Process Assets, LLC v. Craig A. Steenbergh
Claim Number: FA1607001682268
Complainant is Process Assets, LLC (“Complainant”), represented by James T. Burton of Kirton McConkie, Utah, USA. Respondent is Craig A. Steenbergh (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lean-solutions.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2016; the Forum received payment on July 1, 2016.
On July 1, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <lean-solutions.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, LLC 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 July 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2016 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@lean-solutions.com. Also on July 6, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 and determined to be complete on July 25, 2016.
On August 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of US Trademark No. 4,002,646 for the trademark LEAN SOLUTION and US Trademark No. 4,002,645 for the trademark LEAN SOLUTIONS, both registered since July 26, 2011 (the “Trademark(s)”).
Complainant has been using the LEAN SOLUTIONS Trademark in the US since 2007 and the LEAN SOLUTION Trademark in the US since 2009 in relation to Complainant’s consulting services. As a result, Complainant has built up considerable goodwill in the minds of consumers in connection with the Trademarks.
Respondent registered the domain name on June 14, 2000 and has been using it since that date in relation to a website (“Respondent’s Website”), which is a platform page for various consulting services, and which also includes a link for contact information for browsers and consumer to purchase products that directly compete in the marketplace with those offered by Complainant.
Complainant has not licensed or otherwise authorized Respondent to use the Trademarks in the domain name or for any other purpose.
Respondent thus uses the domain name and Respondent’s Website for its own commercial gain by creating confusion among Internet users, diverting Internet traffic away from Complainant and toward Complainant’s competitors via Respondent’s Website, and, in the process, disrupting Complainant’s business.
B. Respondent
Respondent was established in 1989 as an independent consulting company
providing process improvement and strategic planning to manufacturing and service organizations. Respondent obtained the domain name and posted Respondent’s Website in May 2000 promoting some of the services and products offered by Respondent.
Respondent utilized Respondent’s Website to promote Respondent’s services and sell Respondent’s products long before Complainant came into existence and obtained the Trademarks.
“Lean solutions” is a generic term and describes common services offered in
multiple industries. There exist multiple publications, references and websites
utilizing this generic term. The list of companies and organizations that utilize the generic term “lean solutions” is extensive and goes back decades.
Complainant has failed to establish all the elements entitling it to transfer of the domain name.
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.
The Panel finds that Complainant has rights in the Trademarks acquired through use and registration.
Although the domain name was registered seven years before the date of first use of the Trademarks and eleven years before the date of registration of the Trademarks, the consensus view amongst UDRP panelists in relation to this issue is as follows[1]:
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.
The domain name contains the LEAN SOLUTIONS Trademark in its entirety.
The Panel therefore finds that the domain name is identical to the Trade Mark, and is confusingly similar to the LEAN SOLUTION Trademark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Complainant points out, in the Complaint, that Respondent has been making continuous use of the Respondent’s Website since the date of registration of the domain name, in 2000.
The home page of Respondent’s Website contains the following introduction:
“Lean Solutions is a multi-facetted consulting organization, whose primary offering revolves around achieving profitable improvement through lean strategic, lean systems and lean structure. We provide customers with a systems approach of planning, leading, measuring, monitoring and controlling the change and standardization of critical processes.”
In light of the above continuous use, the Panel is unable to conclude that Respondent does not have rights or legitimate interests in respect of the domain name.
Complainant asserts that it is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
Complainant relies on several prior UDRP decision, including the finding in Reuters Ltd. v. Teletrust IPR Ltd. (WIPO Case No. D2000-0471) that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain name.
The problem faced by Complainant on the uncontested facts of this proceeding is that Respondent could not have contemplated Complainant’s non-existent trademark rights at the time of registration of the domain name[2]. Furthermore, although not determinative given Respondent’s prior registration and continuous use of the domain name, the Panel would note, for the record, that there does not appear to be sufficient evidence on the record to demonstrate that the Trademarks are famous or well-known marks.
The Panel would also agree with Respondent’s assertions regarding the generic nature of the Trademarks. In circumstances such as the present proceeding, where the trademark in question is not particularly distinctive, and where there is evidence of widespread use of the relevant trademarks by other entities over a long period of time, it can be difficult for complainants to establish the requisite element of bad faith under the Policy.
For the foregoing reasons, the Panel concludes that the domain name has not been registered and used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lean-solutions.com> domain name REMAIN WITH Respondent.
Sebastian M W Hughes, Panelist
Dated: August 5, 2016
[1] See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”).
[2] See paragraph 3.1 of WIPO Overview 2.0.
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