WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arroyo Craftsman Lighting, Inc. v. Golden Realty
Case No. D2002-0503
1. The Parties
The Complainant in this proceeding is Arroyo Craftsman Lighting, Inc., located in Baldwin Park, California, United States of America.
The Respondent in this proceeding is Golden Realty, located in Alhambra, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue in this proceeding is <ArroyoCraftsman.com> (the "Domain Name"). The Domain Name is registered with BulkRegister.com, Inc., 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America (the "Registrar").
3. Procedural History
On May 30, 2002, Complainant transmitted a copy of an initial complaint to the WIPO Arbitration and Mediation Center (the "Center") by e-mail. On June 4, 2002, the Center received the hardcopy version of the initial complaint with exhibits. The initial complaint named Edward Golden and Robert Golden as the Respondents.
On May 31, 2002, the Center sent a Request for Registrar Verification to the Registrar requesting verification of registration data.
On June 4, 2002, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and stated that "[t]he Respondent (sic) is the registrant of the domain name(s)."
On June 7, 2002, the Center sent a request to the Registrar requesting verification of the identity of the registrant of the Domain Name. The same date, the Registrar confirmed that Golden Realty is the registrant of the Domain Name.
On June 11, 2002, the Center transmitted a Complaint Deficiency Notification to Complainant, noting that the named respondents were not the registrants for the Domain Name.
On June 14, 2002, Complainant transmitted to the Center an amended Complaint (the "Complaint"), substituting Respondent for Edward Golden and Robert Golden.
On June 21, 2002, the Center sent an e-mail message to the Complainant inquiring whether four hardcopies of the Complaint had been sent to the Center. The same date, Complainant responded that the hardcopies would be sent that day by overnight delivery. The Center received the hardcopies on June 25, 2002.
On June 27, 2002, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The same date, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, together with copies of the Complaint, and sent a copy to the Complainant as well. This notification was sent by the methods required under ∂ 2(a) of the Rules.
On July 13, 2002, Respondent timely submitted an online Response to the Complaint. On July 15, 2002, the Center sent an e-mail message to the Respondent inquiring whether the Respondent had submitted the original and four hardcopies of the Response to the Center. The same date, the Respondent confirmed that the copies had been sent to the Center. On July 17, 2002, the Center received the hardcopies of the Response, with exhibits.
On July 16, 2002, the Center transmitted an Acknowledgement of Receipt (Response).
On August 2, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Bradley A. Slutsky (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist, and indicated that the decision in this matter would be due by August 16, 2002. The Center also provided the parties with the Sole Panelistís Declaration of Impartiality and Independence, and no party objected to the service of the Sole Panelist. The same day the Center also transmitted the Case File to the Sole Panelist.
Pursuant to Rule 11(a), this proceeding is being conducted in English.
4. Factual Background
Complainant is the holder of U.S. trademark registration number 1614751, dated September 25, 1990, for the use of ARROYO CRAFTSMAN in connection with indoor and outdoor electric lighting fixtures, and chains and posts therefor, sold as a unit, and of U.S. trademark registration number 1614752, dated September 25, 1990, for the use of ARROYO CRAFTSMAN with a design in connection with indoor and outdoor electric lighting fixtures, and chains and posts therefor, sold as a unit.
Complainant has registered and uses the domain name <Arroyo-Craftsman.com>.
According to the WHOIS database of BulkRegister.com, Respondent has registered the domain name <ArroyoCraftsman.com>.
Respondent has never linked the Domain Name to a website. After the Complaint was filed in this matter, Respondent offered the Domain Name for sale on Respondentís websites and also offered the Domain Name for sale to Complainant.
At one point Respondent also registered the domain <NCAABettor.com>, though Respondent asserts that domain has now been sold. Respondent also listed the domains <JalinRose.net> and <MarchMadnessHQ.com> for sale on Respondentís <BettingDomains.com> website.
The author of the Response, who claims to have an interest in the Domain Name, also registered <ArroyoCraftsman.net>.
The Registration Agreement in effect between Respondent and BulkRegister.com subjects Respondent to the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration. See Policy, ∂ 4.
5. Partiesí Contentions
Complainant alleges that it has used the trademark ARROYO CRAFTSMAN continuously in commerce since 1988 in connection with Complainantís lighting fixtures. Complainant further alleges that its trademark is famous, particularly in Southern California where Complainant and Respondent are located.
Complainant alleges that the Domain Name is identical to Complainantís trademark.
Complainant alleges that Respondent has not engaged in any bona fide offering of goods or services using the Domain Name, that Respondent has never been commonly known by the Domain Name, and that Respondent has not used the Domain Name for non-commercial or fair use purposes.
Complainant also alleges that Respondent registered the Domain Name in bad faith, and as evidence thereof submits that Respondent has hundreds of domain names for sale, including several that correspond to names or trademarks of others, and that Respondent demanded between $7,500 and $10,000 to transfer the Domain Name to Complainant.
Respondent alleges that Robert and Edward Golden are in the business of selling and developing generic domain names, and that they do not intentionally register trademarked names. Respondent alleges that the third party names, alleged by Complainant to have been for sale by Respondent, were either owned by third parties or were descriptive and have been sold. Respondent disputes Complainantís allegations regarding the origin of the term Arroyo Craftsman. Respondent alleges that the term is a combination of two generic words and that the term refers to the design and craftsmanship that flourished in the Arroyo Seco area of Pasadena, South Pasadena, and Los Angeles around the turn of the 20th century. Respondent submits several exhibits that show some use of the term in this manner. Respondent further alleges that the term originated 80 years before Complainant began using the term, in a one-time publication in 1909 entitled Arroyo Craftsman. Respondent also notes that one of Complainantís apparent competitors has registered <ArroyoCraftsman.biz> and is using the domain to direct Internet traffic to a website that allegedly offers over 500 types of competing lighting products.
6. Discussion and Findings
Pursuant to Rule 15, panelists in domain name disputes "shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable."
Under Rule 4(a), the Complainant must prove the following:
(i) Respondentís 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) Respondentís domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar; Complainantís Trademark Rights
Complainant has submitted printouts from the United States Patent and Trademark Office website evidencing Complainantís registration of two marks (one word mark, one word and design mark) for ARROYO CRAFTSMAN. Respondent has submitted evidence and argument that could be interpreted to allege that the term ARROYO CRAFTSMAN is generic and that the Complainant has no rights therein, even in the lighting industry. To the extent that Respondent argues that Complainant has no rights in the term ARROYO CRAFTSMAN in the lighting industry, the Sole Panelist rejects any such assertion. Complainantís marks have been registered for over 12 years, the Section 15 affidavits have been filed, and the marks have become incontestable. As a result, the registrations for the marks "shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrantís ownership of the mark, and of the registrantís exclusive right to use the registered mark in commerce Ö on or in connection with the goods or services specified in the" Section 15 affidavit. See 15 U.S.C. ß 1115(b).
There can be little doubt that the Domain Name is identical or confusingly similar to Complainantís mark. The omission of the space between the words ARROYO and CRAFTSMAN and the addition of the ".com" at the end do not distinguish the Domain Name from Complainantís mark in any meaningful or cognizable way. See, e.g., General Electric Company v. Charles Kasinga, WIPO Case No. D2000-0389 (July 14, 2000) (due to technical requirements and other considerations, omission of space, addition of dash, and/or addition of a top level domain do not distinguish a domain name from a trademark).
Accordingly, the Sole Panelist finds that the Complainant has proven that Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, that Respondent has not been commonly known by the Domain Name, and that Respondent has not used the domain name for a non-commercial or fair use purpose. Respondent disputes this, arguing that Respondent is engaged in the bona fide or fair use offering of generic domain names for sale.
The "rights or legitimate interests" prong of Rule 4(a) is somewhat odd in that it seeks to have the Complainant prove a negative, when the rights or interests at issue ordinarily would be peculiarly within the knowledge of the Respondent. As a result, panels have held that once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show, by providing concrete evidence, that it has rights or legitimate interests to the domain name at issue. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000). Without commenting on whether that standard is applicable in all cases, the Sole Panelist finds that in this case the Complainant has made a prima facie case and the burden should shift to the Respondent.
Examining the Rule 4(c) defenses, Rule 4(c)(i) does not apply because Respondent admits that it never offered the Domain Name for sale until after the Complaint was filed. Rule 4(c)(ii) does not apply because there is no evidence that Respondent has been commonly known by the Domain Name. Thus, the question is whether offering to sell the Domain Name constitutes a fair use under Rule 4(c)(iii), or otherwise qualifies as a right or legitimate interest, as the Rule 4(c) factors are not exclusive.
The Sole Panelist finds that Respondentís use of the Domain Name is not a fair use and does not otherwise qualify as a right or legitimate interest. ARROYO CRAFTSMAN is an incontestable trademark. There may or may not be some uses of the trademark, outside the lighting field, that would not infringe Complainantís mark or dilute the mark (if the mark is indeed famous). Even if such uses exist as a possibility, however, Respondentís offering to sell the Domain Name to the Complainant for valuable consideration in excess of documented out-of-pocket costs (which is a factor indicating bad faith under Rule 4(b)(i)) would not be one of those uses. In that regard, this case is not much different from Panavision Intíl v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), in which Mr. Toeppen put up a picture of Pana, Illinois on the website at <www.panavision.com> and then offered to sell the domain to the plaintiff. Further, like Mr. Toeppen, Respondent or someone affiliated with Respondent registered another domain name containing the trademark of the Complainant after this dispute began. ICANN cases have found a lack of rights or legitimate interests, and bad faith registration and use, under similar circumstances. See, e.g., The Coca-Cola Company v. Tantamount Property Trust, WIPO Case No. D2001-0327 (April 23, 2001) (transferring domain name <cokeusa.com> despite Respondentís allegation that Respondent only sold generic domain names); Bodegas Vega Sicilia, S.A. v. www.portaldedominios.com, WIPO Case No. D2000-1026 (November 14, 2000) (transferring domain <vega-sicilia.com> despite Respondentís allegation that Vega and Sicilia are two common words in every Spanish dictionary). The cases cited by Respondent, PROM Software, Inc. v. Reflect Publishing, Inc., Case No. D2001-1154 (March 4, 2002) and Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016 (March 24, 2000), are distinguishable. In PROM, the trademark at issue was a common dictionary word and the facts and circumstances did not, on balance, support the conclusion that the Respondent was seeking to benefit from the Complainantís trademark. In Allocation Network, the trademark also was a dictionary word and more important there seems to have been no evidence that the Respondent, a Philippines resident, would have been aware of the Complainantís trademark at the time of registration. Indeed, in that case the Respondent registered the domain name at issue before the Complainantís trademark was granted and published. The issues of rights or legitimate interests, and bad faith, can be heavily dependent on the facts. On the facts of this case, the Sole Panelist believes this matter is more like Panavision, Coca-Cola v. Tantamount, Vega Sicilia, and Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 14, 2000), than PROM or Allocation Network. The Sole Panelistís conclusion in this regard is also supported by the Sole Panelistís findings below with respect to bad faith.
Accordingly, the Sole Panelist finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the Domain Name.
C. Bad Faith
Complainant alleges that Respondentís bad faith is demonstrated by Respondentís initial failure to offer a good-faith basis for the registration of the Domain Name, by Respondentís failure to transfer the Domain Name upon receipt of Complainantís trademark registration, by Respondentís registration of hundreds of domain names allegedly including several that constitute third partiesí names and/or trademarks, and by Respondentís offer to sell the Domain Name for $7,500 - $10,000. Respondent denies these allegations, notes that Complainant allegedly began developing a website nine months after Respondent registered the Domain Name, argues that there is no evidence Respondent should have been aware of Complainantís mark and points to the Complainantís alleged lack of evidence of marketing, surveys, etc., and notes that Respondent never offered to sell the Domain Name to anyone until after the Complaint was filed.
Rule 4(b) sets out four non-exclusive factors that "if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith". These factors include (i) registration or acquisition of the domain name primarily for the purpose of selling, renting, etc. the domain name for valuable consideration in excess of documented out-of-pocket costs; (ii) registration of the domain name to prevent the trademark owner from registering their trademark as a domain name, provided there is a pattern of such activity; (iii) registration of the domain name to disrupt the business of a competitor; or (iv) intentionally attempting to attract users to a website under a domain name that is likely to be confused with the complainantís mark as to source, sponsorship, affiliation, or endorsement.
The latter two factors are inapplicable as the parties do not appear to be competitors and the domain <ArroyoCraftsman.com> does not resolve to a website.
The Sole Panelist finds that the first two factors are present, however. Respondent is in the business of selling domain names for a profit. Respondent has not offered any credible evidence as to why this particular domain name was registered, and thus has not offered any credible evidence to rebut the inference that this domain, like many of Respondentís other domains, was purchased in order to resell it at a profit. Respondent argues that the Domain Name is generic and that there is no evidence that Respondent should have been aware of Complainantís trademark. Respondent has not produced sufficient evidence for the Sole Panelist to conclude that the incontestable registered trademark ARROYO CRAFTSMAN is generic. Even if there are some possible uses of the term that could be generic (which the Sole Panelist does not decide), under Panavision and the cases cited in Section 6(B) of this Decision the Sole Panelist concludes that the Respondentís use of the Domain Name cannot be considered fair, legitimate, or generic. This conclusion is bolstered by Respondentís ultimate decision to offer to sell the Domain Name to the Complainant for an amount grossly in excess of the Respondentís documented out-of-pocket costs. As to whether Respondent should have known of Complainantís trademark, Respondent argues that Complainantís trademark is not famous in the sense of being a "household term", but does not credibly rebut the allegation that Complainantís mark is well known in Southern California, where both Complainant and Respondent are located. Further, under 15 U.S.C. ß 1072, Complainantís "[r]egistration of [the] mark on the principal register Ö shall be constructive notice of the registrantís claim of ownership thereof."
With regard to registration of the Domain Name to prevent the Complainant from registering its trademark as a domain name, Respondent registered the Domain Name with at least constructive notice of Complainantís trademark, which is alleged to be famous where Respondent is located and which allegation Respondent has not effectively rebutted. The Domain Name is identical or confusingly similar to Complainantís trademark, and probably is the first domain someone would guess if they were trying to reach the Complainantís website and did not know its URL. While the question of whether the Respondent has engaged in a pattern of such activity is a closer one, Panels have held that the registration of even two domain names can constitute a pattern for purposes of Rule 4(b)(ii). See, e.g., Caterpillar, Inc. v. Ivenue.com, Inc., Claim No. FA010600009739 (July 18, 2001); Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton, WIPO Case No. D2000-1675 (January 30, 2001); Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000). In this case, Respondent registered the Domain Name and also does not deny registering <NCAABettor.com>. In addition, the Sole Panelist notes that the exhibits to the Complaint demonstrate that Respondent offered the domain <MarchMadnessHQ.com> for sale on Respondentís <BettingDomains.com> website. While Respondent argues that the <NCAABettor.com> domain is descriptive and has been sold, the registration of such domains has been held to constitute bad faith. See, e.g., National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378 (January 16, 2001) (transferring the domains <bettingncaabasketball.com>, <bettingncaafootball.com>, <gamblingncaa.com>, <gamblingncaabasketball.com>, <gamblingncaafootball.com>, <wagerncaa.com>, <wagerncaabasketball.com>, and <wagerncaafootball.com>); see also NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 (March 9, 2001); National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (December 10, 2000); National Collegiate Athletic Association v. Rodd Garner and IntheZone.ws, WIPO Case No. D2000-0940 (November 7, 2000). Complainant also alleges that Respondent offered the domain <JalenRose.net> for sale, whereas Respondent notes that the domain was not registered by Respondent. The Sole Panelist is uncertain what to make of this allegation because the exhibits to the Complaint appear to indicate that the domain <JalinRose.net>, not <JalenRose.net>, was for sale on Respondentís website, and the domain <JalinRose.net> is currently unregistered. The mere offering for sale of the domain <JalinRose.net>, however, does lend some weight to the notion that the Respondent has engaged in a pattern of registering third party trademarks in order to prevent the trademark owners from registering their trademarks as domain names. Respondent does not need to have registered the majority of its domains for this purpose in order to have engaged in a pattern. This conclusion also is supported by the fact that the author of the Response registered <ArroyoCraftsman.net> after this dispute began.
Accordingly, the Sole Panelist finds that the Complainant has proven that the Respondent has registered and used the Domain Name in bad faith.
For the foregoing reasons, the Sole Panelist finds that the <ArroyoCraftsman.com> Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith. Therefore, in accordance with the Policy paragraph 4(i) and Rule 15, the Sole Panelist orders that the disputed Domain Name, <ArroyoCraftsman.com>, be transferred from the Respondent, Golden Realty, to the Complainant, Arroyo Craftsman Lighting, Inc.
Bradley A. Slutsky
Dated: August 15, 2002