National Arbitration Forum

 

DECISION

 

Eden Stone Co., Inc. v. Edenstone

Claim Number: FA0705000992132

 

PARTIES

Complainant is Eden Stone Co., Inc. (“Complainant”), represented by Daniel R. Johnson, of Ryan Kromholz & Manion S.C., 3360 Gateway Road, Brookfield, WI 53045, USA.  Respondent is Edenstone (“Respondent”), represented by Kim Cottle, 505 Malinmor Dr., Weldon Spring, MO 63304.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <edenstone.com>, registered with Network Solutions, Inc.

 

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.

 

Bruce E Meyerson as panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2007.

 

On May 24, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <edenstone.com> domain name is registered with Network Solutions, Inc. and that the 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 May 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 2007 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@edenstone.com by e-mail.

 

A timely Response was received and determined to be complete on June 20, 2007.

 

A timely Additional Submission was received from Complainant on June 25, 2007.

 

On June 26, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant asserts that it has rights in the EDEN STONE trademark by virtue of two trademark registrations with the United States Patent and Trademark Office (“USPTO”). Complainant contends that Respondent’s domain name is confusingly similar to its trademark.  Complainant states that the domain name resolves to “under construction” web pages which contain links to keyword searches that include, among other things, such items as “stone,” “natural stone,” and “landscape stone.”   Complainant states that because Respondent’s site provides links to Complainant’s competitors, Respondent is acting in bad faith.

 

B.     Respondent

 

Respondent states that Complainant’s trademark is for only the word “EDEN” and not “EDEN STONE.”  Respondent also states that Complainant did not register its marks until 2001 and 2002.  Respondent states that Edenstone “is a business and trade name representing artist and sculptor Peter Eissfeldt.”  Respondent acknowledges that its site is under construction, but claims it was unaware that Network Solutions could place sponsored links on its site.  Respondent states that it has requested that these be removed.  Respondent states that “[l]ack of technical knowledge to get a website up and running does not constitute bad faith.”

 

C.     Complainant’s Additional Submission

 

Complainant states that Respondent’s allegation that only the word EDEN is identified in its trademark registration is false because the goods and services for which the EDEN trademark is registered is for “STONE.”  Complainant disagrees with the contention of Respondent that Respondent’s first use of the domain name predates the use by Complainant of its mark, as Complainant first began using EDEN STONE in commerce in 1952.  Because Mr. Eissfeldt is engaged in the business of making sculpture from stone and concrete, Complainant states that there is an obvious potential for confusion between the domain name and its trademark.

 

FINDINGS

Complainant holds USPTO trademark registrations for the EDEN mark (Reg. No. 2,575,113 issued April 10, 2001; Reg. No. 2,442,453 issued June 4, 2002).  Respondent registered the <edenstone.com> domain name in 1999 which was before the applications for the foregoing registrations were filed.[1]

 

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 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.

 

Identical and/or Confusingly Similar

 

Respondent points out that Complainant’s USPTO trademarks were registered in 2001 and 2002.  The domain name was registered by Respondent in 1999, prior even to the dates that Complainant filed its applications for these trademarks with the USPTO.   In order to satisfy Policy ¶ 4(a)(i), Complainant must establish rights in the EDEN mark that predate Respondent’s registration of the disputed domain name, which Complainant has not done.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy ¶ 4(a)(i)] necessarily implies that the Complainant’s [trademark] rights predate the Respondent’s registration and use of the Domain Name.”); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (finding that the complainant could not establish rights in the <eupp.com> domain name where its use of the EUPP mark did not predate the respondent’s registration of the domain name).

 

Complainant asserts that it first began using the words “Eden Stone” in commerce in 1952.  The suggestion that Complainant may have rights in its trademark by virtue of such use comes up short of satisfactory proof of secondary meaning.  Complainant has not submitted enough evidence for the Panel to find that the EDEN mark has acquired any secondary meaning in association with the mark, in which case Complainant does not have common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See Dave & Adam’s Card World LLC v. Conti, FA 977209 (Nat. Arb. Forum June 11, 2007) (concluding that the complainant failed to provide enough evidence that its DAVE AND ADAM’S CARD WORLD mark had acquired secondary meaning in association with the complainant’s products and services because use of the mark alone is insufficient to establish secondary meaning); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).

 

Because Complainant has not established rights in the EDEN mark for purposes of satisfying Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy.  See 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).  

 

DECISION

Having failed to establish that it has rights to a trademark or service mark within the meaning of the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: July 6, 2007

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum