`
Russell & Miller, Inc. v. Dismar
Corporation
Claim Number: FA0410000353039
PARTIES
Complainant
is Russell & Miller, Inc. (“Complainant”),
represented by Stephen J. Meyers, of
Drinker Biddle & Reath LLP, One
Logan Square, 18th and Cherry Street, Philadelphia, PA 19103-6996. Respondent is Dismar Corporation (“Respondent”), represented by Andrew Gowa, of Gowa Lincoln, PC, 1525 Locust Street, Suite 1000, Philadelphia, PA
19102-3711.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <salesigns.com>,
registered with Network Solutions, Inc.
PANEL
Each
of the undersigned certifies that he has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as Panelist
in this proceeding.
Hon.
Sir Ian Barker, Q.C., Mr. G. Gervaise Davis III and Mr. M. Kelly Tillery
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
27, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 27, 2004.
On
October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <salesigns.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
November 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 23, 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@salesigns.com by e-mail.
A
timely Response was received and determined to be complete on November 23, 2004.
Additional
Submissions were received from both parties.
Complainant’s Additional Submission was filed late. Without opposition from Respondent, the
Panel agreed to receive this submission.
On
December 7, 2004 pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed
Hon Sir Ian Barker, QC, Mr. G. Gervaise Davis III, and Mr. M. Kelly Tillery as
Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Russel & Miller, Inc., supplies a variety of business products and
services, including printed materials for businesses. It is the owner, through assignment, of the trademark SALE!SIGNS,
United States Trademark Registration No. 2,342,421, for “paper tags for use in
selling, advertising, and promoting goods and services; non-luminous, non-mechanical
plastic signs for use in selling, advertising, and promoting goods and
services.” Complainant and its
predecessors-in-interest have used the trademark SALE!SIGNS since at least as
early as 1988.
Respondent
is a competitor of Complainant, selling sign kits and plastic display signs for
use in selling, advertising, and promoting goods and services. Respondent registered the disputed domain
name <salesigns.com> on May 18, 1996. An active website was posted on October 13, 1999.
Complainant’s
United States Trademark Registration establishes its rights to that mark with
regard to Policy ¶ 4(a)(i).
The
disputed domain name is identical or confusingly similar to Complainant’s
mark. The only difference is that the
disputed domain name does not include the exclamation point “!”, which cannot
be part of a domain name. The absence
of a punctuation mark does not defeat the confusing similarity. See A&F Trademark Inc. and another v.
Rahschulte D2001-0901 (WIPO Sept. 17, 2001) (regarding the <abercrombiefitch.com>
domain name).
Respondent
has no rights or legitimate interests in the domain name.
Respondent’s
registration and use of the SALE!SIGNS mark as a domain name is an attempt to
trade on the goodwill associated with Complainant’s well-known mark. Respondent has no connection or affiliation
with Complainant and has not received a license or consent, express or implied,
to use its mark in a domain name or in any other manner. Respondent’s only use of the term
“SALESIGNS” is as a domain name for a commercial website featuring Respondent’s
goods and services.
Bad
faith registration occurred, based on the following: (i) the disputed domain name contains for all essential purposes
Complainant’s trademark, (ii) such trademark has been in use for a substantial
time prior to the use of the disputed domain name by Respondent and is a
well-known mark, and (iii) Respondent can allege no good faith basis for its
use of the Domain Name.
Respondent
is using the disputed domain name in bad faith. Respondent is not using the disputed domain name in a legitimate
non-commercial manner. Instead, it is
using, and has used, the disputed domain name to drive Internet traffic to its
own commercial website that, like Complainant’s, offers signage products. Such use is likely to deceive or mislead the
public into believing that Respondent’s site is associated or affiliated with,
or sponsored or endorsed by Complainant.
The
disputed domain name is identical and/or confusingly similar to Complainant’s
mark and an Internet user will likely believe that there is an affiliation
between Respondent and Complainant.
Registration of the disputed domain name, which is confusingly similar
to R & M’s mark, is evidence of bad faith pursuant to Policy ¶
4(b)(iv).
Complainant’s
trademark application was filed on July 6, 1998. According to the Way Back Machine, at <www.archive.org>,
the first time a web page was ever posted at the SALESIGNS.COM domain name was
October 13, 1999. Thus, Respondent,
through the USPTO website could easily have determined whether any third party
including Complainant’s predecessors-in-interest had rights in the mark prior
to launching its website
B.
Respondent
Respondent
traces its roots to a small shop in Philadelphia in 1934, which printed and
sold price tags and small signs primarily to retail shoe stores. In 1946 the company incorporated as Display
marketers, Inc. By this point, Display
marketers was manufacturing and selling larger sale signs, as well as sale
tags, to its customers who owned retail stores across the east coast of the
United States.
In
the 1950s, Display marketers Inc. began to market its sale signs and related
products in direct mail catalogs throughout the United States, and had begun to
trade under the name “Dismar.” Early catalogues
prominently exhibited Dismar’s sale signs, tags and other products to a
national audience. In 1978, it
incorporated in New Jersey as Dismar Corporation.
By
its own admission, Complainant started doing business in the sale sign industry
in 1988, more than 54 years after Respondent began its operations.
On
March 18, 1996, Respondent registered the disputed domain name, <salesigns.com>,
a description of its major product for over 60 years of sale signs. At the time, it had no idea that Complainant
(or any predecessor) had any intention of applying for a trademark of the term
“SALE!SIGNS,” if such a term could in fact be legally registered.
Some
time in 1996 or 1997, a man (believed to be a Mr. Lou Oates) claiming to be the
owner of a brand in Illinois called Sale!Signs, a local sole proprietorship
that was a small distributor of signs, telephoned Respondent. He told Mr. Senker that the disputed domain
name was similar to the “Sale!Signs” name that the caller had been using. He asked whether Respondent would be
interested in transferring that domain name to the caller. Mr. Senker advised that the domain name was
merely a generic description of the products that Respondent and other
companies sold (“sale signs”); that Respondent had been in the business of
making and selling sale signs for over 60 years, that Respondent sold far more
sale signs each year than the caller did, and that Respondent had absolutely no
intention of relinquishing its domain name.
From that call until this year, Respondent never heard from anyone
associated with Sale!Signs (including Complainant) regarding the disputed
domain name.
In
April 1998, Respondent hired a professional website design and hosting company,
The 28th Street Internet Co., Inc. of New York City (“Website
Company”), to design the website at the disputed domain name. Evidence was introduced of payments by
Respondent to the website company.
Complainant,
alleges that Respondent’s website was not in existence until October 13,
1999. Respondent’s own records and the
sworn testimony of an executive of the Website Company, make it clear that the
website was hosted and available on the Internet as early as May 8, 1998, prior
to Complainant’s trademark application, and, that it was fully operational by
July 1998, the very month Complainant filed its trademark application.
Complainant
failed to include in its submission to this Panel, the history of the trademark
proceedings before the United States Patent and Trademark Office (“PTO”)
relating to its trademark registration of “SALE!SIGNS”. It is critical to examine the entire file of
the PTO, and especially the representations made by Complainant in obtaining
that registration.
The
first official action by the PTO on the SALE!SIGNS trademark application was
the issuance of a non-final action, frequently called an “office action,” dated
December 15, 1998, wherein the PTO refused registration of the SALE!SIGNS mark
“because the proposed mark merely describes the goods,” citing Section 2(e)(1)
of the Trademark Act.
In
response to the refusal, on June 18, 1999, Complainant filed a Response To
Office Action on December 15, 1998 (“Trademark Response”) and a Declaration
dated June 15, 1999 of John Trimberger (“Declaration”), Complainant’s then
President. In the Trademark Response,
Complainant argued:
When
considered as a whole, SALE!SIGNS does not merely describe the wide variety of
paper tags and plastic signs applicant sells for use by its customers… [This] is also confirmed by the fact that
none of the companies producing paper tags and plastic signs use SALE!SIGNS or
any similar mark. The lack of any use
by competitors of the mark supports applicant’s claim of exclusive rights to
the mark. (citations omitted)
This
representation was made to the PTO by Complainant at least three years after
Complainant had actual and constructive notice that Respondent had registered
the disputed domain name and more than one year after Respondent was offering
its goods and services on the Internet through the website.
The
PTO relied on the Trademark Response and Declaration when it proceeded to
register the trademark SALE!SIGNS on which Complainant relies in the matter now
before the Panel.
Complainant
never contacted Respondent to protest, or to instruct it to cease or desist
using the words “sale signs” in connection with its business, domain name or
website.
In
the first half of 2004, Mr. Senker received three telephone calls from Michael
Wooten, Complainant’s President, asking him, with increasing firmness, to
transfer the disputed domain name to Respondent. Respondent declined on each occasion.
What
allowed SALE!SIGNS to be a registered trademark in the first instance was
Complainant’s representation to PTO that no competitors had used that mark or anything
similar—at a time when Respondent had already registered the disputed domain
name and developed a website with that name—and that the “!” made the mark
distinctive and fanciful as opposed to descriptive. Complainant now argues that Respondent is using a similar mark
(the very domain name it registered three years before the trademark
application) and that the “!” must be
disregarded now so that Complainant can try to prove to this Panel that there
is no difference between “SALE!SIGNS” and the disputed domain name.
Respondent’s
Response was accompanied by sworn affidavits from Mr. Senker and from the
website designer which supported the allegations.
As
to Complainant arguing that Respondent cannot have a legitimate interest in the
domain name because it “does not have a legitimate interest,” were that
circular reasoning supportable under the ICANN Policy, there would never be any
ICANN dispute cases involving registered trademarks. By merely stating a legal
conclusion, without supporting facts, Complainant fails to sustain its burden
of proving the required criteria set forth in Policy ¶ 4(a)(ii). On the contrary, it is clear from the
Complaint that the trademark application was filed two years after the domain
name registration, which in itself, provides Respondent with the requisite
rights and legitimate interests in its domain name.
As
to bad faith, Respondent registered the domain name two years before Complainant even applied for a trademark. At no time did it know that Complainant had
any intention to apply for a trademark registration. Respondent’s website had been posted and operational in the same
month as Complainant applied for its trademark application, six months or more
before the PTO initially refused its application, and two years before any
registration was ever issued.
Complainant
argues that it need not prove bad faith at the time of the domain registration,
if it can prove bad faith in the subsequent use of the domain name.
Complainant
then argues that evidence of Respondent’s bad faith use (not registration) of
the domain name is shown by the fact that it used the website after Complainant
applied for the trademark, and therefore, by viewing the PTO website,
Respondent was on constructive notice that Complainant had filed for a
trademark registration for “SALE!SIGNS.”
However, constructive notice alone cannot be taken as evidence of bad
faith. See Sterling, Inc. v. Sterling Jewelers, Inc., D2002-0772 (WIPO Nov. 13, 2002). And Complainant must show evidence of
widespread use or the fame of the mark before Respondent’s registration and use
of the domain name. Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO Apr. 18, 2000).
Based
on the facts and evidence, Respondent requests that the Panel make a finding of
reverse domain name hijacking. While it
is rare for a Panel to determine reverse domain name hijacking, the facts here
are egregious. In addition to the
evidence that substantiates that the Complaint was brought in bad faith: (1)
Complainant has owned the <sale-signs.com> domain name but has never
posted, or even requested Respondent’s permission to post a
<sale-signs.com> website (or even direct that URL to its long-held
<www.valudisplay.com> site), evidencing that Complainant’s plan has always
been to grab Respondent’s now successful domain name rather than develop its
own website; (2) there was no bad faith when Respondent’s domain name was
registered, thereby making the Complaint baseless on its face; (3) Complainant
seems to be an “old pro” at using (albeit it unsuccessfully) an ICANN domain
name dispute in bad faith to try to steal a generic and descriptive domain name
that a small company developed into a successful website. See Russell & Miller, Inc. v. S. Walter Packaging Corp., FA 98410
(Nat. Arb. Forum Oct. 9 2001) (involving the domain name
<bagsandbows.com>); and (4) Complainant sat quietly for six years while
Respondent developed and advertised its domain name and site at considerable
expense, and then when the site was well-known and reaping results, Complainant
tried to intimidate and threaten Respondent with Complainant’s size, financial
clout and legal resources to give it the domain name.
C.
Additional Submissions
The
additional submissions of both parties are couched somewhat emotively. The following points can be distilled –
additional to those in the principal pleadings.
(a)
Respondent
is fully aware of Complainant’s rights since it collects Complainant’s
promotional material.
(b)
Complainant
has a common law mark in Sale!Signs which was established by use since 1988 –
long before the trademark registration.
(c)
Complainant
was under no obligation to disclose to the PTO Respondent’s use of the disputed
domain name.
(d)
Respondent’s
claim that Complainant was on “constructive notice” of the disputed domain name
is a novel and unwarranted proposition.
(a)
Respondent
does not assert trademark rights in the disputed domain name that it has used
successfully for 6 years without challenge.
(b)
There
is no evidence that the words “Sales Signs” are anything other than generic.
After consideration of the documents and submissions, the Panel makes the
following findings:
(a) The
disputed domain name was registered by Respondent on March 18, 1996.
(b) Respondent started developing its
website in early 1998 and had it publicly available on the Internet by May 8,
1998. It paid for the creation of a
professionally produced website.
(c)
A Mr. Lou Oates applied to the PTO for a trademark registration of the
mark SALE!SIGNS on July 6, 1998.
(d)
Some time in 1996 or 1997, a person claiming to trade as ‘Salesigns’
asked Respondent to transfer the disputed domain name. Respondent refused to do so. This person may have been Mr. Oates.
(e)
The trademark was finally registered by the PTO on April 18, 2000, after
a representative of Complainant had declared on June 15, 1999 that none of its
competitors used the mark in connection with the sale of paper tags and plastic
signs for selling, advertising and promoting goods and services. The same declarant deposed that Complainant
had purchased the mark from Mr. Oates on March 4, 1999.
(f)
As at the date of registration of the disputed domain name, Respondent
did not know of Complainant and its use of the mark SALE!SIGNS. There is no evidence whether this
Complainant knew of Mr. Oates telephone call to Ms. Secker.
(g)
Although Complainant asserted widespread use of the mark from 1988 until
the date of application for trademark registration, the evidence produced by it
falls far short of what is needed to justify proof of a common law
trademark. For what is required. See, e.g., Barnes v. Old Barnes Studios Ltd, D2001-0121 (WIPO Mar. 30, 2001); Luis Cobos v. West, North,
D2004-0182 (WIPO June 21, 2004); BAAplc
v. Larkin D2004-0555 (WIPO Nov. 11, 2004).
The proof is particularly deficient when it is asserted that the mark
was well known when it was used by Mr. Oates before 1999. One might have expected evidence from him.
(h)
Respondent has been conducting a bona
fide business selling sales and promotional tags and signs for many years.
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 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;
(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.
Identical or Confusingly Similar: Policy
¶ 4(a)(i).
Complainant
alleges rights in the SALE!SIGNS mark as the result of U.S. trademark
registration number 2,342,421 (issued April 18, 2000).
Complainant
claims to be the assignee of rights in the mark. It states that its predecessors-in-interest first used the
SALE!SIGNS mark in commerce in 1988.
Complainant
also argues that the SALE!SIGNS mark has acquired secondary meaning “through
extensive promotion, sales and recognition among the public.” Although it does not directly address at
what point in time the mark acquired secondary meaning, it seems to imply that
the secondary meaning was established prior to the disputed domain name
registration on May 18, 1996.
However,
the evidence in support of that assertion falls far short of the proof
necessary for a common law mark – especially one based on essentially
descriptive words. This is all the more
so when any common law reputation for the mark must have been acquired when it
was owned by Mr. Oates, yet there is no evidence from him.
Complainant
charges that the disputed domain name is confusingly similar to Complainant’s
SALE!SIGNS mark because the domain name simply omits the exclamation point that
is present in Complainant’s mark.
Because exclamation points are incapable of being reproduced in domain
names, the omission of such characters in domain names does not significantly
effect the determination of whether a domain name is identical or confusingly similar
to another’s mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000).
Complainant
has rights in the registered mark as at the date of filing of the
Complaint. For the purposes of the
first criterion under the Policy, it matters not that trademark registration
took effect after the registration of the disputed domain name. However, such a finding is not helpful to
Complainant, since the lack of rights in a mark at the time of registration of
the domain name is relevant under the last two criteria.
The
Panel cannot inquire into whether the trademark was improperly registered by
the PTO either because of some alleged misconduct on the part of
Complainant
Accordingly,
Complainant succeeds under the first criterion.
Rights and
Legitimate Interests: Policy ¶
4(a)(ii)
Because the
disputed domain name is comprised of descriptive terms (albeit trademarked),
Respondent has rights or legitimate interests in the domain name because it is
not exclusively associated with Complainant’s business. See Energy
Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights
and legitimate interests in the domain name where “Respondent has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively associated with Complainant’s business”);
see also Coming Attractions, Ltd. v.
Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding
Respondent had the right to register the subject domain name,
<comingattractions.com>, based upon the generic usage of the term
"coming attractions"); see also
FilmNet Inc. v. Onetz, FA 96196 (Nat.
Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that
Respondent did not have rights or legitimate interests in the
<filmnet.com> domain name, where the disputed domain name is wholly
comprised of generic words, even though Complainant is the owner of the FILMNET
mark).
Moreover, in the
Panel’s opinion, Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). As proof, Respondent has
provided sworn evidence of its longstanding involvement in the “sale sign”
market and its use of a descriptive domain name to further its competition in
that market. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2,
2003) (finding that Respondents operation of a bona fide business of online
prop rentals for over two years was evidence that Respondent had rights or
legitimate interests in the disputed domain name); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208
(WIPO Jan. 3, 2002) (finding that Respondent’s use of the disputed domain name
for a website regarding chess tournaments, particularly because the domain name
appropriately described both the target users of Respondent’s services and the
nature of Respondent’s services, was a bona fide use of the domain name).
The domain name is therefore being used
“to describe the content of the site,” as evidence that Respondent is making a
bona fide offering of goods or services with the disputed domain name. Accordingly in the Panel’s view, Respondent
has satisfied Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
In these circumstances, it is not
necessary for the Panel to fully explore the bad faith issue. The Panel considers a finding of bad faith
registration against Respondent to be impossible. In 1996, when the domain name was registered, Complainant had not
even applied for US trademark. Although
it might have had a large business selling “sale signs” the evidence of its
having a common law trademark just does not exist. Nor can there be bad faith in the use by Respondent of a domain
name that reflects the business it has carried on legitimately for many
decades.
Reverse Domain Name Hijacking
To succeed on a claim for Reverse Domain
Name Hijacking, Respondent must show that Complainant knew of Respondent’s
unassailable right or legitimate interest in the disputed domain name or the
clear lack of bad faith registration and use, but nevertheless brought the
Complaint in bad faith. (Sydney
Opera House Trust v. Trilynx Pty Ltd WIPO D2000-1274). The Panel must consider both “malicious
intent and recklessness or knowing disregard that Respondent possessed
“legitimate interests.” See Gold Line International Inc. v. Gold Line,
D2000-1151 (WIPO Jan. 8, 2001).
If
it could be proved that the person (probably Mr. Oates) who contacted
Respondent in 1996 or 1997 was acting as an agent for Complainant, or that
Complainant had knowledge of that approach, Respondent may be able to succeed
on its Reverse Domain Name Hijacking plea.
The Panel can find no firm evidence on this point and is not in a
position to make a definitive finding of bad faith against Complainant. If Complainant knew of Respondent’s
activities at the time when its officer made the declaration to the PTO in
1999, then it is hard to see how that declaration correctly reflected the
situation.
The
unexplained delay of Complainant in filing this proceeding also counts against
it. However, on balance, the Panel
declines to make a declaration of Reverse Domain Name Hijacking.
DECISION
Having
considered all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Hon Sir Ian Barker QC (Presiding
Panelist)
Mr. G Gervaise Davis III, and M Kelly Tillery, Panelists
Dated: December 20, 2004
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