WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2003 >> [2003] GENDND 300

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

Leader Industries, a division of HalcoreGroup, Inc. v. Digital Kansas [2003] GENDND 300 (26 March 2003)


National Arbitration Forum

DECISION

Leader Industries, a division of Halcore Group, Inc. v. Digital Kansas

Claim Number: FA0302000144590

PARTIES

Complainant is Leader Industries, a Division of Halcore Group, Inc., Grove City, OH (“Complainant”) represented by Kevin A. Bowman, of Sebaly Shillito + Dyer.  Respondent is Digital Kansas, Hutchinson, KS (“Respondent”) represented by Wade Kerrigan, of Blackwell Sanders Peper Martin LLP.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leaderambulance.com>, registered with Bulkregister.Com, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

The Honorable Daniel B. Banks, Jr. (Ret.), Jeffrey M. Samuels and David Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 3, 2003; the Forum received a hard copy of the Complaint on February 6, 2003.

On February 4, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <leaderambulance.com> is registered with Bulkregister.Com, Inc. and that the Respondent is the current registrant of the name.  Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. 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 February 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 10, 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@leaderambulance.com by e-mail.

A timely Response was received and determined to be complete on March 10, 2003.

On March 17, 2003, the Forum received a timely additional submission from Complainant.

On March 20, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, David Sorkin and Daniel B. Banks, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant:

In its initial complaint, Complainant alleges that  "Leader Ambulance" is a well-established trademark, which is owned by Leader Industries, a division of Halcore Group, Inc.  Leader Industries specializes in Type II ambulances, wheelchair cars and executive coach transportation.  Leader Industries has owned and used the registered domain name "leader-ambulance.com" since at least 1999.  In September 2002, Digital Kansas, on behalf of Wheeled Coach, registered and began using the domain name <leaderambulance.com>.  Wheeled Coach is a manufacturer of ambulances. 

Complainant further alleges that "Leader Ambulance" is a well-established trademark for products and services associated with Leader Industries and is a registered trademark with the State of California and Texas.  Neither Digital Kansas nor Wheeled Coach has ever been commonly known by, used or ever demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

The domain name was registered in bad faith and patently infringes upon Leader Industries' established rights in the name "Leader" within the emergency-vehicle industry.  The domain name is intentionally confusing and directly imitates the trademarked name "Leader Ambulance."  Complainant has registered the domain name for the purpose of disrupting the business of Leader Industries and has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location of a product or service on Respondent's website or location. 

B. Respondent:

Respondent, Digital Kansas, operates the domain name <leaderambulance.com> for Wheeled Coach Industries.  Respondent has attempted to transfer the domain name to Wheeled Coach Industries but the account is frozen and transfers are not permitted pending the current dispute.

Respondent first argues that the Complaint must fail because Complainant cannot establish rights in its alleged mark "Leader Ambulance."  Complainant has offered no evidence of ownership to the mark and in fact, makes a false claim that it has registered the mark with the States of California and Texas.  To the contrary, that mark is not a registered trademark in either California or Texas.  (Respondent's Exhibits A and B are certificates from California and Texas indicating that the mark is not registered in either State.)

The mark is not registered with the U.S. Patent and Trademark Office and Respondent is not aware of any registration of the mark in any jurisdiction. 

Respondent submits that the reason the mark is not registered by Complainant or anyone else is likely due to the fact that the mark is descriptive, if not generic, and incapable of registration. 

Respondent is the leader in the ambulance market and Complainant also sells ambulances.  The fact that Complainant uses the word "Leader" in its corporate name does not give Complainant exclusive rights in the mark "Leader Ambulance."

In order to claim common law rights in the mark, Complainant would have to show evidence of use of the mark.  Under common law, trademark ownership rights are "appropriated only through actual prior use in commerce."  Tally-Ho, Inc. v. Coast Cmty College Dist., 889F.2d 1018, 1022 (11th Cir 1989).

Complainant cannot, and has not, shown any evidence of use of the mark.  The only evidence offered at all is its registration of the domain name "leader-ambulance.com."  And a search of that website reveals that Complainant does not use the mark "Leader Ambulance" on a single occasion on its website or in connection with the sale of goods.  Complainant does not use the mark in commerce and has not shown sufficient evidence to establish common law rights in the mark.

Respondent has rights and legitimate interests in the domain name <leaderambulance.com>.  First, Respondent used the domain name and made demonstrable preparations to use the name in connection with a bona fide offering of goods and services before notice of this dispute.  Respondent registered the name in September 2002, and has since continuously used the domain name to advertise and offer a wide variety of information concerning Respondent's goods and services.  Respondent sells, among other things, emergency vehicles, including ambulances, and uses the domain name to promote its goods and services, offer useful information to its customers, and convey to its customers that it is the leader in the ambulance market.  Respondent received notice of this dispute in February 2003, more than five months after registration and use of the disputed domain name.  Respondent is making a fair use of its domain name without intent to misleadingly divert customers or to tarnish the trademark at issue.  Respondent's use of the name remains independent of any connection with Complainant and does not misleadingly divert customers from Complainant.  Respondent's use of the domain name does not tarnish the trademark at issue because Complainant has no rights in the mark "Leader Ambulance" and because Respondent is making a fair use of the domain name.

Complainant's allegation that Respondent has no rights or legitimate interests in the domain name consists entirely of two statements; (1) that Respondent has never been known by the domain name, which is true, and (2) that Respondent has never used or demonstrated preparations to use the domain name in connection with a bona fide offering of goods or services, which is absolutely false.

Complainant has not demonstrated that Respondent registered the domain name in bad faith.  There is no allegation that it was registered for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or a competitor.  There is no allegation that the domain name was registered in order to prevent Complainant from reflecting any of Complainant's trademarks in the corresponding domain name. 

Complainant's allegations of bad faith center on Complainant's assertion that the domain name is intentionally confusing to Complainant's alleged trademark and that Respondent registered the allegedly confusing domain name to disrupt Complainant's business and to attract Internet users from Complainant's website.  These allegations must fail for two reasons.  First, Complainant has not established rights in the mark "Leader Ambulance."  Second, even if Complainant has rights in the mark, Respondent has shown that it has a legitimate interest in the domain name. 

Complainant asserts, without support or evidence of any kind, that the domain name is causing confusion and that Respondent is using the domain name for the purpose of disrupting Complainant's business.  Complainant has not offered sufficient proof of bad faith to warrant a transfer of the domain name.

C. Additional Submissions:

COMPLAINANT:

Complainant submits documents in support of its claimed use of the mark "Leader Ambulance."  These documents include the affidavit of Gary Hunter, President of Leader Industries; business registration information from California and Texas showing use of the name Leader Industries; excerpts from the Leader Industries website; examples of companies that have registered the word "Leader" with the U.S. Patent and Trademark Office; and the trademark-recognition survey of the mark "Leader Ambulance."

As set forth in the affidavit of Gary Hunter, the business registration forms from California and Texas and the excerpt from the website for Leader Industries, the "Leader," "Leader Ambulance" and "Leader Industries" marks have been uninterruptedly used in commerce since 1975, in connection with the manufacture and sale of ambulances.  Wheeled Coach Industries, for which Respondent operates the disputed domain name, is a longtime competitor of Leader Industries and was aware of Leader Industries' trademark and nearly identical domain name before registration of Respondent's <leaderambulance.com>.

Complainant submits that its original statement that it registered its trademark in California and Texas was a mistake.  Leader Industries in fact registered to do business with these states under the name Leader.  There was no attempt to mislead the panel as Respondent maintains.

Contrary to Respondent's assertions, the "Leader" mark is used throughout the Leader Industries website and the "Leader Ambulance" mark is used therein relating to the sale and promotion of its ambulances.  The home page of Leader Industries website greets visitors with "Leader Emergency Vehicles."  From this page, a visitor can select the specific vehicle-category in which he or she is interested.  This selection includes Ambulances.  Therein, Leader Industries specifically refers to its ambulances as "Leader Ambulances."  Furthermore, Leader's trademark rights are guaranteed under Sections 43(a) and (d) of the Federal Lanham Act, 15 U.S.C. Section 1125(a), (d), which guarantee rights in both registered and unregistered trademarks against infringement and bad-faith registration of domain names.

The marks "Leader Industries" and "Leader Ambulance" are neither generic nor descriptive.  In fact, the U.S. Patent Office has registered a myriad of marks using the term "Leader."  And, even if the mark were descriptive, Leader's continuous use of that mark since 1975 would be more than ample evidence of secondary meaning.

Respondent registered its domain name in bad faith.  It directly imitates Complainant's mark, is unquestionably designed to divert traffic from Complainant's to Respondent's website, and is obviously intended to disrupt Complainant's business.

RESPONDENT:

Complainant bases its Complaint solely on the mark "Leader Ambulance."  However, in its Additional Submission, Complainant attempts to amend its Complaint to broaden the scope of the panel's analysis by asserting alleged rights in the marks "Leader" and "Leader Industries."  This attempt to amend is improper under NAF Supp. Rule 7 (d).  As a result, the panel should disregard all references to alleged rights in "Leader" or "Leader Industries."

Complainant has not met its burden of proof that it has rights in the trademark or service mark "Leader Ambulance."  The mark is not registered with the U.S. Patent and Trademark Office and Complainant does not own any other state registrations for the mark.  And, Complainant stated that its rights in the trademark "Leader" and  "Leader Ambulance" are not common-law rights.  Apparently Complainant is basing its Complaint on the Federal Lanham Act, which guarantees rights in both registered and unregistered trademarks against infringement and bad-faith registration of domain names.  It is true that the Lanham Act provides a civil cause of action for trademark owners; however, it is not true the Lanham Act provides Complainant with rights in the mark since Complainant does not claim common law rights and does not own a registration of the mark.

Complainant has submitted evidence that it has registered and used the trade name "Leader Industries" in both California and Texas for some time.  However, the trade name "Leader Industries" is not at issue.  Complainant offers no evidence of secondary source identification and offers no new evidence that Respondent has no rights or legitimate interests in the domain name at issue.

           

FINDINGS

1. The Respondent’s disputed domain name <leaderambulance.com> is identical 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.

3. The Respondent registered and used the domain name in bad faith.

 

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 <leaderambulance.com> is identical to the trademark or service mark of the Complainant.  It is undisputed that Complainant has been using this mark since 1975.  Although Complainant is incorporated as "Leader Industries", it has used the mark "Leader Ambulance" in connection with its ambulance division since 1975.  As such, the Panel concludes that Complainant has established common law rights in the mark pursuant to Policy 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the UDRP Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The disputed domain name is identical because it merely deletes the space between the words "Leader Ambulance" and adds the generic top-level domain ".com" to the end of the mark.  Neither of these sufficiently distinguish Respondent's domain name from Complainant's mark.  See Wembley Nat'l Stadium Ltd. V. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.nte> is identical to the WEMBLEY STADIUM mark); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant's registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Rights or Legitimate Interests

The Panel finds that Respondent does not have any rights or legitimate interests in the <leaderambulance.com> domain name.  It is a confusingly similar domain name to Complainant's mark to sell competing goods, which is not a bona fide offering of goods or services pursuant to Policy 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).  See Ticketmaster Corp. DiscoverNet, Inc. D2001-0252 (WIPO Apr.9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's website to a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec.11, 2000) (finding that "It would be unconscionable to find a bona fide offering of services in a respondent's operation of a website using a domain name that is confusingly similar to the Complainant's mark and for the same business").

Furthermore, Respondent has never been and is not now commonly known by Leader Ambulance.  As such, the panel finds Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy 4(c)(ii).  See Gallup Inc. v. Amish County Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

         

            Registration and Use in Bad Faith

           

The Panel concludes that Respondent has registered and is using the domain name for the purpose of disrupting the business of Complainant and to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or of product or service on Respondent's website.  Both of these purposes are evidence of bad faith registration and use pursuant to Policy 4(b)(iii).  Given the competitive relationship between Complainant and Respondent, the Panel finds that Respondent registered the contested domain name with the intent to disrupt Complainant's business and create user confusion.  See Surface Protection 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).

Also, Respondent is creating a likelihood of confusion with Complainant's mark because the parties provide substantially the same goods and services and are direct competitors.  This use constitutes bad faith pursuant to Policy 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr.22m 2000) (finding bad faith where Respondent attempted to attract customers to its website and confusion by offering similar products for sale as Complainant).

DECISION

Having established all three elements required under ICANN Policy, the Panel unanimously concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <leaderambulance.com> domain name be TRANSFERRED from Respondent to Complainant.

Daniel B. Banks, Jr., Panel Chairman

Professor Jeffrey M. Samuels, Panelist

Professor David Sorkin, Panelist


Dated: April 2, 2003


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/300.html