National Arbitration Forum
DECISION
United States Fire Arms Manufacturing Company
v. Salvia Corporation
Claim Number: FA0512000612350
Complainant is United States Fire Arms Manufacturing Company (“Complainant”), represented by Gary J. Nelson, of Christie, Parker &
Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Salvia Corporation (“Respondent”), represented by Anatoly Ostrovsky, P.O. Box 96, Riga, Latvia, LV 1050.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usfa.com>
(the “Domain Name”), registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com (the “Registrar”).
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.
Robert A. Fashler as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“Forum”) electronically on December 19,
2005; the Forum received a hard copy of the Complaint on December 19, 2005.
On December 29, 2005, the Registrar confirmed by e-mail to the Forum
that the <usfa.com> domain
name is registered with the Registrar and that the Respondent is the current
registrant of the name. The Registrar
has verified that Respondent is bound by the Registrar’s 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 December 29, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 18, 2006 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@usfa.com by e-mail.
A timely Response was received and determined to be complete on January
12, 2006.
A timely Additional Submission was received from Complainant on January
13, 2006 in accordance with the Forum’s Supplemental Rule #7.
A timely Additional Response was received from Respondent on January
18, 2006 in accordance with the Forum’s Supplemental Rule #7.
On January 18, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Robert A. Fashler as Panelist.
RELIEF SOUGHT
Complainant
requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts in its primary submissions that:
B. Respondent
Respondent asserts in its primary submissions that:
C. Additional Submissions
Complainant’s Additional
Submission
Complainant asserts in its Additional Submission that:
Respondent’s Additional
Response
Respondent asserts in its Additional Response that:
FINDINGS
The Panel finds that Complainant has
established that it has minimal rights in the USFA Mark, and that the Domain
Name is identical to the USFA Mark.
However, Complainant has not met its burden of demonstrating that
Respondent has no rights or legitimate interests in the Domain Name, or that
Respondent registered and is using the Domain Name in bad faith.
The Panel therefore orders that the Complaint is denied.
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 trade-mark 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 must first establish that it has
rights in the USFA Mark and that the Domain Name is identical or confusingly
similar to the USFA Mark.
Complainant’s Rights in the USFA Mark
Complainant does not hold a registration for the USFA Mark in any
country, but asserts that it has common law trade-mark rights in the USFA Mark.
Complainant says that the USFA Mark is a source indicator throughout the world
for Complainant’s business and products in the field of firearm manufacturing
and sales.
Although Complainant asserts common law trade-mark rights, it does not clearly specify the legal context in which Complainant’s common law trade-mark rights are supposed to exist. Complainant asserts that the USFA Mark is known in English language areas and beyond, including Germany.
Common law trademarks are the creature of the national laws of particular counties. Common law rights do not exist in every country. Even among countries that do recognize common law trade-marks, it would be very surprising if the relevant law of each such country was identical to all the others. Panelists appointed to decide UDRP cases reside in many different jurisdictions. No complainant or respondent should presume that a panelist will be familiar with the law of any particular jurisdiction.
Common law rights in a trade-mark may be
demonstrated by evidence showing reputation and actual distinctiveness.
Panelists have inferred the existence of reputation and distinctiveness in
unregistered marks where there is evidence of long and substantial use of the
marks: see, for example, Keppel TatLee
Bank v. Taylor, D2001-0168 (WIPO
Mar. 28, 2001); Nat’l Deaf Children’s
Soc’y v. Nude Dames, Chat, Sex,
D2002-0128 (WIPO Apr. 19, 2002).
The onus of proving common law rights rests
squarely on Complainant. Without sufficient evidence of reputation and actual
distinctiveness, the Panel has no factual basis for finding that Complainant
has common law rights in the USFA Mark.
The type of evidence generally required to support a finding of common
law rights in a mark includes business sales figures, revenues, advertising
expenditures, number of consumers served, and evidence that there is strong
customer identification of the mark with Complainant’s goods or services: see,
for example, Weatherford Int’l, Inc.
v. Wells, FA 153626 (Nat. Arb. Forum
May 19, 2003) and Cyberimprints.com, Inc.
v. Alberga, FA 100608 (Nat. Arb.
Forum Dec. 11, 2001).
The USFA Mark is a four-letter acronym. As
such, the mark has very little inherent distinctiveness. If, as Complainant
asserts, the USFA Mark is highly distinctive today, then that level of
distinctiveness would have to be a function of actual use in commerce.
Complainant’s evidence merely shows that the
USFA Mark has appeared on and in Complainant’s product catalogues, flyers and
web site, and that some customers and journalists have referred to Complainant
as “USFA.” Complainant has not provided additional evidence of active use of
the USFA Mark during the relevant time, such as the size and location of
Complainant’s customer base, its sales figures, its revenues, its advertising
expenditures, etc.
Complainant has not provided any evidence
demonstrating use or reputation before Respondent registered the Domain Name in
June 1998, other than the bare assertion that the mark has been used since
1997.
The Panel finds that Complainant has tendered
sufficient evidence required to establish the existence of common law rights in
the USFA Mark in the United States at the present time. However, the Panel sees no evidentiary basis
for concluding that the USFA Mark is well-known in the United States or any
other country.
The Panel finds that Complainant has
established the existence of common law rights in the USFA Mark in the United
States in association with firearms.
The Domain Name’s Similarity to the USFA Mark
The USFA Mark consists of the letters
“USFA.” The Domain Name consists of the
letters “USFA” followed by the top level domain “.com.” The addition of a generic top-level domain
is not sufficient to distinguish otherwise identical terms: See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000). The Domain Name is therefore identical to the USFA Mark for the
purposes of paragraph 4(a)(i) of the Policy.
The Panel finds that Complainant has met the
test established in paragraph 4(a)(i) of the Policy: Complainant has some
rights in the USFA Mark, and the Domain Name is identical to the USFA Mark.
It is relatively difficult for any
complainant to prove that a respondent has no rights or legitimate interests in
a domain name. For the most part, that
evidence is known to and within the control of the respondent. Accordingly, the burden on a complainant
with respect to Paragraph 4(a)(ii) must be relatively light. Nonetheless, a complainant must still
produce some evidence tending to show that a respondent has no rights or
legitimate interests in a domain name:
see Koninklijke Philips Elecs. N.V. v Manageware, D2001-0796
(WIPO October 25, 2001).
As discussed, Complainant has demonstrated
that the USFA Mark has some reputation in the United States in association with
firearms. However, the USFA Mark is
comprised of a simple four-letter acronym, and Respondent has pointed out that
various other entities use the acronym “USFA.”
Complainant has not demonstrated that the USFA Mark is exclusively
associated with Complainant and its products and business. Complainant has not
tendered any evidence demonstrating that Respondent likely had any knowledge of
Complainant at the time that Respondent registered the Domain Name.
Complainant has made bare assertions that
Respondent does not have rights or legitimate interests, all of which rely on
the assumption that the USFA Mark is very well known and that Respondent must
have known the mark at the time of acquisition. Such assertions and unsubstantiated assumptions do not create a
prima facie case sufficient to shift the burden to Respondent.
The Panel finds that Complainant has not met
its burden of demonstrating that Respondent has no rights or legitimate
interests in the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Complainant’s allegations of bad-faith
registration and use rely largely on the presumption that the USFA Mark is
well-known and distinctive of Complainant.
The Panel has found that Complainant’s evidence has established only
minimal common law rights in the USFA Mark in association with firearms in the
United States at the present time. Further, Complainant’s evidence has not
persuaded the Panel that any common law rights subsisted in the USFA Mark at
the time that Respondent registered the Domain Name. Complainant’s assertions of bad-faith registration and use must
be analyzed in this context.
Complainant asserts that intentionally registering
a domain name incorporating a well-known mark and then passively holding the
domain name is a clear manifestation of bad faith. That assertion must fail because Complainant has not established
that the USFA Mark was well-known when it was registered in June 1998. In fact,
Complainant’s evidence does not persuade the Panel that the USFA Mark is well
known today.
As well, Complainant has not tendered
sufficient evidence from which the Panel would be prepared to infer that the
USFA Mark was so obviously connected with Complainant that the registration and
use of a similar domain name by Respondent amounts to bad faith, particularly
at the time that Respondent registered the Domain Name in 1998: see for example Parfums Christian Dior v. Quintas,
D2000-0226 (WIPO May 17, 2000) and Veuve
Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co., D2000-0163 (WIPO May 1, 2000), where the
panels found opportunistic bad faith in the respondents’ use of the famous
marks CHRISTIAN DIOR and VEUVE CLICQUOT.
The USFA Mark is an acronym with little
inherent distinctiveness. There is no evidence before the Panel that would
support the conclusion that the USFA Mark has acquired significant
distinctiveness as a consequence of use.
As well, various unrelated entities use the same abbreviation. Given that the Domain Name is a common type
of acronym, the Panel cannot conclude,
on the evidence before it, that Respondent deliberately attempted to cause
confusion. See Canned Foods Inc.
v. Ult. Search Inc., F 96320 (Nat.
Arb. Forum February 13, 2001) (which deals with another form of weak marks with
little inherent distinctiveness, namely generic trade-marks).
Complainant has not tendered any evidence
demonstrating that Respondent has violated Complainant’s trade-mark rights in
the USFA Mark. On the record before the
Panel, Complainant’s rights in the USFA Mark are weak. There is no evidence that Respondent has
used the Domain Name in association with wares or services related to
Complainant’s business, wares or services. Nor is there any evidence that
Respondent is attempting to divert Complainant’s customers or otherwise draw on
Complainant’s reputation.
Complainant’s evidence does not support a
finding that Respondent had actual or constructive knowledge of the USFA Mark
when Respondent registered the Domain Name.
In fact, Complainant’s evidence does not provide any more than a bare
assertion that Complainant used the USFA Mark as a trade-mark, or otherwise,
until some time well after the Domain Name was registered.
To the surprise of the Panel, Complainant
points to its Exhibit M, which is an email dated October 29, 2005, as evidence
that Complainant gave Respondent actual notice of the USFA Mark. However, the
Domain Name was registered on June 2, 1998, which is more than seven years
before the email. The Panel fails to
see how that email is relevant at all.
The Panel finds that Complainant has not met
its burden of showing that Respondent registered and is using the Domain Name
in bad faith pursuant paragraph 4(a)(iii) of the Policy.
Respondent asserts that Complainant has
engaged in reverse domain name hijacking, which is defined in Paragraph 1 of
the Rules as “using the Policy in bad faith to attempt to deprive a registered
domain name holder of a domain name.”
Complainant did not respond to this allegation.
There is nothing on
the record to suggest that the Complaint was brought in bad faith. The Panel determines that there is no basis
for a finding of reverse domain name hijacking.
DECISION
As Complainant has failed to establish two elements required under the
Policy, the Panel concludes that relief shall be DENIED.
Robert A. Fashler, Panelist
Dated: 1 February 2006
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