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Generic Top Level Domain Name (gTLD) Decisions |
C-Line Products, Inc. v. Ralco Consulting
c/o Robert Lebeaux
Claim Number: FA0308000187608
PARTIES
Complainant
is C-Line Products, Inc., Mt.
Prospect, IL (“Complainant”) represented by David C. Brezina, Esq. and Vladimir Khodosh, Esq., of Barnes & Thornburg.
Respondent is Ralco Consulting c/o Robert Lebeaux, Lincoln, RI (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The
domain name at issue is <c-line.com>,
registered with Register.Com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his knowledge has no known conflict
in serving as Panelist
in this proceeding.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 20, 2003; the Forum received
a hard copy of the
Complaint on August 25, 2003.
On
August 21, 2003, Register.Com confirmed by e-mail to the Forum that the domain
name <c-line.com> is
registered with Register.Com and that the Respondent is the current registrant
of the name. Register.Com has verified
that Respondent is bound by the Register.Com 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
September 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 23, 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@c-line.com by e-mail.
A
timely Response was received and determined to be complete on September 23,
2003.
On
August 20, 2003, Complainant made a timely Additional Submission. On October 7, 2003, Respondent made an
Additional Submission which was untimely because of the Forum’s Supplemental
Rule No. 7. Nevertheless, the
Additional Submission was considered by the Panelist.
On October 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant,
C-Line Products, Inc. (“C-Line”) is an Illinois corporation, having its
principal place of business in Mt. Prospect,
Illinois. Complainant has been in the office supply
business for over fifty years.
2. The
disputed domain name is <c-line.com>.
3. The
Complaint is based upon Complainant’s well-known mark, C-LINE.
4. Complainant has been using its mark,
C-LINE, in connection with its office supply business since the mid
1960’s. Complainant generally sells a
wide variety of office supplies including binders, sheet protectors, labels and
stationery items, as
well as desk accessories.
5. In
connection with its office supply business, Complainant obtained eight federal
trademarks from the United States Patent and Trademark
Office for its C-LINE
marks. The first trademark was issued
in 1952; two other trademarks were issued in 1971, one in 1984, two in 1991,
and two in 2000. Some of these
registrations are now incontestable in accordance with Sections 15 and 33(b) of
the Lanham Act, codified in U.S.C. Sections
1065 and 1115(b).
6. On
January 12, 1996, Respondent registered the disputed <c-line.com> domain name with the intent to (a) prevent
Complainant from utilizing the <c-line.com>
domain name with its business; (b) disrupt Complainant’s business; and (c) sell
the domain name to Complainant.
7. By
virtue of Complainant’s federal registrations, Respondent was put on
constructive notice of Complainant’s rights to the C-LINE
mark prior to
Respondent’s registration of <c-line.com>. Respondent has been placed on actual notice
of such rights by Complainant prior to Complainant instituting this
administrative proceeding.
8. The
disputed domain name is almost identical to the C-LINE trademark. The only difference is the “.com” ending,
which does not distract from its similarity to C-LINE’s trademark.
9. The
hyphen in “C-LINE” is an unusual spelling of a company name. Respondent’s registration uses the
hyphen. Such use of a hyphen infers
Respondent’s selection was made to intentionally copy the C-LINE name, not for
some other reason.
10. Respondent
has no rights or legitimate interest in the <c-line.com> domain name.
The disputed domain name bears no relationship to any legitimate
business of Respondent, and Respondent is not commonly known by Complainant’s
marks.
11. Respondent
has not made any use of, or demonstrable preparations to use, the disputed
domain name or name corresponding to the disputed
domain in connection with any
bona fide offering of goods or
services. As of the date the Complaint
was filed, the website was inactive.
12. Respondent’s
failure to put the disputed domain name to any legitimate use provides evidence
of bad faith.
13. Paragraph
4(b)(i) of the Policy provides that evidence of bad faith includes
circumstances indicating that the Respondent had registered
or acquired the
disputed domain name primarily for purposes of selling, renting, or otherwise
transferring the domain name registration
to the Complainant who is the owner
of the trademark or service mark, or to a competitor of that trademark or
service mark owner,
for valuable consideration in excess of documented
out-of-pocket expenses directly related to the domain name.
14. Complainant
offered Respondent $2,000 to purchase the disputed domain name and sent
Respondent a check for that amount.
Respondent refused to sell the disputed domain name for $2,000 after
receiving the check and demanded $3,000 for the disputed domain
name.
15. Respondent’s
only plausible reason for registering the <c-line.com>
domain name was for the purpose of selling, renting or otherwise transferring
it to another, for an amount of valuable consideration
in excess of
Respondent’s expenses. Three thousand
dollars is well in excess of documented out-of-pocket expenses directly related
to the disputed domain name.
B.
Respondent
1.
The
complete name of Complainant is C-Line Products, Inc. Its registered trademark as of October 31, 2000, Reg. No.
2,399,049, is C-Line Products, Inc.
2. It
currently has ownership of the domain name <c-lineproducts.com>, the
identical name of the company as listed in the local
business directory found
in online searches and their website address, <c-lineproducts.com>. The assertion that the only difference in
the <c-line.com> domain name and C-Line Products, Inc. trademark is the
“.com”, accordingly,
is false.
3. The
disputed domain name was registered in good faith with no knowledge of the
Complainant’s company, C-Line Products, Inc.
The disputed domain name <c-line.com> was obtained for
utilization in the marketing and identification of a new specialized line of
products being developed internally.
These products are to be marketed as Respondent’s C-line. Respondent’s product is a reinforced line of
its Polifil® thermoplastic resins and is no way connected with or similar to
the Complainant’s
business and services as designated on the C-Line Products,
Inc. website at <c-lineproducts.com> and with its C-Line Products,
Inc.
registered trademark.
4. The
disputed domain name was registered without knowledge of Complainant’s company
C-Line Products, Inc. It was unknown
until Respondent received an e-mail suggesting a trade for the domain name of <c-line.com>.
5. The
reason for this Complaint is a harassment to obtain the domain name <c-line.com>
due to Respondent’s refusal to sell the disputed domain name to C-Line
Products, Inc. C-Line Products, Inc.
offered to purchase the domain name <c-line.com> for $2,000 and
sent a check, which was refused. A
counter-offer of $3,000 was made to C-Line Products, Inc. based on the expenses
incurred. As expected, C-Line Products
refused to pay the $3,000 and ceased correspondence to obtain the <c-line.com>
domain. There is no evidence of any
malice or proof that Respondent intentionally attempted to gain from acquiring
this domain. The fact that Respondent
has had ownership of this domain since 1996 and has made no attempt to contact
or had any correspondence
prior to the Complainant’s e-mail of January of 2000
should be evidence of Respondent’s intention to utilize the domain name of <c-line.com>.
6. Respondent
never has sold a domain name and it has been solicited for this domain in the
past by a trucking company in its area, C-Line,
Inc as well.
C.
Additional Submission by Complainant
1. Respondent
acted in bad faith and with an intent to misappropriate the name <c-line.com>
because Respondent has not submitted a single exhibit or even a logical
explanation of why it might have any legitimate claim to
use <c-line.com>. General denials without support are
disfavored.
2. The
only factual issue submitted by Respondent diminishes Respondent’s credibility
with respect to bad faith. The argument
that Complainant sent a check to purchase the domain name for $2,000 and
Respondent’s later demanded $3,000, bears against
Respondent because
Respondent’s unsupported version of the facts, is misleading. The truth is that in fact Respondent backed
out of an agreement and sought to extort a higher price.
D. Additional Submission by Respondent
1. Complainant
continues to assert that Respondent sought to “extort a higher price” for a
“pirated domain name.” If this were
true, Respondent would have contacted C-Line Products, Inc. directly to sell
the domain name. It was C-Line
Products, Inc. who contacted Respondent seven years after the disputed domain
name was registered. Respondent
purchased this domain in 1996.
Respondent has never sold a domain in the past. Respondent admittedly made an initial offer
of $2,000 in good faith but after consulting with its accountant, the additional
taxes
to be paid on this transaction made it unbeneficial. A counter-offer of $3,000 was based on
expenses incurred and taxes that would have to be paid for this
transaction. The accusation that this
was a bait and switch scheme is completely unfounded and inflammatory. Respondent’s companies are multifaceted and
it prides itself on utilizing e-commerce and the use of domains prior to many
other companies.
2. The
domain name, <c-line.com>, was obtained for use in one of
Respondent’s product lines. It had no
knowledge of the company C-Line Products, Inc. and in no way sought them out to
sell this domain. It has not been shown
that Respondent’s possession of the domain <c-line.com> has caused
damage, confusion or that it has used it in bad faith. In fact, the only reason for the Complaint
was that C-Line Products, Inc. wanted to reduce the length of their currently
owned domain
name <c-lineproducts.com>.
DISCUSSION AND FINDINGS
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.
Preliminarily,
the Panelist has disregarded any allegations predicated on information and
belief as completely non-probative.
Complainant has established that it has
rights in the C-LINE mark through registrations of the mark on the Principal
Register with
the United States Patent and Trademark Office (“USPTO”), Reg. No.
908,257, registered on February 23, 1971; Reg. No. 911,866, registered
on June
8, 1971; and Reg. No. 1,075,920, registered on October 25, 1977. Thus, it is found and determined that
Complainant’s registration of the C-LINE mark with the USPTO establishes its
rights in the mark
under Policy Paragraph 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently
distinctive and have acquired a secondary meaning”); see also Janus Int’l Holding Co. v. Rademarcher, D2002-0201 (WIPO Mar.
5, 2002) (finding that Panel decisions have held that registration of a mark is
prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.).
The Panelist finds and determines that
the <c-line.com> domain name is identical to Complainant’s C-LINE
mark. Respondent added the top-level
domain “.com” to Complainant’s entire mark.
Respondent’s addition of the top-level domain to Complainant’s entire
C-LINE mark does not sufficiently distinguish the domain name
at issue from
Complainant’s trademark. The Panelist
thus has concluded that the disputed domain name is identical to Complainant’s
mark. See Pomellato S.p.A. v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<Pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); 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”).
The Panelist believes and determines that negotiations
between the parties for the sale and purchase of a disputed domain name should
be disregarded in the determination of rights and a legitimate interests
(Policy Paragraph 4(a)(ii)) and bad faith registration and
use (Policy
Paragraph 4(a)(iii)).
Nevertheless, it is found and determined
that Respondent does not have any rights and legitimate interests in the
disputed domain
name.
This is because Respondent registered the
disputed domain name on June 12, 1996, and since the date of registration,
Respondent has
not submitted any evidence to show that it has made any use of,
or demonstrable preparations to use the disputed domain name. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents
have not established
any rights or legitimate interests in the domain name); see also Am. Home Prod. Corp.
v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where
Respondent
merely passively held the domain name).
Further, it is found and determined that
Respondent is not commonly known by the disputed domain name and, thus, lacks
rights and
a legitimate interest in the name.
See 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 in
connection with a legitimate or fair use).
Finally, the Panelist finds and
determines that Respondent has not established proof of a legitimate business
plan. See Franzus Co. v. Cotner,
FA 125365 (Nat. Arb. Forum No. 7, 2002) (determining that after Respondent’s
passive holding of the disputed domain name for five
years, its “unsupported,
self-serving allegations alone are insufficient to establish that Respondent
has rights or legitimate interests
in respect of the domain name at issue”); see also Houshold Int’l, Inc. v Cyntom
Enter., FA 95784 (Nat.
Arb. Forum Nov. 7, 2000) (holding that Respondent’s “vague and unsupported
assertion of ‘plans to sell household
goods, supplies and appliances over the
Internet’” was insufficient to be considered proof of a legitimate business
plan); see also Open Sys. Computing AS v. Allesandri, D2000-1393 (WIPO Dec.
11, 2000) (finding that Respondent did not establish rights and legitimate
interests in the domain name where
Respondent stated that it had a business
plan for the website at the time of registration but did not furnish any
evidence in support
of this claim).
Bad faith registration and use is the
salient issue here presented.
As above noted, the Panelist will not consider the
negotiations between the parties in making his finding on this issue.
It has been held that the failure to put
a disputed domain name to any legitimate use but to hold it passively is
evidence of bad
faith. See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii)
of the Policy); see
also Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop
its website in a two year period raises the inference
of registration in bad
faith).
But the Panelist also will not utilize
this rationale.
Rather, his finding and determination is
predicated on the registration of the disputed domain name with knowledge of
Complainant’s
rights in the C-LINE mark.
Respondent was put on constructive notice
of Complainant’s rights in the C-LINE mark prior to Respondent’s registration
of the <c-line.com> domain name by virtue of Complainant’s federal
registrations of its mark. Thus, it is
found and determined that Respondent registered the disputed domain name in bad
faith pursuant to Policy Paragraph 4(a)(iii).
See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence
of bad faith includes actual or constructive knowledge of a commonly
known mark
at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status
that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secrete Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive
notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent undoubtedly and understandably
will be upset and frustrated by this conclusion.
Nevertheless, he and all others seeking
to register and use domain names would be well-advised to heed the oft-repeated
admonition,
such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook
(2001), where at page 110, he states:
Once you have decided on the TLDs and
ccTLDs, you will want to select the second level of the domain, the words that
signify your
unique address. In doing
so, you should first conduct both a domain name search to make sure the
particular domain is available as well as a trademark search to make sure
your choice of a domain name does not potentially infringe on another person or
entity’s
trademark rights.
(Emphasis supplied.)
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <c-line.com>
domain name be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: October 20, 2003
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