Van Vleck Homes, Inc. v. Steven Kirk
Claim Number: FA0502000414680
PARTIES
Complainant
is Van Vleck Homes, Inc. (“Complainant”),
Post Office Box 376, West Sand Lake, NY 12196.
Respondent is F. Steven Kirk (“Respondent”),
378 Nortonville Road, Valley Falls, NY 12185.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <vanvleckhomes.com>,
registered with Register.com.
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 7, 2005.
On
February 3, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <vanvleckhomes.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com 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
February 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 7, 2005 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@vanvleckhomes.com by e-mail.
A
timely Response was received and determined to be complete on March 7, 2005.
On March 10th, 2004, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jacques A. Léger, Q.C.
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred to it from Respondent.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that the disputed domain name is identical to a service mark in which
Complainant has rights, namely VAN VLECK HOMES. Complainant asserts that it is
a New York corporation that has been conducting business as a new home builder
under the name since 1996 and that it has built over 60 homes in Rensselaer
County, New York.
Complainant
argues that Respondent has no rights or legitimate interests in respect to the
disputed domain name since Respondent has no name corresponding to the domain
name in connection with a bona fide offering of goods and services, and that it
is not commonly known by the domain name. Complainant adds that Respondent is
using the domain name to send anyone interested in Van Vleck Homes to a web
site with false claims and misleading information about the home Respondent
purchased from Complainant. Complainant also contends that the website is
intended to disparage the name and reputation of Complainant, and that
Respondent’s intent in operating it is to tarnish the service mark of
Complainant.
Complainant
also argues that Respondent registered and is using the disputed domain name in
bad faith. Complainant alleges that Respondent registered the disputed domain
name during the construction of his new home to show pictures of the
construction with sarcastic commentary and to otherwise exact revenge on
Complainant for not being able to dictate the builder’s operations during the
construction of Respondent’s home.
B.
Respondent
In
its Response, Respondent states he does not dispute Complainant’s claims
relative to paragraph 5 a. of the Complaint, other than to say he has no way of
verifying if Complainant actually constructed the 60 buildings they claim in
the Complaint. Respondent also contends he has “an interest in Van Vleck Homes”
because he purchased a building from Complainant totaling almost $300,000.
Moreover,
Respondent affirms that it secured, and is using the disputed domain name to
show images of the building he purchased from Complainant to family and friends
that live in the area and cannot visit the building in question. He adds that
there was no intent to show it to anyone other than family and friends, and
that the website in question contains no false or misleading information. As
such, he affirms that the website is not intended to disparage the name and
reputation of Complainant and is offered only to provide a view of the building
Respondent purchased from Complainant.
In
addition, Respondent claims that there was never any intent or effort on his
part to direct customers to the www.vanvleckhomes.com
website. To this effect, Respondent asserts that he did not register the
website with any search engine and only informed family and friends about the
website, individuals that allegedly “would have no interest in purchasing a
building from “Van Vleck Homes”. Respondent also disputes Complainant’s claim
that he registered the disputed domain name “for revenge” for the reasons
mentioned above.
FINDINGS
The Panel finds that Complainant has not
adequately demonstrated it has rights in the mark VAN VLECK HOMES. For this
reason, the Complaint is dismissed, without prejudice for Complainant to
re-file.
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.
(1) Complainant’s
rights in the mark “VAN VLECK HOMES”
Complainant registered the service mark
VAN VLECK HOMES, Registration No. S-19036 with the Department of State of New
York on December 13, 2004. However, this registration was made about six months
after Respondent’s registration of the disputed domain name. It is clear
that a Complainant should not gain rights to a mark retroactively from the date
of the first registration of said mark. See
The Mills Limited Partnership v. Michael G. Miller (WIPO Case No.
D2000-1577, March 8th 2001) (wherein the Panel found that a
Complainant cannot as a matter of strict legal construction properly claim it
is entitled to a date prior to the registration of the mark as a constructive
use date.)
Paragraph 4(a)(i) of the Policy provides
that an applicable dispute is one where a domain name is “identical or
confusingly similar to a trademark or service mark in which the complainant
has rights (emphasis added)”. It is trite law that a Complainant needs not
necessarily have a registered trademark or service mark in order to seek the
remedies contemplated in the Policy, as they are also open to those who have
common law rights to such marks. Therefore, a Complainant clearly has the
burden of demonstrating that it holds such rights to a trademark or service
mark, whether it be a registered mark or a common law one. In the case of a
registered mark, such burden is alleviated as the owner benefits of legal
presumptions. In the case of a common law mark, it is incumbent upon
Complainant to actually show that it has acquired such rights through use. In
this case Complainant being only able to rely on common law rights, it is incumbent
upon it to actually show acquisition of such rights through use.
However, no serious attempt was made by
Complainant to demonstrate it has acquired such common law rights that would
have accrued to it through use. For example, in its Complaint, it merely
mentions “the Complainant is a New York
corporation and has been conducting business as a new home builder under the
name since 1996 building over 60 homes in Rensselaer County, New York”, but no
supporting evidence was filed. A mere allegation in a Complaint is not
sufficient for a Complainant to establish it has common law rights in a
trademark or service mark. For this to be done, a Complainant must file concrete evidence demonstrating that it has
invested considerable time, effort and resources to establish an association
between its mark and its goods or services. See InterTrade Systems
Corporation v. Donna Lawhorn (Nat. Arb. Forum, July 15, 2002), Jeanette
Winterson v. Mark Hogarth, (WIPO Case No. D2000-0235), and Cedar
Trade Associates Inc .v. Greg Ricks [File No. FA 0002 000093633] of
February 25, 2000, where the Panel found that the Complainant (Cedar) had
invested considerable time and effort in establishing an association between
"BuyPC.com" and its goods and services over approximately 4 years,
and thus that "BuyPC.com" qualified as a trademark for the
purposes of the Policy. It is clear from the Complaint that Complainant has not
satisfied its burden in this respect.
Given the circumstances of this case, the
Panel adopts the finding of the Backstreet Boys Productions case, namely
that this dismissal is without prejudice to a re-submission of the matter to a
subsequent Panel, should Complainant so elect. See Backstreet Boys
Productions inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video,
CupcakeShow and Cupcakes-First Patrol (WIPO D-2000-1619, 27 March 2001,
wherein the Panel found that the dismissal was “without prejudice to the matter
being re-filed should Complainant be able to present evidence of a right to the
trademark on which it relies”); GA Modefine S.A. v. Sparco P/L (WIPO
D2001-0370, 6 May 2001, wherein the Panel found that “(…) the Complainant
should have the chance to file another Complaint where these elements (of
paragraph 4(a)(ii) and (iii) are properly alleged and discussed).
Complainant having failed to establish
the first element of Paragraph 4(a) of the Policy, there is no need for the
Panel to consider the other two elements.
DECISION
Having
failed to establish the first element required under Paragraph 4(a) of the
ICANN Policy, the Panel concludes that relief shall be DENIED, without
prejudice for Complainant to re-file, should it elect to do so.
Jacques A. Léger, Q.C., Panelist
Dated: April 1, 2005
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