National Arbitration Forum

DECISION

United States Fire Arms Manufacturing Company v. Salvia Corporation
Claim Number: FA0512000612350

PARTIES

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:

(a)                Complainant has common law rights in the trade-mark USFA (the “USFA Mark”), and the USFA Mark is a well-known source-identifier for Complainant and its products in the firearms industry throughout the world because:

(i)                  Complainant has been using the USFA Mark to identify its goods since at least 1997,

(ii)                Complainant has prominently displayed the USFA Mark on the cover of its product catalogues and throughout the body of its catalogues,

(iii)               Complainant has used the USFA Mark on its advertising flyers,

(iv)              Complainant has prominently displayed the USFA Mark on its home page and throughout its web site, which Complainant has maintained since at least January 1998,

(v)                Complainant includes the USFA Mark in its email address provided on its home page (usfa@usfirearms.com),

(vi)              Complainant’s customers, as well as journalists in the firearms industry, use the USFA Mark to refer to Complainant and Complainant’s products, and

(vii)             The USFA Mark is recognized beyond English language areas as demonstrated by references to it in German firearms publications;

(b)               the Domain Name is identical or confusingly similar to the USFA Mark because the only difference is the presence of “.com” in the Domain Name;

(c)                Respondent has no rights or legitimate interests in the Domain Name because:

(i)                  Respondent’s use of the well-known USFA Mark to host a passive web site is not a bona fide, non-commercial or fair use within the meaning of the Policy, and such passive holding of a web site is evidence that Respondent has no rights or legitimate interests in the Domain Name,

(ii)                Respondent is not commonly known by the term “USFA” or any variation thereof, and has not acquired any trade-mark rights in “USFA,”

(iii)               any actual use by Respondent of the Domain Name or “USFA” is an infringement of Complainant’s rights in the USFA Mark, and

(iv)              Complainant has not licensed or authorized Respondent to register domain names incorporating the USFA Mark; and

(d)               Respondent has registered and is using the Domain Name in bad faith because:

(i)                  Respondent has not developed an active web site, and intentionally registering a domain name incorporating a well-known trade-mark and passively holding that domain is evidence of bad faith,

(ii)                in the firearms industry, the USFA Mark is so obviously connected with Complainant that the use of a similar or identical domain name by an entity with no connection to Complainant suggests bad faith,

(iii)               Respondent’s infringement of the USFA Mark is evidence of bad faith, and

(iv)              Respondent had knowledge of Complainant’s rights in the USFA Mark but has continued to maintain the Domain Name.

B.        Respondent

Respondent asserts in its primary submissions that:

(a)                Complainant lacks unique and exclusive common law rights in the USFA Mark because:

(i)                  Complainant’s use of the USFA Mark to identify Complainant and its products since 1997 has been neither prominent, extensive, nor continuous,

(ii)                Complainant has repeatedly used various trade-marks to identify its goods, including UNITED STATES FIRE-ARMS MANUFACTURING COMPANY, U.S.F.A. MFG. CO., US, and USFA,

(iii)               Complainant began to use the USFA Mark in Internet commerce in reference to its catalogue between December 2000 and March 2001,

(iv)              the USFA Mark is an abbreviation of “U.S.F.A. Mfg. Co.,” which itself is an abbreviation of “United States Fire-Arms Manufacturing Company;” the acronym “USFA” is regularly used as an abbreviation by at least seventeen other entities,

(v)                basic Internet searches show that the USFA Mark is not primarily associated with Complainant’s products,

(vi)              the majority of Internet users do not associate the USFA Mark with Complainant’s trade-marks, and Complainant’s products, services and trade-marks are relatively unknown to Internet users,

(vii)             Complainant has only recently filed an application in the United States for the USFA Mark,

(viii)           Complainant has engaged in trade-mark dilution by repeatedly interchanging trade-marks, and has merely adopted the USFA Mark instead of using it, and

(ix)              since “USFA” is a common abbreviation used by multiple entities outside of the firearms industry, Complainant cannot have exclusive common law rights to the USFA Mark;

(b)               The Domain Name is not confusingly similar with the USFA Mark because:

(i)                  the Complainant lacks exclusive rights to all domain names containing the letters “USFA,” and

(ii)                Internet users do not interpret “USFA” as an abbreviation of “United States Fire-Arms Manufacturing Company;”

(c)                Respondent has rights and legitimate interests in the Domain Name because Respondent has, in the past, used the Domain Name in a bona fide and legitimate manner to redirect Internet users to another web site for a “dating service,”

(d)               Respondent has not registered or used the Domain Name in bad faith because:

(i)                  Complainant has not proved that Respondent had actual or constructive knowledge of Complainant’s rights in the USFA Mark at the time Respondent registered the Domain Name,

(ii)                Respondent has demonstrated prior legitimate fair commercial use that was not misleading to Complainant’s customers and did not tarnish Complainant’s trade-marks,

(iii)               lack of a genuine, active web site and the mere passive holding of the Domain Name does not constitute bad faith,

(iv)              there is no evidence that Respondent registered the Domain Name for the purpose of resale to Complainant or a competitor of Complainant,

(v)                there is no evidence that Respondent registered the Domain Name primarily for the purpose of disrupting a competitor’s business (and Respondent and Complainant are not competitors), and

(vi)              there is no evidence that Respondent is using the Domain Name in an attempt to attract Internet users to its web site by creating a likelihood of confusion with Complainant’s USFA Mark; and

(e)                Complainant brought the Complaint in bad faith in order to acquire the Domain Name, and thus has attempted reverse domain name hijacking, because:

(i)                  Complainant clearly knows that when Respondent registered the Domain Name on June 2, 1998, Complainant did not use the USFA Mark in commerce and its products and services were not associated with the USFA Mark,

(ii)                outside of the firearms industry, the USFA Mark has not been obviously and primarily associated by Internet users with Complainant or its trade-marks,

(iii)               Complainant knew of the clear lack of bad faith registration and use by Respondent, yet still brought the Complaint, and

(iv)              given that multiple entities use “USFA” as an abbreviation, and that these entities have higher Internet traffic ratings than does Complainant, Complainant’s claims to unique and exclusive rights in the USFA Mark demonstrate malicious intent and recklessness or a knowing disregard of the likelihood that Respondent possesses legitimate interests in the Domain Name.

C.        Additional Submissions

Complainant’s Additional Submission

Complainant asserts in its Additional Submission that:

(a)                Complainant’s rights in the USFA Mark are not disputed because:

(i)                  Respondent acknowledges that Complainant has been using the USFA Mark to identify its goods,

(ii)                Complainant agrees that it uses more than one trade-mark to identify its products, but that such use of multiple marks causes no “dilution” of Complainant’s trade-mark rights,

(iii)               Complainant has established exclusive trade-mark rights in the USFA Mark in connection with firearms, hence it is irrelevant  that other parties may use “USFA” in respect of different  products or services,

(iv)              whether the majority of Internet users associated the USFA Mark with Complainant’s trade-marks is irrelevant,

(v)                Respondent has not put forth any evidence of its legitimate use of the USFA Mark, while Complainant has offered extensive evidence,

(vi)              there is no requirement to use a trade-mark in Internet commerce to establish trade-mark rights, and

(vii)             Respondent relies on evidence from the Internet archive at <archive.org>, as does Complainant, but that evidence is not reliable;

(b)               there is no dispute that the Domain Name is confusingly similar to the USFA Mark because Respondent does not dispute the similarity between the two;

(c)                Respondent has not established a legitimate interest in the Domain Name because:

(i)                  an alleged temporary forward to an unrelated web site (which Complainant says is not supported by reliable evidence) does not establish legitimate rights in the Domain Name, and

(ii)                Respondent’s alleged former redirect to <friendfinder.com> is not logically related to the Domain Name; and

(d)               Respondent’s passive holding of the Domain is not in dispute, except for Respondent’s allegations of a temporary redirect from the Domain Name to a dating service at <friendfinder.com>;

(e)                after receiving the Complaint, Respondent put some generic content at <usfa.com>, but this generic content shows no logical connection to the term “USFA;” and

(f)                 after Complainant first contacted Respondent regarding the Domain Name, Respondent has engaged in evasive behaviour, such as changing its contact information, changing its corporate name, and its address, which constitutes  further evidence of bad faith.

Respondent’s Additional Response

Respondent asserts in its Additional Response that:

(a)                Complainant has not established common law rights in the USFA Mark because:

(i)                  Complainant lacks unique and exclusive common law rights in the USFA Mark in Internet commerce,

(ii)                Complainant’s use of the USFA Mark has been neither continuous nor prominent nor extensive enough to warrant unique and exclusive common law trade-mark protection in Internet commerce,

(iii)               Complainant’s historical trade-mark use casts doubt on Complainant’s assertions regarding the inherent or acquired distinctiveness of the USFA Mark;

(iv)              the nature and extent of the use of “USFA” by various other Internet entities shows that that Complainant’s USFA Mark lacks distinctiveness  and fame in Internet commerce,

(v)                Complainant offers no evidence of sufficiently strong identification of the USFA Mark with Complainant’s products and services at the time that Respondent registered the Domain Name, and

(vi)              Complainant does not provide evidence to rebut Respondent’s evidence of Complainant’s historical trade-mark use, and does not demonstrate that the Internet archive evidence is unreliable;

(b)               Respondent does not dispute that there is a possible similarity between the Domain Name and the USFA Mark in connection with firearms, but Respondent does dispute that any such similarity is confusing;

(c)                Respondent has used the Domain Name in a bona fide and legitimate manner to redirect customers to a dating service, among other services; whether Complainant sees a logical relation between “USFA” and a dating service is irrelevant;

(d)               because Complainant has not established unique and exclusive common law rights in Internet commerce, Complainant’s allegations of Respondent’s bad faith due to temporary passive holding of the Domain Name are irrelevant; and

(e)                Respondent has not engaged in evasive behaviour: Complainant’s original correspondence regarding the Domain Name was addressed to a different legal entity from Respondent.

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.

1.                  Identical and/or Confusingly Similar

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.

However, Complainant’s business is headquartered in the United States, Complainant’s documentary evidence relates primarily to the United States, and Complainant makes reference to two U.S. legal authorities in its submissions. Accordingly, the Panel infers that Complainant is claiming common law rights only under the laws of the United States and not in every common law jurisdiction in the world.

Respondent does not question the appropriateness or legal context of Complainant’s assertion of common law trade-mark rights. Respondent merely denies that Complainant has generated the necessary rights under the applicable law.

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.

Other than Complainant’s superficial, self-serving quotes from U.S. authorities, neither disputant has taken any steps to bring to the Panel’s attention the national laws that would determine the existence and strength of the common law rights claimed by Complainant. It would have been most helpful if they had done so.

The Panel appointed in this case is a Canadian lawyer. Canada is one of the countries that recognize common law trade-mark rights. The Panel knows that common law trade-marks are also recognized in the United States. However, the Panel is not qualified to pronounce on the content of U.S. law and will not do so. Accordingly, the Panel will assume that the relevant U.S. law is the same as the law of Canada.

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.

2.                  Rights or Legitimate Interests

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.

3.                  Registration and Use in Bad Faith

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.

4.                  Reverse Domain Name Hijacking

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

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum