Camco Manufacturing, LLC v. Brian Wick / CheapCo.com
Claim Number: FA2204001992264
Complainant is Camco Manufacturing, LLC (“Complainant”), represented by Blake P. Hurt of Tuggle Duggins P.A., North Carolina, USA. Respondent is Brian Wick / CheapCo.com (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <camco.com>, registered with Name.com, Inc..
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Katalin Szamosi (Presiding Panelist), Diane Cabell and Richard Hill as Panelists.
Complainant submitted a Complaint to the Forum electronically on April 13, 2022; the Forum received payment on April 14, 2022.
On April 13, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <camco.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2022 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@camco.com. Also on April 14, 2022, 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 April 29, 2022.
An Additional Submission was received from the Complainant on May 12, 2022 and Respondent also submitted an Additional Submission on May 13, 20022.
On May 9, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Katalin Szamosi (chair), Diane Cabell and Richard Hill 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 states that "This present action is a refiling of an action commenced by Complainant on March 18, 2011 (Case No. FA1102001370745) where the Forum dismissed the previous action" (hereinafter “Camco I”). The case was dismissed without prejudice.
Complainant contends that it is an international manufacturer and seller of products related to ATVs, RVs, boats, camping, cleaning supplies, plumbing, and towing, which was duly incorporated in 1968.
Complainant argues that, prior to the Camco I decision, it had already established common law rights in the CAMCO mark; further, since the Camco I decision, it has acquired numerous federal trademark and service mark registrations for the CAMCO mark;
CAMCO is not a surname or geographic term and does not have a generic, descriptive, or common use.
Respondent’s domain name <camco.com> is identical to Complainant’s common law service mark and Complainant’s federally registered Marks, with the limited and irrelevant addition of the generic top-level domain “.com.”.
Respondent was aware of the Complainant’s rights in the mark prior to registering the disputed domain name.
Respondent also has no legitimate right to <camco.com> because it has not received permission to use the CAMCO mark and Respondent is not known by the disputed domain name.
Respondent doesn't use the marks for legitimate noncommercial or fair use purposes. Instead, users who navigate to the domain name <camco.com> are taken to numerous websites which show no use of the word “camco” or the CAMCO mark. The website appears to be being used as a platform to resell domain names.
Respondent is using the CAMCO mark to misdirect Internet users to a site that merely lists for sale countless domain names owned by Respondent.
Respondent’s registration of <camco.com> was in bad faith because it prevents Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct.
Respondent registered the disputed domain name to misdirect consumers looking for Complainant’s goods and services.
B. Respondent
Respondent contends he buys, sells, markets, develops, promotes and advertises generic, intuitive, geographic, surname and commonly used terms on the Internet.
Respondent states that he incorporates Search Engine Optimization (“SEO”) into its domain brands which promotes websites by using key words, text and other content, cross-promotion and backlinks in order to increase the awareness, revenue and other value of its domain brands, such as the disputed domain name <camco.com> and other domain names such as Cheapco.com, Rugco.com etc..
The disputed domain name <camco.com> has been a Trade Name of the Respondent since 2007, four years before the Camco I decision.
Nearly 15 years after Respondent reserved and began operating <camco.com>, Complainant retroactively registered federal trademarks and service marks starting in 2018 with no federal registrations prior to applying in 2017. The USPTO online database shows several active registered CAMCO trademarks and service marks unrelated to the Complainant, all registered prior to the Complainant’s filings.
Secretary of State filings, such as in California, Colorado, Florida, North Carolina and New York reveal well over 100 CAMCO businesses unrelated to the Complainant.
The World Intellectual Property Organization online database shows over 100 CAMCO marks unrelated to the Complainant with all but a few registered prior to the Complainant’s retroace registrations.
Complainant is trying retroactively to make its CAMCO mark distinct, not commonly used and thus obtaining secondary meaning.
Respondent's Cheapco.com network and its content continues to evolve where it currently receives around 17,000 visitor sessions every day, over 500,000 visitor sessions every month and around 10 new accounts are created every day - indisputable evidence of its lawful growing success. The business model using Camco.com, including SEO, is well within the guidelines of a legitimate and bona-fide use, no different than every other one of the Respondent’s domains and no different than countless other Internet businesses that do the exact same thing.
Respondent doesn't compete with the Complainant in any capacity and doesn't represent itself as the Complainant in any capacity.
Respondent began buying numerous domains ending in “….co.com”, such as Camco.com, Cheapco.com and Glassco.com - some of which are identified in the Response.
Respondent reserved <camco.com> 19 years ago, when the Complainant was nowhere to be found in a sea of countless other CAMCOs all over the world.
C. Additional Submission
Complainant
The registration of the five CAMCO marks by the USPTO conclusively demonstrates that the mark is not “in common use.”
Complainant has submitted substantial evidence pertaining to each consideration for secondary meaning and now submits additional information pertaining to media recognition.
The arguments and evidence submitted by Respondent are insufficient to sustain a finding that the disputed domain name is being used in connection with a bona fide offer of goods or services nor is it sufficient to demonstrate preparations to use, especially when considering how long Respondent has been squatting on this domain name.
Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s common law mark and Marks as the source, sponsorship, affiliation, or endorsement of Respondent website of a product or service on Respondent’s website.
Respondent
The Complainant continues to retroactively exploit its “secondary meaning” claim to an endgame that it has acquired universal, exclusive and distinct rights in CAMCO contrary to the numerous unrelated CAMCOs.
In the Camco I decision the panel found, without prejudice, that " Complainant has failed to establish that it has a registered trademark, or that it is the owner of a mark in which it has acquired secondary meaning sufficient to meet its burden of proof under UDRP Policy ¶ 4(a)(i). Since Complainant has failed to meet its burden to establish the first element of the Policy, the Panel need not analyze the other two elements of the Policy, and the relief requested by the Complainant is denied." The panel stated: “… Complainant contends that it has been using the CAMCO mark since 1966 in the course of its business of manufacturing and selling RV accessories, marine accessories, antifreeze, and windshield washer fluid. Complainant alleges that the domain name <camco.com> is identical to Complainant’s common law service mark; Complainant does not allege to own a federal registration in the CAMCO mark, or allege secondary meaning in the CAMCO mark …. Complainant contends that it has used the <camco.net> domain name for its website since October 25, 1997 …”
The term “camco” is a commonly used term.
Respondent is a long time generic domain name reseller.
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.
At the outset, the Panel notes that because “the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint”; accordingly, “refiled complaints are exceptional.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18, adding that:
"Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis."
The Complainant admitted itself that the complaint is a refiled complaint. The Complainant makes no contentions regarding why the refiled complaint shall be accepted beside the fact that the Camco I decision was decided “without prejudice”.
The Panel notes that, because the Camco I decision was made without prejudice, the Complaint can be accepted even without specific contentions made by the Complainant with respect to the grounds for refiling.
The instant Complaint presents trademark applications that were filed after Camco I. These have no effect on the question of whether Complainant had trademark rights that pre-dated the registration of the disputed domain name (which was in 2003), because, for the Policy, the relevant date is the date of the trademark application, not claimed first use.
The original Panel found that, in 2011, Complainant had not presented adequate evidence of common law marks preceding 2003, because it had not presented evidence to establish secondary meaning.
In the instant case, Complainant alleges that “ … prior to Camco I, Complainant had already established common law rights in the CAMCO mark”.
It is not clear to the Panel whether the evidence presented in the instant Complaint is the same evidence presented to the original panel, namely evidence of Complainant’s use of the term “camco”, or whether it is new evidence that was not available when Camco I was filed.
If it is not new evidence, then Complainant would be asking the instant Panel to overturn the initial finding, without having presented any legally relevant developments or new material evidence. The Panel cannot do that.
However, if it is new evidence, then the Panel could reverse the Camco I decision.
However, since the Complainant will anyway be dismissed for the reasons given below, the Panel finds that it need not investigate whether or not Complainant presented new evidence in the instant Complaint.
Respondent invokes laches to argue that the Complaint should be dismissed. As explained below, the Complaint will be dismissed on its merits. Nevertheless, obiter dictum, the Panel notes the following regarding laches.
Recent cases have begun to apply laches in contrast to earlier cases to the contrary. See craigslist, Inc. v. Craig Solomon Online Services, FA 1445057 (Forum Aug. 13, 2012) (applying laches where local online operating business would be prejudiced by transfer after sophisticated Complainant’s unexplained delay); see also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Forum Nov. 17, 2010) (Finding that “[a] small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”); cf., Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); City Bank v. Domain Admin / Inavit, Inc., FA 1564337 (Forum July 21, 2014) (Laches not reached, but noting that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name);Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith); see generally, Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace); but see Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”); Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
As already noted, the Complaint will be dismissed on the merits for the reasons given below, therefore the Panel need not determine whether the equitable defense of laches may apply in this particular case.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.
Complainant asserts common law rights in the CAMCO mark. The Panel finds - as in the Camco I decision - that the Complainant failed to establish common law rights in the CAMCO mark. However, in contrast with the Camco I decision the Complainant also asserts trademark rights in "CAMCO" mark based on evidence of registration of the marks with the United States Patent & Trademark Office, a national trademark authority.
Regarding the Respondent's arguments that its registration of the <camco.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Since the Complainant has provided evidence of a national registration for the CAMCO trademarks, the Panel finds that Complainant has rights in that trademark.
Complainant argues that Respondent’s <camco.com> domain name is identical or confusingly similar to Complainant’s CAMCO mark as it incorporates the mark in its entirety and merely adds the “.com” gTLD. Adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Accordingly, Complainant has satisfied the first element of the Policy.
As to the second element, 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 that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds Complainant was able to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant shows that it has registered trademarks that are confusingly similar to the <camco.com> domain name and further asserts that it had not permitted or authorized Respondent to use such trademarks.
The Panel finds that it need not determine whether the term “camco” should be considered to be generic, in the sense that it is a combination of the generic terms “cam” and “co” (a common abbreviation of “company”). Regardless of Complainant's trademark rights, the Panel - based on its assessment of the extensive evidence submitted by the Respondent - agrees with the Respondent that the term “camco” is a commonly used term. Indeed the term was in common use by multiple parties at the time the domain was registered. Further, Complainant has failed to provide evidence showing that Respondent was targeting the Complainant in particular or that Respondent had reason to expect that Complainant had any exclusive rights in the term when the disputed domain name was registered. And even now, Complainant’s rights are not exclusive except as to the limited class of goods for which the mark was registered.
Respondent presents extensive evidence showing that many third parties have rights and legitimate interest in domain names that incorporate the term “camco”. The Panel finds that Respondent also a legitimate right and interest in using the term “camco” for other classes, or for the same classes but in different jurisdictions, or to sell it to others who may have such rights. Indeed, according to the WIPO Overview 3.0, section 2.1, “generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.”
Respondent further argues that it has rights and legitimate interests in the <camco.com> domain name by nature of its business buying and selling generic domain names. Respondent provided evidence containing amongst others screenshots of his business at <cheapco.com>, the center of Respondent’s business network of generically held domain names for sale. Under Policy ¶ 4(c)(i), past panels have found that generic domain name reselling is considered a bona fide offering of goods or services. See Alphalogix Inc. v. DNS Servs., FA 491557 (Forum July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”).
Based on the forgoing, the Panel finds that Respondent has shown that prior to the dispute and the registrations of the CAMCO marks Respondent used the <camco.com> domain name in connection with a bona fide offering of goods and services thereby meeting the criteria required under paragraph 4(c)(i) and (iii) of the Policy.
As Complainant has failed to satisfy its burden of proof for this element of the Policy, the Complaint must be dismissed.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii) as Respondent demonstrates that it has rights and/or legitimate interests in the at-issue domain name. Since Complainant must prove all three elements under the Policy, the Panel declines to analyze the third element, it however notes the following, obiter dictum.
WIPO Overview 3.0, section 3.8.1 (which was published the year before either of the two referenced decisions was reached), states: “[W]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent…. Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name 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 <camco.com> domain name REMAIN WITH Respondent.
Katalin Szamosi (Presiding Panelist), Diane Cabell and Richard Hill as Panelists.
Dated: May 23, 2022
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