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General Steel Domestic Sales LLC, d/b/aGeneral Steel Corporation v. [2003] GENDND 226 (4 March 2003)


National Arbitration Forum

DECISION

General Steel Domestic Sales LLC, d/b/a General Steel Corporation v.

LR Malinuwskii d/b/a and or a/k/a generalsteel.com

Claim Number: FA0301000140653

PARTIES

The Complainant is General Steel Domestic Sales LLC, d/b/a General Steel Corporation, Lakewood, CO, USA (“Complainant”) represented by David S. Fien, of David S. Fein, P.C.  The Respondent is LR Malinuwski, d/b/a and/or a/k/a generalsteel.com, Golden, CO, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <generalsteel.com>, registered with DomainDiscover.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as a panelist in this proceeding.

Linda M. Byrne, Esq. as Panelist.

PROCEDURAL HISTORY

The Complaint was submitted by Complainant and received by the National Arbitration Forum (“the Forum”) on January 13, 2003.

On January 14, 2003, DomainDiscover confirmed by e-mail to the Forum that the domain name <generalsteel.com> is registered with DomainDiscover and that Respondent is the current registrant of the name.  Respondent is bound by the DomainDiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@generalsteel.com by e-mail.

A timely response was received and determined to be complete on February 4, 2003.

On February 17, 2003, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's Domain Name <generalsteel.com> is identical or confusingly similar to its trademark GENERAL STEEL CORPORATION; that Respondent does not have any right or legitimate interest in respect of the infringing Domain Name <generalsteel.com>; and that the infringing Domain Name <generalsteel.com> was registered by Respondent in bad faith and is being used in bad faith.

B. Respondent

Respondent denies the allegations of the Complaint, and contends that Complainant has no rights to the descriptive term GENERAL STEEL.  Respondent contends that it has a legitimate interest in using <generalsteel.com>.  Respondent further contends that it did not register the Domain Name <generalsteel.com> in bad faith and that it does not intend to use the Domain Name <generalsteel.com> to sell products that compete with those of Complainant. 

FINDINGS

Complainant has registered the trademark GENERAL STEEL CORPORATION (with Design) in the United States (U.S. Registration No. 2,668,226).  Complainant has been using the mark GENERAL STEEL CORPORATION since 1995 for prefabricated, portable metal buildings.  Complainant spends millions of dollars per year marketing and advertising its name and pre-fabricated steel building products.  Complainant is one of the United States' leading distributors of pre-fabricated steel buildings.  The above facts are not disputed by Respondent.  Complainant operates a website at  <gensteel.com>.

Respondent is an employee of Sunward Corporation.  Respondent indicates that Sunward Corporation sells, or intends to sell, oil well pumping units and heavy steel.  Although not specifically indicated by Respondent, Sunward (or an affiliated company) also sells metal buildings.  Sunward Corporation owns a U.S. federal trademark for SUNWARD in connection with steel buildings and components thereof (U.S. Reg. No. 1,117,555).  Respondent represents the Wedgcor Group, an entity affiliated with Sunwood Corporation and an entity in direct competition with Complainant and its products. 

In the fall of 2002, Respondent purchased the domain name <generalsteel.com>.  The domain name was officially transferred to Respondent on October 18, 2002.  On December 16, 2002, Complainant contacted Respondent and requested that the domain name <generalsteel.com> be transferred and/or sold to Complainant.  The Respondent informed Complainant that the domain name <generalsteel.com> was not in use and declined to sell it to Complainant.  Two days later a website was activated at the domain name <generalsteel.com>.  The website was only active for a short period.  The content of the website included a statement that <generalsteel.com> was the "Internet's Complete Source for Factory Direct Wholesale Metal Buildings."  However, the website did not identify Respondent or Respondent's employer, nor did the website contain any active hypertext links. 

On December 26, 2002, Respondent, through its attorney, advised Complainant that it does not intend to use the domain name <generalsteel.com> to sell products that compete with those sold by Complainant.  Respondent's attorney advised Complainant that the brief operation of the website at <generalsteel.com> was a mistake and that Respondent only intended to test the functionality of the site and its server connection.  Respondent's attorney also indicated that it will not use the domain name <generalsteel.com> to divert traffic from Complainant or otherwise cause consumer confusion.  Finally, Respondent's attorney alluded to the existing bad relationship between the Complainant and Respondent by noting that a number of other legal issues "could be sparked by the filing of a complaint."  

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar

The domain name <generalsteel.com> uses Complainant’s GENERAL STEEL CORPORATION mark minus the term "corporation."  The mere addition or deletion of descriptive or generic words to or from a trademark, however, does not eliminate the similarity between the domain name and the trademark.  See Cux, Inc. v. DomainNamesAvailable, D2000-0972 (WIPO Sept. 27, 2000) (finding that the domain name "corporateuniversityxchange.com" is confusingly similar to the mark CORPORATE UNIVERSITY XCHANGE, INC. "); Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the domain name "magnumpieringinc.com" is confusingly similar to the mark MAGNUM PIERING since it merely adds the generic term "INC" to the mark).  Like the term "Inc.," the term "Corporation" is generic and the mere deletion of that term does not eliminate the confusing similarity between a trademark and a domain name.

Moreover, the respective goods and services of Complainant and Respondent are highly related.  They sell competing steel products.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that "likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry"). 

Accordingly, this panel finds that the domain name <generalsteel.com> is confusingly similar to the Complainant's registered mark GENERAL STEEL CORPORATION.

Rights or Legitimate Interests

Respondent contends that "Respondent's interest in owning the descriptive or generic domain <generalsteel.com> is at least as legitimate as those of Complainant and of a multitude of third parties who might sell steel, steel products, or use "general steel" in their trade name or as a trademark for their goods."  This argument is without merit for several reasons.

In its context of Complainant's trademark, the term "GENERAL STEEL" is not merely descriptive or generic.  Complainant has used its registered mark "GENERAL STEEL CORPORATION" since 1995, and U.S. trademark law presumes that the mark has acquired distinctiveness during this period of use.  As Respondent has pointed out, Complainant's federal trademark registration of GENERAL STEEL CORPORATION disclaims the use of the words "STEEL CORPORATION."  Although this disclaimer is evidence that the U.S. Trademark Office considered "STEEL CORPORATION" to be merely descriptive, the disclaimer does not mean that the U.S. Trademark Office considers the words "GENERAL STEEL" to be merely descriptive.  If the disputed domain name was <steelcorporation.com>, then this Panel may have concluded that the term is merely descriptive or generic.  However, the domain name is <generalsteel.com> and the term GENERAL was not disclaimed in the registration of GENERAL STEEL CORPORATION.  In view of Complainant's trademark rights, Respondent's sale of steel products does not give Respondent the right to identify itself with the mark GENERAL STEEL. 

Moreover, Respondent does not contend that it has used the mark GENERAL STEEL in its trade name or as a trademark for its goods.  Nor does Respondent contend that it has obtained a license from Complainant to use the mark GENERAL STEEL or GENERAL STEEL CORPORATION.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by mark); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and did not receive permission from Complainant to use the trademarked name).

Respondent cannot make a bona fide offering of goods and services when any use of the domain name by Respondent would cause consumer confusion.  See, e.g., I.C. Investigations Canada v. J.V. Bennett, FA 127707 (Nat. Arb. Forum Dec. 9, 2002)(no bona fide use where Respondent uses a domain name that is confusingly similar to Complainant's mark and operates within the same industry as Complainant).

Unauthorized commercial use of Complainant's mark does not constitute any rights or legitimate interests in the <generalsteel.com> domain name under Policy ¶¶ 4(c)(i) and (iii).  See Vapor Blast Mfg. Co. v. R & S Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

This Panel concludes that the Respondent has not established rights or legitimate interests in the <generalsteel.com> domain name.

Registration and Use in Bad Faith

Respondent alleges that to date, no use has been made of the domain name other than "a benign test use."  Respondent alleges that its future commercial use of the domain name will not be in association with products that compete with Complainant's product line. Respondent asserts that it intends to sell heavy steel in connection with an oil well pumping equipment business, i.e., steel that is too heavy for use in Complainant's metal buildings.

Complainant asserts that Respondent's registration and use of the subject domain name illustrates that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant; thus, Respondent's actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Art. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant's business).

Complainant and Respondent are competitors.  Complainant's president is a former employee of the company associated with Respondent, and the relationship between Complainant and Respondent has been antagonistic.  Respondent cannot contend that it was unaware of Complainant's use of the mark GENERAL STEEL CORPORATION.  See Aloe Vera of Am. v. Norins, FA 97291 (Nat. Arb. Forum July 3, 2000)(given Respondent’s former employment by Complainant, he was obviously aware of Complainant’s mark upon registering the domain name); William Hill Org. v. Fulfillment Management Servs., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use, even though no pattern of conduct existed, where Respondent's employee must have had the Complainant's trademarks in mind when choosing the disputed domain name); Inverlink Consultores S.A. v. BESA, S.A., FA 97387 (Nat. Arb. Forum July 23, 2001) (the fact that Respondent was a former employee of Complainant evidences that the registration and use of the disputed domain name was in bad faith).  Respondent's use of the domain name was to promote "metal buildings," which is Complainant's product line.

Based on these facts, the only plausible explanation is that Respondent registered the disputed domain name in order to gain customers from Complainant and/or to disrupt Complainant’s business.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (use of domain name comprised of Complainant's mark to divert consumers to a web site that promotes competing goods is evidence of bad faith); EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (use of Complainant's mark in domain name disrupts Complainant's business and constitutes bad faith); Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business). 

Respondent has used the domain name <generalsteel.com> in bad faith, although the Respondent currently has no operational website at <generalsteel.com>.  As noted above, Respondent has used the domain name in connection with the sale or advertisement of the same kind of goods that Complainant sells.

The Panel concludes that Complainant has provided sufficient proof of its allegations for all elements under paragraph 4(a) of the Policy so as to establish a prima facie case upon which the relief it now seeks can be granted.


DECISION

It is the decision of this Panel that the Domain Name at issue, <generalsteel.com>, be TRANSFERRED from Respondent to Complainant.

Linda M. Byrne, Esq.

Arbitrator
Dated: March 4, 2003


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