Hinkley Lighting, Inc. v. Tucows.com Co
Claim Number: FA1104001383624
Complainant is Hinkley Lighting, Inc. (“Complainant”), represented by Una L. Lauricia of Pearne & Gordon LLP, Ohio, USA. Respondent is Tucows.com Co (“Respondent”), represented by Bret A. Fausett of AlvaradoSmith, APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hinkley.com>, registered with Tucows Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Prof. David E. Sorkin, Mr. Luiz E. Montaury Pimenta, Prof. Darryl C. Wilson, Chair, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2011; the National Arbitration Forum received payment on April 14, 2011.
On April 14, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <hinkley.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hinkley.com. Also on April 14, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received on May 5, 2011 without the Annexes separated from the response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response.
On May 13, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Prof. David E. Sorkin, Mr. Luiz E. Montaury Pimenta, Prof. Darryl C. Wilson, Chair, as Panelist.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it owns a number of registered marks incorporating the name HINKLEY for use in connection with various aspects of residential and commercial lighting. Complainant also contends it is commonly referred to as HINKLEY and owns common law rights in the mark. Complaint asserts that the Respondent’s registered domain name <hinkley.com> is identical or confusingly similar to Complainant’s registered trademarks. Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name and that it was registered and is being used in bad faith.
B. Respondent
Respondent states that it has been using its disputed domain name for almost fifteen years continuously. Respondent denies the allegations of bad faith in the Complaint and instead contends that it has a legitimate interest in the disputed domain. Respondent asserts that it is using the domain name in a bona fide offering of a non-infringing service.
Complainant is Hinkley Lighting, Inc., a company that has been using the HINKLEY LIGHTING mark in conjunction with its business of selling residential and commercial lighting, fixtures, and related goods since at least 1976. Complainant makes no claim of trademark or proprietary rights to the word LIGHTING but instead claims to own a family of registered trademarks featuring the HINKLEY name. Respondent is not sponsored or legitimately affiliated with Complainant in any way nor has Complainant authorized Respondent to use any of its registered marks in any form or format.
Respondent, Tucows.com Co. is a Nova Scotia corporation with its principal place of business in Toronto, Ontario, Canada. In 2006 Tucows acquired all of the assets of Mailbank, Inc., an entity doing business as “NetIdentity”. Since 1996 NetIdentity has been a provider of personalized email, blogging, and web hosting services through a collection of personal surname domain addresses. After its business acquisition Respondent continued the operation of the NetIdentity business in the form of Tucows Personal Names Service. Respondent states that it “has tens of thousands of personal surnames registered for use in its Personal Names Service, covering over 66% of the population” and that it continues to expand its service through the acquisition of personal domain names. The disputed domain name, <hinkley.com> was one of the names Respondent acquired through its predecessor in interest on June 7, 1996. The name was registered by NetIdentity because it corresponded with the common surname “Hinkley”.
Paragraph 15(a) of 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; and
(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.
Preliminary Issue: Deficient Response
Respondent’s documentation was received without the Annexes separated from the Response. As a result the National Arbitration Forum did not consider the Response to be in compliance with ICANN Rule 5. In light of The Panel’s inherent discretion regarding technical deficiencies The Panel chose to accept and consider the response despite its defect. The defect was deemed to be rather minor in the instant case and had no bearing on the substantive proofs required under the UDRP. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant holds numerous trademark registrations for its HINKLEY LIGHTING mark with the United States Patent and Trademark Office (“USPTO”) dating back to Reg. No. 1,494,101 issued June 28, 1988 and claiming a first use date of May 21, 1976. The Panel finds that Complainant has demonstrated its rights in the HINKLEY LIGHTING mark under Policy ¶ 4(a)(i) through its registration with a trademark authority under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant also contends that it has established common law rights in the HINKLEY mark based on its use of the mark in conjunction with its business since 1976 and that it is commonly referred to as HINKLEY in connection with its electrical lighting fixtures and parts. The Panel finds that the Complainant has not offered sufficient evidence to support these additional contentions
Complainant argues that Respondent’s <hinkley.com> domain name is confusingly similar to its HINKLEY LIGHTING mark. Complainant claims that the disputed domain name only differs from its mark by deleting the word “lighting,” and by adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a single word is insufficient to distinguish the disputed domain name from Complainant’s mark in the instant case. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel also finds that the inclusion of a gTLD is not sufficient to avoid a finding of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In addition, Complainant argues that Respondent’s <hinkley.com> domain name is identical to its HINKLEY mark since the disputed domain name is only changed by adding the gTLD “.com.” The Panel notes that the affixation of a gTLD normally does not adequately distinguish a disputed domain name from a protected mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). However, the Panel finds that since Complainant has provided insufficient evidence to support its claim of common law protection in the mark HINKLEY, Complainant’s additional argument cannot be sustained.
The Panel finds that Respondent’s disputed domain name is only confusingly similar to Complainant’s registered HINKLEY LIGHTING mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Complainant argues that since the WHOIS information identifies Respondent as “Tucows.com Co,” which is not similar to the disputed domain name, Respondent is not commonly known by the <hinkley.com> domain name. Complainant additionally argues that it has not given Respondent permission to use its HINKLEY or HINKLEY LIGHTING marks within the disputed domain name. The Panel recognizes that the above facts may be sufficient to find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). However, the question of the Respondent being commonly known by the domain name in dispute is but one factor in deciding whether this element has been met and the Panel finds it is not dispositive in this case.
Respondent contends that its use of the <hinkley.com> domain name is a bona fide offering of goods or services. Respondent states that it acquired the disputed domain name in 1996 as part of its business of providing personal names as domain names for the shared use of Internet users. Respondent claims that the use of surnames as domain names is a recognized legitimate, non-infringing use and Respondent cites several UDRP decisions recognizing the validity of its business. See Reccords et Plastiques Nicoll v. Tucows.com Co., D2008-1322 (WIPO Nov. 22, 2008); see also Markel Corp. v. Tucows.com Co., D2007-1750 (WIPO June 5, 2008). The Panel concludes that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Complainant has not proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <hinkley.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The panel further notes that Complainant’s asserted use of the HINKLEY mark dates back to 1976 and its first USPTO registration issued in 1988. Complainant continued to do business on a domestic and international basis, ultimately securing a number of additional US federal trademark registrations and also proceeded to secure various domain name registrations. In particular Complainant secured the domain name <hinkleylighting.com> in 1996 just months prior to the time that Respondent secured the disputed domain name <hinkley.com>. Complainant was thus aware of the domain name registration process but for whatever reasons chose not to contact Respondent for a period in excess of fifteen years regarding the disputed domain name while the Respondent conducted its business. Although laches is not expressly stated as an affirmative defense under the UDRP it is an equitable remedy in civil proceedings and the UDRP by nature can only offer equitable relief. Laches has been recognized as a proper defense in some UDRP proceedings where the facts are particularly supportive such as when a Complainant knows or should know of the existence of the Respondent and the Respondent’s bona fide use of the corresponding disputed domain name for a substantial period of time prior to seeking to have that domain name transferred. See The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (NAF Nov. 17, 2010). The Panel feels that this case exemplifies the type of situation where laches is properly considered as a defense.
Complainant has not proven this element.
Due to the failure of the Complainant to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hinkley.com> domain name REMAIN WITH Respondent.
Prof. David E. Sorkin, Mr. Luiz E. Montaury Pimenta, Prof. Darryl C. Wilson, Chair, Panelist
Dated: May 27, 2011
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