WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlon Meter Company, Inc. v. Jon Jerman
Case No. D2002-0553
1. The Parties
The parties are Carlon Meter Company, Inc. of 1710 Eaton Drive, Grand Haven, Michigan 49417, United States of America. (the "Complainant") and Mr. Jon Jerman, of 275 Railroad Place, Hackensack, New Jersey, 07601, United States of America ("the Respondent").
2. The Domain Name and Registrar
The domain names in dispute ( the "Domain Names") are <carlonmeter.com>, and <carlonmeters.com>.
The Registrar is Network Solutions, Inc. (the "Registrar")
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in electronic form on June 16, 2002, and the appropriate fee was paid by the Complainant. Following correspondence regarding an incorrect designation of the Registrar, an amended Complaint (the "Amended Complainant") was filed with attachments on June 26, 2002. The Center has determined that the Amended Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as well as the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements.
A Notification of Complaint and Commencement of Administrative Proceeding (the "Notification of Complaint") was sent by email and fax on June 26, 2002, and by courier with attachments the same day. Copies were sent by e-mail to Complainant, to ICANN and to the Registrar.
Respondent acknowledged receipt of the amended Complaint by email on June 26, 2002. Respondent and Respondentís attorney each sent an email message to the Center on June 26, 2002. Respondent requested information regarding the "time frame of your review". The Center acknowledged receipt of these messages and repeated the deadline for Response that was previously stated in the Notification of Complaint. Respondent and Respondentís attorney requested an extension of the deadline for filing a Response on July 16, 2002, the date of the deadline. The Center declined to extend the period for Response on July 17, 2002, by email to Respondentís attorney. On July 17, 2002, the Center sent a Notification of Respondent Default to Respondent and Respondentís attorney.
Respondent filed a Response by email on July 22, 2002, and by hard copy on July 24, 2002. Receipt of the Response was acknowledged by the Center on July 24, 2002, by email which stated, inter alia, that "As the Response has been received after the due date, whether to consider it will be at the sole discretion of the Panel." The belated submission of a Response is dealt with below.
Having submitted a Statement of Acceptance and Declaration of Impartiality and Independence, David W. Maher was appointed as the Single Member Panel on July 25, 2002. The Panel is required to forward its decision to the Center by August 5, 2002.
Having reviewed the file, the Panel concludes that the Complaint complied with the applicable formal requirements, was properly notified, and has been submitted to a duly appointed Panel in accordance the Policy.
4. Factual Background
Complainant is engaged in the business of producing products including water meters, which it sells under the names "CARLON" and "CARLON METER". Complainant filed use based applications to register these marks in the United States Patent and Trademark Office, in April, 2002, alleging first use of the marks in commerce in June, 1963.
Respondent is the owner of Daniel L. Jerman Co., engaged in the business of marketing and selling various products including water meters. Respondentís company has been a distributor of Complainantís products since 1977. Respondent registered the Domain Names on February 22, 2001. Daniel L. Jerman Co., Respondentís company, operates a web site at "www.water-meters.com". The Domain Names are linked to this web site. Complainant alleges, and Respondent does not dispute, that the same web site is linked to over 65 domain names, including the Domain Names and the following: <water-meters.com>, <watermeters.com>, <watermeters.net>, <watermeters.info>, <watermeters.biz>, <jerman.com>, <backflow-preventers.com>, <backflowpreventers.com>, <fire-sprinkler.com>, <waterworks-supply.com>, <waterworkssupply.com>, <oil-meters.com>, <water-main.com>, <water-depot.com>, <bestwaycorp.com>, <dockseal.com>, <badgermeters.com>, <herseymeter.com>, <kentmeter.com>, <neptunemeter.com>, <neptunemeters.com>, <pipelocator.com>, <printsforless.com>, <rockwellmeter.com>, and <rockwellmeters.com>.
5. Partiesí Contentions
A. Complainant requests that the Domain Names be transferred to it on the following grounds:
1. that Complainant owns the trademarks, CARLON and CARLON METER,
2. that Respondent subsequently registered the Domain Names; and3. (i) that the Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith.
B. Respondent argues that Complainant has not established rights in the terms CARLON and CARLON METER. Respondent further argues that, as a distributor of Complainantís products, it has rights or a legitimate interest in the Domain Names because it uses the Domain Names as part of its business of distributing Complainantís products, and that Complainant has not established that Respondentís use of the Domain Names is in bad faith.
6. Discussion and Findings
The Panel initially determines that it will exercise its discretion to consider Respondentís Response, although it was submitted after the due date and without adequate basis for belated submission.
Based upon a review of Complainantís and Respondentís submissions, the Panel finds that Complainant has trademark rights in CARLON and CARLON METER, and that the Domain Names are identical or confusingly similar to the trademarks in which the Complainant has rights. Respondentís arguments that Complainant has failed to establish its trademark rights are, at best, disingenuous in light of Respondentís argument that "Because Respondentís [sic] is a bona fide, authorized distributor of Complainantís products, there is an absolute right to use the trademark in the marketing and sale of Complainantís products." (Response, p. 10)As to Respondentís rights or legitimate interests in respect of the Domain Names, Respondent claims its absolute right to use the trademarks in the conduct of its business as a distributor also encompasses a right to use the trademarks as domain names. The Panel does not find this argument persuasive. According to the allegations in the Complaint and the public records available from WHOIS databases, Respondent has registered a large number of domain names incorporating the names of various manufacturers of water meters (other than Complainant). In the absence of any evidence from Respondent that it is authorized to use the trademarks of other manufacturers of water meters, it appears that Respondent is making a business use of Complainantís trademarks, as well as the trademarks of other manufacturers, in a manner which demonstrates an intent to "misleadingly divert consumers". (Policy, paragraph 4(c)(iii)) Respondent may well be an important distributor of Complainantís products, but its right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the Domain Names in a manner which links them to Respondentís web site. The Panel finds that Respondent has not demonstrated rights or legitimate interests to the Domain Names for purposes of Paragraph 4(a)(ii) of the Policy. The Panel further finds that Respondentís registration and use of the Domain Names is in bad faith within the meaning of Section 4(b) of the Policy, which provides, in part, that it is evidence of bad faith if a Respondent has "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 [the Respondent has] engaged in a pattern of such conductÖ.;" The Panel finds that the use of CARLON in the two separate Domain Names, as well as the use of other partiesí trademarks in other domain names, constitutes such a pattern.
Pursuant to paragraphs 4 (i) of the Policy, and 15 of the Rules, the Panel directs that the Domain Names <carlonmeter.com> and <carlonmeters.com> be transferred to Complainant.
David W. Maher
Dated: July 30, 2002