Abt Electronics, Inc. v. Motherboards.com
Claim Number: FA0312000221239
PARTIES
Complainant
is Abt Electronics, Inc., Glenview,
IL (“Complainant”) represented by Brian
D. Saucier, of Deutsch, Levy & Engel, Chartered, 225 West Washington St., Suite 1700,
Chicago, IL 60606. Respondent is Motherboards.com, Bryan, TX
(“Respondent”) represented by John B.
Berryhill, Phd., J.D., 1601 Market
Street, Suite 2400, Philadelphia, PA 19103-2307.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <abt.com>, registered with Enom, Inc.
PANEL
The undersigned certifies 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.
Judge Irving H. Perluss (Ret.),
Presiding, James A. Carmody, Esq., and R. Glen Ayers, Esq. as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 23, 2003; the Forum received a hard copy of the
Complaint on December 29, 2003.
On
January 2, 2004, Enom, Inc. confirmed to the Forum that the domain name <abt.com> is registered with Enom,
Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. 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 January 7, 2004, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 27, 2004 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@abt.com by e-mail.
A timely Response was received and
determined to be complete on January 27, 2004.
Complainant filed a timely and complete
Additional Submission on February 1, 2004.
Respondent also filed a timely and
complete Additional Submission on February 6, 2004.
On February 9,
2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Irving H. Perluss (Ret.), Presiding,
James A. Carmody, Esq., and R. Glen Ayers, Esq. as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
FINDINGS AND DETERMINATIONS
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.
Complainant’s
request for transfer of the disputed domain name to it must be summarily
denied.
This is
because the threshold requirement of Policy ¶ 4(a)(i) has not been demonstrated
by Complainant, i.e., that the
disputed domain name is identical or confusingly similar to “a trademark or
service mark in which the complainant has rights.”
The
federal registration of Complainant’s mark was issued on November 12, 2002, the
application for which was filed on June 2, 2000.
However,
the disputed domain name was registered by Respondent on January 11, 2000, at
leave five months prior to the filing date of Complainant’s federal
registration.
In Travant
Solutions, Inc. v. Cole,.
FA 203177 (Nat. Arb. Forum No. 29, 2003), it was held that “[a]lthough the
domain name was registered before Complainant acquired rights in the name, the
plain meaning of Policy ¶ 4(a)(i) indicates that Complainant’s rights in the
mark do not have to precede Respondent’s domain name registration.”
The Travant decision, however, is contrary to the
vast majority of decisions wherein this issue was considered.
Thus,
for example, in Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30,
2001), it was held that Policy Paragraph 4(a)(i) “necessarily implies that the
Complainant’s rights [must] predate the Respondent’s registration and use of
the Domain Name.” See also Weatherford Int’l,
Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“numerous
decisions have determined that the relevant point in time when Complainant must
establish rights in its mark is before Respondent’s registration of the domain
name.”); see also Transpark LLC v.
Network Adm’r, FA 135602 (Nat. Arb. Forum Mar. 4, 2003).
Failing
the prior federal registration test, we turn to the question as to whether
Complainant has established that it had common law rights in its service mark
predating Respondent’s registration of the disputed domain name.
In this
regard, the Policy is broad. As noted
by Professor McCarthy in his treatise (McCarthy, Trademarks and Unfair Competition, section 25:74.2 (4th
ed. 2002):
“(1)
it does not require that the challenged domain name be identical to a registered trademark owned by the complainant; it
requires only that the domain name be identical or confusingly similar to the challenger’s trademark; (2) the
reference to a trademark or service mark ‘in which the complainant has rights’
means that ownership of a registered mark
is not required – unregistered or common law trademark or service mark rights
will suffice.” [Emphasis in original.]
The rub
is that in the record and the context of this proceeding, Complainant has not
demonstrated that it had prior common law rights in its mark.
In its
Additional Submission, Complainant does assert that it had rights existing at
the time of the domain name’s registration by pointing to the United States
Patent and Trade Office certificate that lists the first use of the ABT mark as
being in 1936 and the first use in commerce as being May 1982.
But that
is all the evidence submitted by Complainant and it is not sufficient.
In Weatherford
Int’l, Inc., supra, the Panelist stated:
“Establishing
common law rights in a mark requires a showing by Complainant that its mark has
acquired secondary meaning. In other
words, Complainant must establish that the public associates the asserted mark
with its goods and services.”
In Coupons,
Inc. v. Motherboards.com a/k/a DNS Admin., FA 192249 (Nat. Arb. Forum, Nov. 4, 2003), the Panel cited
authorities listing the factors which may establish common law rights in a
mark.
Thus, in
Media
West-GSI, Inc. v. Earthcards.com, Inc., D2000-0463 (WIPO July 28,
2000), the Panel enumerated the factors that may establish secondary meaning:
“This
test requires a demonstration that the mark, by means of sufficient marketing,
sales, usage, and passage of time, has become identified in the public mind
with a particular source of the goods or services. In determining whether a mark has acquired a secondary meaning, courts
consider such factors as: (1) advertising
expenditures, (2) consumer surveys liking the mark to a source, (3) unsolicited
media coverage of the service, (4) sales success, (5) attempts to plagiarize
the mark, and (6) length and exclusivity of the mark’s use.” (References omitted)
Also cited
was Australian Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002),
wherein the Panel held that common law rights had been established. It was said:
“It
is undisputed that Complainant has been identifying itself and its services
with the ‘Austrade’ mark since 1986.
Also undisputed are Complainant’s claim that, in recent fiscal years, it
has invested over 10 million Australian dollars to raise awareness of its
services, and raised as much in the annual revenue for services provided, all
in conjunction with its use of the ‘Austrade’ identifier. Additionally, the name has appeared in
brochures and other written materials published by Complainant for a wide
audience. Complainant also demonstrates
awareness of its name and services both within and outside of Australia.”
Obviously,
Complainant has failed to meet its burden.
As in Weatherford
Int’l, Inc., supra, it is held that because Complainant must satisfy
each element listed under Policy ¶ 4(a) in order to prevail in a dispute under
the Policy, it is not necessary to consider compliance with Policy ¶¶ 4(a)(ii)
& (iii).
This
decision should not be construed as a determination that Complainant could
never establish common law rights in its mark that are prior to the
registration of the disputed domain name.
On the record before the Panel, however, Complainant has failed to meet
its burden.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it is Ordered that the
Complaint be DISMISSED.
JUDGE IRVING H. PERLUSS
(Retired), Presiding
Panelist
JAMES A. CARMODY, Esq., Panelist
JUDGE R. GLEN AYERS, Esq., Panelist
Dated: February 20, 2004
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