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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Amscot Corporation v. Fibertech Columns, Inc.

WIPO Case No. D2005-0656

 

1. The Parties

The Complainant is Amscot Corporation (“Amscot”), Tampa, Florida, United States Of America, represented by Holland & Knight, LLP, Tampa, Florida, United States of America.

The Respondent is Fibertech Columns, Inc. (“Fibertech”), Clemson, South Carolina, United States of America, represented by McNair Law Firm, Greenville, South Carolina, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is: <amscot.com> (the “Domain Name”).

The registrar is Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2005. On June 23, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name at issue. On June 24, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and billing 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. A timely Response was filed with the Center on July 19, 2005.

The Center appointed Michael A. Albert as the sole panelist in this matter on August 9, 2005. 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 the Rules, paragraph 7.

 

4. Factual Background; Parties’ Contentions

a. The Trademark

Amscot’s Complaint alleges, and submits evidence, that its AMSCOT mark is federally registered in the United States in connection with various financial services, including check cashing, deferred deposit transactions, money orders, and tax preparation. Complainant alleges ownership of U.S. Registration No. 2,889,003 (registered on September 28, 2004), in connection with financial services for others, namely check cashing, deferred deposit transaction, money order, and tax preparation services. Complainant’s first use of this mark in commerce is alleged to have occurred on June 30, 1989.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide this dispute. In paragraph 10 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy has been satisfied.

c. Complainant

Amscot asserts as follows:

- Complainant has used the AMSCOT mark in commerce since 1989, and is the owner of a federal registration for the mark.

- The disputed Domain Name contains Complainant’s identical trademark.

- The addition of the “.com” top level domain (gTLD) does not differentiate the Domain Name from the mark.

- Respondent is not a licensee and therefore has no legitimate interest in the Domain Name or in the AMSCOT mark.

- Respondent does not have a legitimate business interest in using the Domain Name because it is not currently making use of the Domain Name, despite having owned it for over ten years.

- Respondent has registered and used the Domain Name in bad faith.

- Respondent intends to use the Domain Name for “illegitimate commercial gain purposes,” such as using the fame of the AMSCOT mark to sell Respondent’s product, diverting potential customers away from Complainant’s actual web sites, and causing confusion regarding the origin of Complainant’s products and services.

d. Respondent

Fibertech asserts as follows:

- Respondent has superior rights in the mark AMSCOT because it has been using the AMSCOT mark in association with real estate transactions in the form of a partnership since 1985, purchasing real estate as early as 1986, and in the form of an LLC since 2004.

- Respondent’s use of the AMSCOT mark predates the use cited by Complainant, thus granting Respondent superior rights to the mark.

- Respondent has developed significant trademark rights in the mark AMSCOT and thus has a legitimate interest in respect of the Domain Name.

- The Domain Name was registered in order to further the business of Fibertech Columns, as Amscot was a partnership operating under the Fibertech umbrella.

- When the Domain Name was registered, Respondent had no knowledge of Complainant’s existence.

- Complainant and Respondent are not competitors; Complainant is involved in the financial services industry and Respondent has used the AMSCOT mark in the field of real estate purchasing and development.

- Respondent did not register the Domain Name for illegitimate commercial gain purposes, such as blocking Complainant from reflecting its mark in a corresponding domain name, or selling the Domain Name to Complainant.

- Respondent has never engaged in a pattern of bad faith registration; this is the first time that Respondent has ever been involved in a dispute related to one of its registered domain names.

- Due to limited financial resources, Respondent’s current plans for expansion of its business will not focus on the AMSCOT mark or the Domain Name. As such, Respondent is currently offering to sell the Domain Name.

 

5. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a).

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:

(i) The Domain Name in issue is identical or confusingly similar to Complainant’s trademark at issue here; and

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

(iii) The Domain Name was registered and is being used in bad faith.

Paragraph 4(b) of the policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the policy sets out three illustrative circumstances any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) above.

a. Domain Name is Identical to Trademark

The Domain Name is alleged to be confusingly similar to certain registered trademarks of Complainant. Specifically, the Domain Name adds the top level domain (gTLD) “.com” after the mark AMSCOT. Because web users typically add a gTLD such as “.com” or “.net” to a mark when attempting to locate the mark’s owner on the Internet, and because the gTLD is a functional necessity rather than an arbitrary trademark choice, the gTLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001). Because the Domain Name is otherwise identical to Complainant’s registered mark, the Panel concludes that the requirement of paragraph 4(a)(i) of the policy has been met.

b. Whether Respondent has Rights or Legitimate Interests In the Domain Name.

Next, Complainant must demonstrate that Respondent lacks any rights or legitimate interests in the Domain Name. Complainant has failed to persuade this Panel that it has met its burden in this regard.

Complainant’s position is that Respondent’s use of the mark is improper because it infringes Complainant’s trademark rights, and that Complainant has not granted Respondent a license. While the Panel accepts Complainant’s representation that Respondent does not have a license to the AMSCOT mark, this fact alone is not dispositive of whether Respondent’s use of the mark in its business has been legitimate.

Respondent alleges and provides evidence that it operated a partnership under the name AMSCOT in connection with the purchase of real estate in 1986. Respondent provides further evidence that it created an LLC under the AMSCOT name in 2004. Respondent alleges that its partnership was still operating in 1995 when it registered the Domain Name, and that “[t]he domain name was registered to represent the Amscot Partnership (later Amscot, LLC) operated by Respondent, without any knowledge of Complainant’s existence.” The Complaint makes no mention of Respondent’s alleged prior uses of the mark.

Complainant’s evidence of federal registration establishes that Complainant’s first use of the AMSCOT mark in commerce was in 1989; the Complaint does not allege an earlier date of use. Respondent’s alleged use of the mark, which is supported by evidence, thus predates both Complainant’s use of the mark and Complainant’s federal registration. While Respondent’s use of the mark may have been minor in comparison to Complainant’s later use, it cannot be said on the record before this Panel that Respondent has “no rights or legitimate interests in respect of the domain name.”

In addition, Respondent correctly notes that prior to any notice of this dispute from Complainant it had already formed Amscot, LLC. This fact supports the conclusion that Respondent has made “demonstrable preparations to use . . . a name corresponding to the domain name” under Policy, paragraph 4(c)(i).

For the above reasons, the Panel concludes that Complainant has failed to show that Respondent lacks any rights or legitimate interests in the Domain Name.

Whether a court would reach the same conclusion in a trademark infringement action, after more complete discovery and analysis under trademark law, is not this Panel’s concern. See J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054 (April 20, 2000) (“The ICANN policy is very narrow in scope, covers only clear cases of ‘cybersquatting’ and ‘cyber piracy,’ and does not cover every dispute that might arise over domain names.”); Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999) “http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm” 4.1(c) (“Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts. . . . [The Policy] does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark).”).

c. Registered and Used in Bad Faith

Finally, Complainant bears the burden of proving that the Domain Name was registered and used in bad faith. In light of Complainant’s failure to prove the second element required under the Policy, consideration of this third element is not strictly necessary. It will, however, be addressed here in the interests of providing a more complete analysis.

Paragraph 4(b) of the Policy sets out four non-exclusive factors that should be considered when determining registration and use 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 first illustration of bad faith concerns “registration 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 . . . for valuable consideration in excess of [registrant’s] documented out-of-pocket costs directly related to the domain name.”

In this case, the Panel finds no evidence of this type of bad faith. Respondent has alleged that it registered the domain name over ten years ago in furtherance of its own uses of the AMSCOT mark in real estate transactions. Complainant does not allege that Respondent obtained a registration primarily for the purpose of selling the Domain Name, or that Respondent has ever made an attempt to sell, rent, or transfer the Domain Name to Complainant.

The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant alleges no such pattern of conduct; in fact, Respondent alleges that this is the first such dispute in which it has been involved. As noted above, Respondent alleges (and provides evidence) that it first used the AMSCOT mark in 1986, and that it incorporated Amscot, LLC on June 17, 2004. Respondent registered the Domain Name on December 26, 1995. According to the Complaint, Complainant’s federal registration of the mark was granted on September 28, 2004, and the application which led to that registration was published for opposition on July 6, 2004.

As noted above, Respondent’s alleged uses of the mark predate Complainant’s federal registration. In addition, Respondent plausibly alleges ignorance of Complainant’s existence at the time of the Domain Name registration. Given the lack of a published trademark application or federal registration which might have put Respondent on notice of Complainant’s use of the mark, the record before this Panel does not convincingly establish that Respondent registered the Domain Name with the intent of preventing Complainant from using it.

The third illustration of bad faith is registration “primarily for the purpose of disrupting the business of a competitor.” Complainant does not allege that it competes in any way with Respondent. Respondent notes that “Complainant is involved in the financial services industry and Respondent has used the Amscot name in the field of real estate purchasing and development.” Accordingly, the Panel does not find this illustration to be applicable.

The fourth illustrative example of bad faith in the Policy is a respondent’s use of a domain name in an effort to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark. The Complaint focuses on this type of bad faith, alleging that Respondent’s “unauthorized use of the confusingly similar AMSCOT mark falsely designates the origin of Respondent’s products and services,” and that “[i]t is clear that the Respondent’s intent of using the disputed Domain Name is to misleadingly divert consumers for his own personal commercial gain.”

Complainant alleges and provides evidence that Respondent’s web site redirects to “www.buydomains.com.” This site contains no information about Respondent or any of its products or services. Thus, it is unclear how Respondent is “using the fame of the AMSCOT mark . . . to sell Respondent’s products,” or how such use “falsely designates the origin of Respondent’s products and services.” While it is plausible that Respondent’s use of the Domain Name may cause some confusion among Complainant’s actual or potential customers, Complainant has failed to demonstrate that such confusion was Respondent’s intent, nor that Respondent has sought to use such confusion “for commercial gain.”

In sum, the Panel concludes that Complainant has failed to establish that Respondent has registered and used the Domain Name in bad faith under paragraph 4(b) of the Policy.

 

7. Decision

The Panel finds that Complainant has carried its burden of showing that the Domain Name is identical to its registered mark as required under paragraph 4(a)(i) of the Policy. Complainant has failed, however, to demonstrate that Respondent lacks legitimate rights in the Domain Name under paragraph 4(a)(ii) or that Respondent registered and used the Domain Name in bad faith under paragraph 4(a)(iii).

For the above reasons, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that Complainant’s request for transfer of the Domain Name is denied.


Michael A. Albert
Sole Panelist

Dated: August 25, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0656.html

 

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