unregistered trademark rights and here Complainant asserts common law trademark rights in SILVER STREAK by reason of claimed use since 1978 in respect of its gift, souvenir and jewelry business.
Trademark rights can also arise through use and reputation if there is adequate proof of secondary meaning. Annex 1 to the Complainant is the sworn statement of Michael Mallon, manager of Complainant. The Complaint itself largely recites what is declared by Mr Mallon which is Complainant’s alleged exclusive right to the name SILVER STREAK by reason of its continuous use since 1978 and public awareness thereof based on the claim Complainant “has spent a substantial sum to promote and advertise in print, other physical media and on the Internet through <silverstreaks.com>.”
Support for those claims is limited to two annexures; one which shows incorporation of Complainant in the State of Arizona in December 1999 and another with a contemporary screenshot of the homepage at Complainant’s website, www.silverstreaks.com.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”)[i] asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Applying these principles Panel finds that the Complaint falls well short of providing proof of unregistered trademark rights in SILVER STREAK, an expression by its nature not readily susceptible to monopolization by a single trader.[ii] For that reason Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy and so the Complaint fails without the need for further analysis.[iii]
However, without departing from those findings and conclusion, Panel has in this case chosen to complete the UDRP analysis so as to make plain that the Complaint would have failed in other ways.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies Respondent as “Vietze, Dan / Frederick Manufacturing ” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The domain name redirects Internet users to a website at www.oregonproducts.com where “OREGON” branded chainsaws and related goods are advertised.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being or was used in bad faith.
The domain name was registered in 1996, almost twenty years ago. There is no explanation in Complaint as to why these Administrative Proceedings were not brought earlier. The delay is of a magnitude requiring explanation. The UDRP was drafted as a process to speedily combat abusive domain name registration and use. Panelists have applied the principle of laches to the UDRP in cases of long, unexplained delay.
Quite aside from the dispositive finding already made on the absence of proof of trademark rights, this Panel need not consider this issue of disentitling conduct on the part of Complainant because there is nothing in the evidence which suggests to Panel that the 1996 registration of the domain name was made in the knowledge of Complainant’s trademark and business.
The Complaint proceeds on the basis that Respondent targeted Complainant’s trademark. Panel observes that the domain name was registered three years before Complainant was incorporated. Mr Mallon’s declaration would suggest that between 1978 and 1999 the trademark was used by a family business. That business would seem on the evidence to be located only in Temple, Arizona. Its website at www.silverstreaks.com might have wider reach but Panel’s reference to the Wayback Machine[v] indicates no activity at that website until September 2001, well after the registration date of the disputed domain name.
Further, even cursory research of Respondent’s identity undertaken by Panel reveals that Dan Vietze has been employed as an IT Manager at Blount Industries, Inc., Kansas City from June 1992 to present time.[vi] Furthermore, it is public information that in 1997 Blount purchased Frederick Manufacturing Corp. of Kansas City, Missouri and in 2002 Blount's corporate headquarters moved to Portland, Oregon.[vii]
Blount is the WHOIS listed “organization” for the domain name and the administrative contact is a “Susan Williams” of Blount Inc. Dan Vietze’s WHOIS listed email is dan.vietze@oregonep.com. The website resolving from the disputed domain name, www.oregonproducts.com, promotes, as already mentioned, OREGON branded chainsaws, goods which are made by Blount which is, as noted, now headquartered in Oregon.
None of this of course answers the question of Respondent’s intention for the domain name. However, given the generic character of the words SILVER STREAK (noted earlier) and Respondent’s apparent ongoing employment as an IT manager (persons commonly charged in an organization with the task of registering and maintaining domain names and not uncommonly doing so in their own names) for Frederick Manufacturing and now Blount, Panel finds it more likely than not that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark, and registered the name for a purpose in no way linked with Complainant.
Accordingly, Panel find that Complainant has failed to meet the burden of proof of bad faith registration and use under paragraph 4(a)(iii) of the Policy and would decline to find bad faith registration even if these proceedings turned on that matter alone.[viii]
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <silverstreak.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 23, 2015
[i] Available at http://www.wipo.int/amc/en/domains/search/overview2.0.
[ii] Since it has a commonly understood and used meaning of “a run of luck, often in reference to money matters”, and as evidenced by Complaint itself which annexes a number of third party trademark registrations at the USPTO incorporating the term. It is to be observed that whilst UDRP panelists have taken the approach that the descriptive or generic character of a domain name is a factor best considered in the context of paragraphs 4(a)(ii) and/or (iii) of the Policy, the potential non-distinctiveness of the trademark nonetheless remains an issue germane to the determination of trademark rights.
[iii] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] See http://archive.org/web/.
[vi] See https://www.linkedin.com.
[vii] See https://en.wikipedia.org/wiki/Blount,_Inc.
[viii] See U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”); 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 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.
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