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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William S. Russell v. Mr. John Paul Batrice d/b/a the Clock Doc

Case No. D2004-0906

1. The Parties

The Complainant is William S. Russell of Monteagle, Tennessee, United States of America, represented by Waller Lansden Dortch and Davis, PLLC, United States of America.

The Respondent is Mr. John Paul Batrice d/b/a “the Clock Doc” of Lubbock Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <clockdoc.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2004. On November 2, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 2, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2004. In accordance with paragraph 5(a) of the Rules, the due date for the Response was November 24, 2004. The Response was timely filed with the Center on November 15, 2004. A supplemental Response was later filed with the Center on November 17, 2004, and was also timely filed.

The Center appointed Timothy D. Casey as the sole panelist in this matter on December 1, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

4. Factual Background

The Complainant obtained U.S. Trademark Registration No. 1,266,952 for CLOCK DOC and design mark on February 14, 1984, in International Class 14 for “Clocks for Use in Automobiles” and in International Class 37 for “Repairing and Restoring Clocks for Use in Automobiles [Speedometers, Tachometers, Ammeters, Volt Meters, Temperature Gauges, Fuel Gauges, Oil Pressure Gauges and Radios for Automobile],” both with a date of first use in commerce of June 19, 1981. No claim was made to the exclusive use of the word “clock” apart from the registered mark.

The Respondent asserts that it registered the name CLOCKDOC in Lubbock, Texas, but provides no additional information regarding this registration.

The Complainant asserts that it has used the CLOCK DOC mark continuously since 1981 in repairing automobile clocks, speedometers, tachometers, ammeters, volt meters, temperature gauges, fuel gauges, oil pressure gauges and radios throughout the U.S. and in approximately 50 other countries with his work featured in a variety of automobiles appearing in motion pictures and television shows.

The Respondent has used the CLOCK DOC trade name since at least 1993, in repairing “strictly . . . regular clock[s].”

The Respondent registered the disputed domain name <clockdoc.com> on October 20, 2000, at least seven years after the Respondent first made use of the mark to repair regular household clocks.

The Complainant registered the domain name <clockdoc.net> on February 11, 2004, and asserts that he did so after finding the domain name <clockdoc.com> to be already registered.

5. Parties’ Contentions

A. Complainant

The Complainant argues that in 1993, the Respondent opened and began operations of a clock-repairing business in Lubbock, Texas under “the Clock Doc” name without permission from the Complainant.

The Complainant argues that on October 20, 2000, the Respondent registered the disputed domain name without permission from the Complainant.

The Complainant further contends that the disputed domain name incorporates the Complainant’s prior registered mark and that he “believes that the initial Web site a consumer would visit to seek information with respect to his business is the Disputed Domain Name.”

The Complainant asserts that the disputed domain name is “nearly identical” to the registered mark of the Complainant and therefore is likely to “cause deception, mistake and confusion among customers.” The Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant argues that Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location of a service on its website or location.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

The Respondent contends that he is “in no way in competition with [the Complainant]” as what he services is “completely different from what [the Complainant] sells and services.” The Respondent further states that “[w]e are strictly in the regular clock business; [the Complainant] is in car tacks, gauges and clocks.”

The Respondent argues that he “inherited the name clockdoc from an uncle who had the name since the early 1960’s.”

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforementioned three elements must be proved by a complainant to warrant relief.

The Panel makes the following specific findings:

A. Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a complainant must establish under paragraph 4(a)(i) of the Policy: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.

For the purposes of this proceeding, it is only necessary to prove that the Complainant has rights in the trade or service mark regardless of the rights that the Respondent may have, but in order to fully address the arguments of the Respondent, the Panel must address the Respondent’s assertion that his rights date back to the “early 1960’s.”

Complainant’s rights in U.S. Registration No. 1,266,952 for the mark “CLOCK DOC” date back to the asserted date of first use in commerce of June 19, 1981. The Respondent contends that his rights date back to about 1990, or perhaps the “early 1960’s” as he has “been in business for about fourteen years and inherited the name clockdoc from an uncle who had the name since the early 1960’s.” The veracity of this statement is questionable in light of the content on the Respondent’s’ own web site which states that the “family-owned” business started in 1993. Additionally, the Respondent failed to provide any record of the purported uncle’s ownership of the “clockdoc” mark or assignment of trademark rights that would afford the Respondent an earlier date of first use.

Although the Panel has the power to order the parties to make supplemental filings to exact the specific date of first use, the Panel is of the view that this power should be exercised sparingly. A series of supplemental filings would be inconsistent with the spirit of the Policy which is to obtain a judgment concerning domain name disputes on a cost-effective and expeditious basis, applying limited and defined criteria. Here it is probable that supplemental filings would not obviate the need to hear witnesses and determine credibility.

Also, paragraph 15 of the Rules states that the “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy. . .” Paragraph 10 of the Rules provides that the “Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Paragraph 4 of the Policy makes repeated reference to the Panel’s role in making findings of fact based on the evidence.

Based on the Policy and the Rules, it is clear to the Panel that his role is to make findings of fact as best he can based on the evidence presented provided the matters at issue are within the scope of the Policy. There may be circumstances due to the inherent limitations of the dispute resolution process or for other reasons where it would be appropriate for a panel to decline to decide a factual dispute. However, the mere existence of a genuine dispute of material fact should not preclude a panel from weighing the evidence before it and reaching a decision.

Since these proceedings are civil, rather than criminal, in nature, the Panel believes the appropriate standard for fact-finding is the civil standard of a preponderance of the evidence (and not the higher standard of “clear and convincing evidence” or “evidence beyond a reasonable doubt”). Under the “preponderance of the evidence” standard, a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. The Panel recognizes that other standards may be employed in other jurisdictions. However, the standard of proof employed in the United States seems appropriate for these proceedings generally, and in particular for this proceeding which involves citizens of the United States, actions occurring in the United States and a domain name registered in the United States.

In this case, there are factual disputes over the date of the Respondent’s first rights in the mark. For the reasons just stated, these disputes do not preclude a decision. Instead, the Panel has reached a decision based on the preponderance of the evidence submitted by the parties on the basic issues under the Policy.

Therefore, the Panel concludes that the Complainant, as registered proprietor of the mark and regardless of the rights the Respondent may have, has established the first requirement of this paragraph; that is, that it has rights in the mark.

The second requirement is that the domain name be identical or confusingly similar to the mark. The Panel concludes that the domain name is essentially identical to the

Complainant’s mark for the purposes of this proceeding.

The only difference between the Complainant’s trademark and the disputed domain name is the addition of the suffix “.com” and the deletion of the space between CLOCK and DOC. A suffix is a necessary element of any domain name and here the suffix “.com” is meant to distinguish commercial sites. Thus, the term “.com” equates to “commercial institution” and is merely the classification for which the domain name is being used. This is not a distinguishing feature and does not change the likelihood of confusion. Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053. Similarly, the use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is confusingly similar to a mark. Chernow Communications, Inc. v. Jonathon D. Kimball, WIPO Case No. D2000-0119.

Therefore, the Complainant has shown that he has rights in the mark, and that the disputed domain name is identical or confusingly similar to this mark. We conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Respondent has Rights or Legitimate Interests in the Domain Name

While the Complainant has satisfied the first requirement, the same cannot be said of the second and third requirements.

This case does not involve the classic cybersquatter who registers a series of domain names unrelated to its business and confusingly similar to famous trademarks with the intent of selling them to the trademark owner at an exorbitant price. Here, arguably, a local clock repair facility registered the disputed domain name to assist and augment its business of servicing and selling household clocks.

The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name. Resolution of this issue requires a detailed analysis of the underlying facts that go to the Respondents’ intent. The Complainant has proffered an inaccurate and incomplete analysis to that end, with no specific supportive evidence.

Under paragraph 4(c) of the Policy:

[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainant fails to understand the full intent of paragraph 4(c)(ii) when he asserts that the “Respondent is known personally as John Paul Batrice; his legal name is not ‘Clock Doc’”. Indeed, John Paul Batrice’s legal name is not “Clock Doc,” however, his business has “been commonly known by” the CLOCK DOC name since 1993, in accordance with paragraph 4(c)(ii) and apparently is registered at the very least as a DBA (“doing business as”) in Lubbock, Texas. Additionally, the Respondent was in the business of clock repair for at least seven years before registering the disputed domain name evidencing a bona fide intent to use the disputed domain name for legitimate business purposes long before registering the domain name. The intent of paragraph 4(c)(i)-(ii) is to allow business entities with a bona fide offering of goods and services the opportunity to register domain names related to their business, and further, to prevent other entities from registering completely unrelated domain names solely for the purpose of profiting from the fame of the domain name itself. In the Complainant’s own citation to Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, the panel in that case states “[w]hat paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known . . . prior to registration of the disputed domain name” which is clearly the case here. This Panel is satisfied that the Respondent has presented evidence sufficient to meet the standard of a preponderance of the evidence to prove that it has used the domain name in connection with the bona fide offering of goods or services.

The Complainant also contends that its U.S. trademark registration rights trump any rights of the Respondent. While the Panel questions whether customers seeking repairs of highly specialized antique automobile clocks, speedometers, tachometers, ammeters, volt meters, temperature gauges, fuel gauges, oil pressure gauges and radios would actually be confused by a web site offering services for normal households clocks, that question is a matter of U.S. trademark law which is well beyond the scope of the disputes intended to be resolved under the Policy. In fact, under paragraph 4(c)(ii), the Policy acknowledges that the domain name holder may indeed have “no trademark or service mark rights” but still obtain relief under this section of the Policy. Still, these matters go considerably beyond the scope of issues that can be fairly resolved on a document-only basis and within the short deadline for making decisions. A trial court is better equipped to address substantive issues of law such as this.

The Panel therefore concludes that the Complainant has not sustained his burden of proof with respect to paragraph 4(a)(ii) that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Respondent has not Registered and Used the Domain Name in Bad Faith

The Complainant also has the burden of proving that the Respondent both registered and used the disputed domain name in bad faith. Once again, the Complainant fails to specify any evidence pointing to bad faith registration and use.

Under paragraph 4(b) of the Policy:

[f]or the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant does not offer any specific evidence that controverts the Respondents assertion that the disputed domain name was registered solely for the purpose of operating a legitimate business. Nor has the Complainant offered any evidence that suggests that the Respondent has “engaged in a pattern” of registering domain names for the purpose of preventing the owner of the trademark from using the corresponding domain name. Even though the Complainant suggests that the Respondent’s business is a direct competitor, the Panel is not persuaded that a company that offers services on highly specialized antique automobile clocks, speedometers, tachometers, ammeters, volt meters, temperature gauges, fuel gauges, oil pressure gauges and radios would be a competitor with a company that offers services on normal households clocks. The Panel is of the belief that the Complainant’s U.S. trademark registration is narrowly defined for automobiles only and therefore the Complainant is not afforded protection over all types of clocks, and in particular, normal household clocks, however, that question is a matter of U.S. trademark law which is well beyond the scope of the disputes intended to be resolved under the Policy. Also, the Complainant fails to offer evidence that the Respondent intentionally attempted to attract Internet users thereby indicating bad faith registration and use. Due to the lack of any compelling evidence proffered by the Complainant that would suggest bad faith registration and use, the Panel therefore concludes that the Complainant has not sustained his burden of proof with respect to paragraph 4(a)(iii) that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

In light of the foregoing, the Panel decides that:

(1) The disputed domain name registered by the Respondent and at issue here is identical or confusingly similar to the Complainant’s mark,

(2) Complainant has not met his burden of proof under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

Accordingly, the Panel denies the Complainant’s request for the transfer of the disputed domain name <clockdoc.com>.

Timothy D. Casey
Sole Panelist

Dated: December 13, 2004