WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S & H Enterprises, Inc. DBA Nationwide Lifts v. Elevator Marketing Group
Case No. D2013-1088
1. The Parties
Complainant is S & H Enterprises, Inc. DBA Nationwide Lifts of New York, New York, United States of America (“US”), represented by White-Welker & Welker, LLC, US.
Respondent is Elevator Marketing Group of Clovis, California, US.
2. The Domain Name and Registrar
The disputed domain name <nationwidelifts.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Response was filed with the Center on July 15, 2013.
The Center appointed Mark Partridge as the sole panelist in this matter on July 23, 2013. 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.
In accordance with the Rules, paragraph 12 and 17, on August 14, 2013, the Panel requested that Complainant make additional submissions consisting of competent evidence showing Complainant’s ownership of valid trademark rights in the name and mark NATIONWIDE LIFTS prior to February 12, 2004, and additional points and authorities specifically supporting Complainant’s claim that the disputed domain name was registered in bad faith. The due date for Complainant’s Response to the Request was August 26, 2013. The due date for Respondent’s Response to Complainant’s Submission was September 6, 2013. Complainant proffered additional submissions to the Center on August 26, 2013 including a response brief to the procedural order and ten supporting business documents. Respondent submitted additional documents on September 6, 2013, including a response brief and three supporting documents.
4. Factual Background
Complainant does business in selling elevators, elevator-related goods, and elevator installation under the assumed business name Nationwide Lifts, a part of Complainant’s previously existing company, S & H Enterprises.
Complainant owns the US federal trademark registrations:
NATIONWIDE LIFTS: Reg. No. 2,962,691, registered on the Supplemental Register on June 14, 2005, with a filing date of August 18, 2004, for elevator and dumbwaiter installation, maintenance, and repair. The claimed date of first use is May 2003.
NATIONWIDE LIFTS: Reg. No. 4,153,949, registered as a Principal Register on June 5, 2012, with a filing date of October 11, 2011, for elevator and dumbwaiter installation, maintenance, and repair. The claimed date of first use is May 2003.
Complainant acquired the domain name <elevette.com> on May 7, 2003, reflecting Complainant’s primary product at the time.
Respondent registered the disputed domain name <nationwidelifts.com> on February 12, 2004.
Between Respondent’s registration of the disputed domain name in February 2004 and June 2006, the disputed domain name resolved to a web page with an “under construction” notice. In June 2006, the URL “www.nationwidelifts.com” began redirecting to the URL “www.abbeyaccess.com”. Respondent’s previous elevator sales company is Abbey Access, which operates in California, as does Nationwide Lifts.
Complainant sent a letter to Respondent on August 18, 2006 requesting that Respondent discontinue use of the disputed domain name. Beginning around September 2006, the disputed domain name began to redirect to the URL “www.naers.com”. Subsequently, between October 2006 and October 2011, the disputed domain name was “parked” and remained inactive during this time.
Again in October 2011, the URL “www.nationwidelifts.com” began redirecting to URL “www.naers.com”. Complainant once again contacted Respondent on multiple occasions requesting that Respondent discontinue use of the disputed domain name.
The disputed domain name status as of June 21, 2013 indicates that “www.nationwidelifts.com” was “Moved Permanently” to “http://naers.com”, as evidenced in the case file. Additionally, the reverse redirection information for “http://naers.com” is the disputed domain name.
5. Parties’ Contentions
Complainant submits that it has both trademark and common law rights in the NATIONWIDE LIFTS trademark and has been using this mark in commerce since May 2003.
Complainant submitted a number of documents in response to Procedural Order No.1 which requested additional evidence showing Complainant’s ownership of valid trademark rights in the name and mark NATIONWIDE LIFTS prior to February 12, 2004 and additional points and authorities specifically supporting Complainant’s claim that the disputed domain name was registered in bad faith.
Complainant contends that the disputed domain name is identical to Complainant’s registered NATIONWIDE LIFTS mark; that Respondent is providing infringing services through the disputed domain name as Respondent has no rights or legitimate interests in the disputed domain name; and that Respondent’s pattern of behavior in acquiring and maintaining the disputed domain name indicates that Respondent registered and continually used it in bad faith.
Respondent contends the disputed domain name, which redirects to “www.naers.com”, does not create a high degree of similarity between Respondent’s and Complainants’ respective products and services because the domain name allows the consumer to merely view a database of information on multiple companies, rather than information on individual elevator sales.
Respondent further submits Complainant does not have rights in the mark NATIONWIDE LIFTS because on June 14, 2005, Complainant initially registered its mark with the USPTO under a supplemental registration. Respondent argues that it acquired the disputed domain name on February 12, 2004, before Complainant filed as a business in New York on August 25, 2004 and even before Complainant applied for their trademark on August 18, 2004.
Finally, Respondent argues that it could not have registered and used the disputed domain name in bad faith because it had no knowledge of Complainant’s mark when it registered the disputed domain name in February 2004. Respondent specified that Complainant did not proffer any evidence that Respondent was aware of Complainant as of the date of registration.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant trademark rights are demonstrated by its US registration of the mark NATIONWIDE LIFTS (Reg. No. 4,153,949), with an effective priority filing date of October 11, 2011.
The disputed domain name is identical in material part to Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. As discussed more fully below, however, the Panel finds that the disputed domain name was registered before Complainant obtained rights in the mark at issue.
B. Rights or Legitimate Interests
According to the case record, Respondent does not appear to be known by the name Nationwide Lifts, nor is it authorized by Complainant to use the name. Respondent did not make actual use of the disputed domain name for a period of five years between 2006 and 2011 when Respondent had the site “parked”. Respondent did not conduct business through the disputed domain name, instead he used it merely as a site that would redirect to his own website, “www.naers.com”, when consumers visited the disputed domain name.
Accordingly, the Panel finds Respondent lacks any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The more difficult question is whether the disputed domain name was registered in bad faith.
Complainant states that the prior company of Respondent, known as Abbey Access, was a direct competitor of Nationwide Lifts in California. Respondent states that he was unaware of Complainant at the time it registered the disputed domain name.
Respondent registered the disputed domain name in February 2004, before Complainant filed its first application for trademark registration. Although Complainant claims use back to May 2003, use alone is not sufficient to establish trademark rights. Complainant must also prove that “Nationwide Lifts” was distinctive and functioned as a trademark. To prove bad faith registration, Complainant has the burden of proving that it had trademark rights prior to Respondent’s registration of the disputed domain name and that Respondent knew of Complainant’s mark before it registered the disputed domain name.
Since the mark was not the subject of a federal registration prior to registration of the disputed domain name, Complaint must show that it had acquired common law rights in the mark prior to February 2004.
In an effort to show trademark rights before February 12, 2004, Complainant submitted a “Sales Funnel Report” showing a number of sales of dumbwaiters, lifts, and elevettes as early as June 27, 2003. Complainant additionally proffered a New York state document dated July 29, 2003 certifying that S & H Enterprises, Inc., Complainant’s corporation, filed a Certificate of Assumed Name to conduct business under the assumed name “Nationwide Lifts”.
Complainant’s additional submissions included: screenshots of web pages and web traffic analysis pages demonstrating Complainant’s use of the site “www.elevette.com” beginning on June 2, 2003; an unpaid, unsigned “invoice” indicating the sale of a dumbwaiter on October 8, 2003; an unsigned, undated employee invention assignment, non-disclosure, and non-compete agreement; an unsigned letter from Nationwide Lifts offering the recipient of the letter the position of West Coast Sales Representative on October 31, 2003; and an examination agreement dated December 11, 2003 that was signed by Nationwide Lifts’ representative but was not signed or filled out in any manner by the agreement’s purchaser.
The Panel agrees that the evidence shows use of the name Nationwide Lifts as early as June 2003, but concludes that Complainant has failed to show trademark rights prior to February 12, 2004. At best, the name Nationwide Lifts was in use for less than a year prior to Respondent’s registration of the disputed domain name. The name is an apt description for the services of both companies and was deemed to be merely descriptive and not entitled to trademark rights in 2005 at the time the mark was refused registration on the Principal Register and placed instead on the Supplemental Register. Typically, secondary meaning may be found after five years of use of a descriptive mark, but it would take evidence of exceptional use to establish secondary meaning in less than a year. There is no such evidence here. Here, the evidence of use in a manner that would create public awareness of the mark is minimal.
In some instances, acquired distinctiveness may be shown by an intentional attempt to trade on the rights of another. Complainant, however, did not submit any evidence or particular facts demonstrating that Respondent was aware, or should have been aware, of Complainant, Complainant’s business, or Complainant’s mark. Complainant merely alleges in its Response to Procedural Order No. 1 that Respondent, as Abbey Access, was a direct competitor of Nationwide Lifts in 2004 and remains a competitor of Nationwide Lifts. There is no evidence in the record to indicate that Respondent was, or should have been, aware of Complainant. Respondent denies prior knowledge of Complainant or its claimed mark.
Given that “Nationwide Lifts” is an apt descriptive term for its services, it is plausible that Respondent registered the disputed domain name due to its descriptive utility and not as an attempt to trade on or disrupt Complainant’s business. Complainant has not made a sufficient showing here to tip the scale in its favor on this point.
In conclusion, Complainant has not met its burden in proving that Respondent was, or should have been, aware of Complainant and Complainant’s mark. Moreover, Complainant has not met its burden of proving trademark rights prior to registration of the disputed domain name. Accordingly, Complainant has failed to prove bad faith registration, one of the necessary elements of its claim.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, Complainant request for transfer of the disputed domain name is denied.
Date: October 1, 2013