DECISION

Hale Products, Inc. v. Hart International Inc.

Claim Number: FA0309000198031

PARTIES

Complainant is Hale Products, Inc. (“Complainant”) represented by Dennis A. Gross of The Hill Firm, 666 Dundee Road, Suite 1201, Northbrook, IL, 60062. Respondent is Hart International, Inc., 265 N. Main Street, Ambler, PA 19002 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jawsoflife.com> registered with Network Solutions a/k/a VeriSign.

PANEL

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.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 25, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 2, 2003, Network Solutions a/k/a VeriSign confirmed by e-mail to the Forum that the domain name <jawsoflife.com> is registered with Network Solutions a/k/a VeriSign and that Respondent is the current registrant of the name. Network Solutions a/k/a VeriSign has verified that Respondent is bound by the Network Solutions a/k/a VeriSign 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 October 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 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@jawsoflife.com by e-mail.

A timely Response was received and determined to be complete on November 12, 2003.

On September 24, 2003 Complainant submitted an additional submission.

On November 21, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a producer of rescue and safety products.

Complainant asserts that Respondent linked the <jawsoflife.com> domain name to Phoenix Rescue Tools, which is one of Complainant’s direct competitors. Complainant contends that Respondent used the disputed domain name with the intent to mislead Internet users for commercial gain by diverting them to a direct competitor of Complainant.

Complainant, while alleging an international reputation in its trademark, provided little evidence to support this allegation. This is regrettably the case with certain complainants who expect Panels to assume certain unproved facts. This is unacceptable. However, in the interests of trying to reach the correct conclusion and one based on sufficient factual background the Panel accessed Complainant’s website (or an entity associated with it) at: http://www.hurstjaws.com/home/companyprofile.asp

The site states, inter alia, that:

“Hurst Jaws of Life rescue systems have been instrumental in saving thousands of lives throughout their 30 year history. From race track beginnings in 1972 to the rescue heroes of today, Jaws of Life system travel with more than 35,000 rescue squads, fire and police departments throughout the world…..

Searching for new opportunities for growth, Hale Products Inc acquired the Hurst Jaws of Life® line of rescue tools in 1984. Developed originally for the extrication of race car drivers, the Jaws of Life has become the preferred rescue tool of fire and rescue departments as well as the military.”

This establishes to the Panel’s satisfaction the allegation of repute. It also attests to the longstanding and widespread use of the trademark and asserts continued rights in that trademark.

B. Respondent

Respondent is in the business of Internet and IT consulting services.

Respondent claims that its interest in registering the domain name was with the intention of creating a website to chronicle the history of the creation of the rescue tool known as the “Jaws of Life”.

Respondents interest in registering the domain name was to create a website for the sole purpose of memorializing the history of the “Jaws” for his father-in-law, Francis Mike Brick, an inventor and developer of the original “Jaws”.

Respondent says the “site” expressly states:

(a) “this site an educational, historical, and informational site in the field of rescue tools”;

(b) “This site is a public service which will feature news and information about the history of rescue tolls using the original photographs of the people who made it happen”;

(c) “this site is not related to Hale Products, Inc, the Complainant.

The “site” provides links to nine manufactures of rescue tools, including that of Complainant. These companies all manufacture a rescue tool commonly known as the “Jaws” or “Jaws of Life”. On this basis it is submitted that Respondent is making a legitimate noncommercial and fair use of the domain name.

Respondent points out it has never initiated contact with Complainant with an offer to sell the domain to Complainant.

Respondent asserts that Complainant’s trademark “Jaws of Life” is generic and no longer distinguishes Complainant’s goods, namely power-operated pry bars, from power-operated pry bars manufactured and sold by at least ten other manufacturers.

Finally, on this point, it is asserted that The Jaws of Life is actually a brand of tools that is trademarked by the company but the name is often used when talking about other brands of rescue. The term “Jaws of Life” refers to several types of piston-rod hydraulics tools known cutters, spreaders and rams, which are used to pry open vehicles involved when a victim may be trapped.

Respondent asserts that Complainant has failed to protect its trademark and as such the mark has lost its distinctiveness and become generic. Respondent provides what it says is evidence that the general public and rescue professionals alike routinely refer to the piston-rod hydraulic cutting tools that Complainant markets under the JAWS OF LIFE mark to any such tool used to pry open a vehicle involved in an accident where a victim is trapped.

Respondent rejects Complainant’s assertion that Respondent is a competitor of Complainant.

Respondent provides evidence that the <jawsoflife.com> domain name was registered on April 8, 1996.

Respondent agrees that Complainant approached Respondent on multiple occasions with an offer to purchase the <jawsoflife.com> domain name registration, but the parties could not reach mutually agreeable terms.

C. Additional Submissions

Complainant further adds to its original Complaint that Respondent has registered the domain name <jawsoflife.com>, which is identical or confusingly similar to Complainant’s U.S. Trademark Registration, “jaws of life”. It is submitted that the domain name is identical to this trademark registration as it contains the same words, in the same block letter form as the trademark registration.

Complainant asserts that it currently has the following applications for JAWS OF LIFE (block letters) registered or pending in the following countries:

Brazil, Registered 22-Apr-1994

Chile, filed 05-Nov-2002

China, filed 05-Nov-2002

Italy, registered 09-Jan-1989

United Kingdom, registered 26-May-1988

Germany, registered 05-Jul-1989

Italy, registered 04-May-1992

It asserts that Jaws of LifeÒ is a famous trademark for rescue tools known worldwide as referenced by the trademark registrations listed and owns the domain names <jawsoflife.net> and <jawsoflife.org>.

Complainant states it also contacted Network Solutions resulting in the name being put on hold. Complainant and Respondent negotiated a Settlement Agreement for transfer of the domain name to Complainant, however, Respondent refused and failed to execute the Settlement Agreement and transfer the domain name as agreed upon.

It submits that Respondent is not currently operating the domain name which shows bad faith to prevent Complainant from exercising its rights to the trademarked name.

FINDINGS

Having reviewed all of the papers and submissions, the Panel finds that:

(1) the domain name registered by Respondent is identical to and confusingly similar to a trademark in which Complainant has rights;

(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.

Having established all three elements required under the ICANN Policy, the Panel concludes that the Complaint is made out and that the <jawsoflife.com> domain name be transferred from Respondent to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

Complainant has produced evidence of a trademark registration with the United States Patent and Trademark Office for the JAWS OF LIFE mark (Reg. No. 1,017,871 registered on June 13, 1974) related to rescue tools. The trademark has aslo been applied for or registered in other countries outside the USA. The Panel may find that Complainant has established rights in the mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

The Panel has also accessed on the Internet and referred to above the longstanding use Complainant or its predecessors and/or associates have made of the trademark. Respondent has provided some evidence of the descriptive and arguably generic use of the term “Jaws of Life”. There is however also evidence of the use of the descriptive and/or generic term “Extrication Tools” and the position is certainly not clear. This evidence has been taken into account. While it suggests that Complainant’s trademark may be in some risk, it remains registered in at least the USPTO and Complianant continues to assert trademark rights in the mark—unlike any other entitiy, based on the evidence at hand and to the knowledge of the Panel.

As noted above, Complainant has used the mark and registered it. It is entitled to rely on the presumption that the mark is distinctive, at least for the purposes of these proceedings. Respondent has not, on the evidence before the Panel, shown otherwise.

Complainant argues that Respondent’s <jawsoflife.com> domain name is identical to Complainant’s JAWS OF LIFE mark because the domain name appropriates the entire mark and merely omits the spaces between the words and adds the generic top-level domain name (“gTLD”) “.com” to the end of the mark. The Panel may find that neither the omission of the spaces nor the addition of the gTLD serve to sufficiently differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks).

Given the lack of connection in fact between Complainant and Respondent, the domain name is likely to confuse and is thus confusingly similar to a trademark in which Complainant has rights and is one falling within the contemplation of the Policy ¶ 4(a)(i).

It is found that the domain name registered by Respondent is identical to and confusingly similar to a trademark in which Complainant has rights and that the ground is thus made out.

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has no rights to or legitimate interests in the <jawsoflife.com> domain name because Respondent is not associated with Complainant and Respndent is not an authorized distributor or retailer of Complainant’s JAWS OF LIFE products. The Panel may conclude that Respondent has no rights to or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Complainant claims that Respondent has been a competitor of Complainant. The Panel may find that Complainant’s use of a domain name identical to Complainant’s well-known mark to compete with Complainant does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

It is common ground that Respondent linked the <jawsoflife.com> domain name to Phoenix Rescue Tools, one of Complainant’s direct competitors. Complainant contends that this was with the intent to mislead Internet users for commercial gain by diverting them to a direct competitor of Complainant. This assertion has both factual and logical merit and is accepted.

Respondent effectively contends they are not in the business of selling rescue tools and as a result they are not in competition with the trademark holder. However this argument sits uneasily with the effective acknowledgement/lack of contest by Respondent that Complainant has long used the JAWS OF LIFE mark and still claims trademark rights in it.

On this basis, it is found that Respondent has no right or legitimate interest in the domain name. The ground is thus made out.

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

As noted above, Respondent linked the <jawsoflife.com> domain name to Phoenix Rescue Tools, which is one of Complainant’s direct competitors. It is alleged this was done with the intent to mislead Internet users for commercial gain by diverting them to a direct competitor of Complainant. The Panel may find that Respondent’s use represents an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark, which evidences bad faith registration and use with regard to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

The Panel may find that Respondent had actual or constructive knowledge of Complainant’s rights in the JAWS OF LIFE mark when Respondent registered the <jawsoflife.com> domain name because of Respondent’s knowledge of the creation of the well-known rescue tool by that name. The Panel may decide that Respondent’s registration of a domain name identical to Complainant’s mark despite actual or constructive knowledge of Complainant’s rights in its mark constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

It is found that actual knowledge of Complainant’s rights or claim to such rights exists in this case. The argument that confusion will not occur has been dealt with above and rejected. The ground is thus made out.

Accordingly, Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

Accordingly, it is Ordered that the <jawsoflife.com> domain name be TRANSFERRED from Respondent to Complainant.

Clive Elliott, Panelist
Dated: December 2, 2003

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