DECISION

 

Twin City Garage Door Company c/o Lisa Donabauer v. Express Garage c/o Doron Kim

Claim Number: FA0506000506435

PARTIES

Complainant is Twin City Garage Door Company c/o Lisa Donabauer (“Complainant”), 5601 Boone Ave. North, New Hope, MN  55428.  Respondent is Express Garage c/o Doron Kim (“Respondent”), represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery Street, Suite #1920, San Francisco, CA  94104-3540.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <twincitygaragedoors.com>, registered with Enom, Inc.

 

PANEL

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.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2005.

 

On June 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <twincitygaragedoors.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that the Respondent is bound by the Enom, 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 July 1, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 2005 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@twincitygaragedoors.com by e-mail.

 

A timely Response was received and determined to be complete on July 21, 2005.

 

Complainant’s Additional Submission was received on July 26, 2005.

 

On July 27, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that it has established common law rights in the TWIN CITY GARAGE DOOR COMPANY mark.  This contention is based on an allegation that Complainant has demonstrated secondary meaning associated with the mark.  Complainant contends that the <twincitygaragedoors.com> domain name is confusingly similar to this mark because the domain name omits the term “company,” adds the letter “s” to the term “door,” and adds the generic top-level domain “.com” to the mark. 

 

Complainant contends that Respondent has not established rights or legitimate interests in the <twincitygaragedoors.com> domain name because it is not commonly known by the mark and is merely using it to redirect Internet users to Respondent’s website offering products and services in competition with Complainant.  Complainant accuses Respondent of registration and use of the domain name in bad faith based on an intention to promote products and services in competition with Complainant’s business in order to disrupt Complainant’s business and thereby divert business from Complainant to Respondent. 

 

B. Respondent

 

Respondent contends that Complainant failed to prove common law rights in the TWIN CITY GARAGE DOOR COMPANY mark and has provided insufficient evidence of secondary meaning.  Respondent also contends that the mark is unprotected because it merely adds two generic words, “garage” and “doors” to a geographic entity “twin city.”

 

Respondent also contends it has rights or legitimate interests in the <twincitygaragedoors.com> domain name because it is using it to make a bona fide offering of goods or services and essentially has as much right as Complainant to use the generic terms and geographic identifier.  Respondent denies that it has registered and used the name in bad faith.  Respondent primarily relies on the fact that it employed a company called “Mobile Motion,” an on-line advertising agency which selected and registered the name for marketing purposes without knowledge that Complainant had a similar name.  Moreover, Respondent insists it had never heard of Complainant at the time Mobile Motion registered the domain name for it. 

 

C. Additional Submissions

 

In its additional submission, Complainant offered rebuttal of Respondent’s assertions.  In particular, Complainant offered evidence of confusion in the marketplace, additional evidence concerning the issue of secondary meaning and attacked Respondent’s assertion that neither Mobile Motion nor Respondent had heard of Complainant at the time the domain name was selected and registered. 

 

Respondent responded to the additional submission, repeating its contention that Complainant did not present evidence of secondary meaning in the marketplace, asserted the disputed domain name omits a key word from Complainant’s purported mark, continued to deny that it acted in bad faith and attacked the quality of Complainant’s evidence. 

 

FINDINGS

Complainant, TWIN CITY GARAGE DOOR COMPANY, was established on April 1, 1965 and has been installing and servicing residential and commercial garage doors and accessories since then.  In 1992, Complainant was purchased by APi Group, Inc., and its legal name is APi Garage Door, Inc.  Complainant has continued to operate, however, and is licensed under the name TWIN CITY GARAGE DOOR COMPANY.  Complainant registered the TWIN CITY GARAGE DOOR COMPANY name with the Minnesota Secretary of State.  Respondent is Express Garage Doors, Inc.  Respondent has operated a business in the twin cities area of Minnesota for about three years.  Respondent’s business is essentially the same as that of TWIN CITY GARAGE DOOR COMPANY.  In May 2004, Express Garage contracted with an on-line advertising company called Mobile Motion for various marketing services, including use of the Internet.  Mobile Motion suggested registering the domain name <twincitygaragedoors.com> because Express Garage serves the twin cities area, and Mobile Motion’s research showed that registering domain names that contain a city or location and the words “garage doors” would be an effective means of attracting attention on the internet. 

 

The use of the descriptor “twin city” or “twin cities” is common in the area in and around the Minnesota cities of Minneapolis and St. Paul.  Consumers have been confused because of the similarity of Complainant’s name and the domain name of Express Garage.  Each company has undoubtedly lost customers to the other because of this confusion. 

 

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 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;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that the term “Twin City” is merely a geographical descriptive term which, when combined with “Garage Door Company” does not give rise to a mark that is capable of acquiring a secondary meaning in the marketplace.  It is not different in principal from the facts in Sacramento Home Loans, Inc. v. MH Networks LLC, FA 241937 (Nat. Arb. Forum, Apr. 20, 2004).  The record lacks sufficient evidence to establish that there was a strong customer identification of the mark as indicating TWIN CITY GARAGE DOOR COMPANY as the source of such goods or services.  See Molecular Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum, June 24, 2003). 

 

Rights or Legitimate Interests

 

The record does not support Complainant’s contention that Respondent is using the disputed domain name in an effort to divert Internet users from Complainant’s website to the website of Respondent.  The Panel finds that Respondent independently selected the domain name as a means of attracting consumers to its website based on the experience and recommendation of the on-line advertising company, Mobile Motion.  The record shows that Respondent employs its website to make a bona fide offering of goods or services rather than to redirect consumers from Complainant’s website to its own.  See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum, May 20, 2002); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum, Feb. 19, 2001). 

 

Registration and Use in Bad Faith

 

There is simply no evidence that Respondent registered the domain name in bad faith.  The Panel finds the evidence that Mobile Motion selected the name because of its likelihood to draw users to its website for legitimate business purposes supports a finding that Respondent proceeded in good faith.  See DJF Assocs., Inc. v. AIB Comm., FA 95612 (Nat. Arb. Forum, Nov. 1, 2000).  The claim of bad faith is undermined by the use by Respondent of generic terms in the domain name.  See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum, Feb. 13, 2001).  Complainant has failed to establish its allegation of bad faith. 

 

DECISION

Because Complainant has failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

 

 

 

 

Mark McCormick, Panelist
Dated: August 8, 2005