DECISION

Abt Electronics, Inc. v. Motherboards.com

Claim Number: FA0312000221239

PARTIES

Complainant is Abt Electronics, Inc., Glenview, IL (“Complainant”) represented by Brian D. Saucier, of Deutsch, Levy & Engel, Chartered, 225 West Washington St., Suite 1700, Chicago, IL 60606.  Respondent is Motherboards.com, Bryan, TX (“Respondent”) represented by John B. Berryhill, Phd., J.D., 1601 Market Street, Suite 2400, Philadelphia, PA 19103-2307.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <abt.com>, registered with Enom, 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 Panelists in this proceeding.

Judge Irving H. Perluss (Ret.), Presiding, James A. Carmody, Esq., and R. Glen Ayers, Esq. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 23, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On January 2, 2004, Enom, Inc. confirmed to the Forum that the domain name <abt.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2004 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@abt.com by e-mail.

A timely Response was received and determined to be complete on January 27, 2004. 

Complainant filed a timely and complete Additional Submission on February 1, 2004. 

Respondent also filed a timely and complete Additional Submission on February 6, 2004.

On February 9, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Irving H. Perluss (Ret.), Presiding, James A. Carmody, Esq., and R. Glen Ayers, Esq. as Panelists.

RELIEF SOUGHT

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

FINDINGS AND DETERMINATIONS

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.

Complainant’s request for transfer of the disputed domain name to it must be summarily denied.

This is because the threshold requirement of Policy ¶ 4(a)(i) has not been demonstrated by Complainant, i.e., that the disputed domain name is identical or confusingly similar to “a trademark or service mark in which the complainant has rights.”

The federal registration of Complainant’s mark was issued on November 12, 2002, the application for which was filed on June 2, 2000.

However, the disputed domain name was registered by Respondent on January 11, 2000, at leave five months prior to the filing date of Complainant’s federal registration.

In Travant Solutions, Inc. v. Cole,. FA 203177 (Nat. Arb. Forum No. 29, 2003), it was held that “[a]lthough the domain name was registered before Complainant acquired rights in the name, the plain meaning of Policy ¶ 4(a)(i) indicates that Complainant’s rights in the mark do not have to precede Respondent’s domain name registration.”

The Travant decision, however, is contrary to the vast majority of decisions wherein this issue was considered.

Thus, for example, in Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), it was held that Policy Paragraph 4(a)(i) “necessarily implies that the Complainant’s rights [must] predate the Respondent’s registration and use of the Domain Name.”  See also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“numerous decisions have determined that the relevant point in time when Complainant must establish rights in its mark is before Respondent’s registration of the domain name.”); see also Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Mar. 4, 2003).

Failing the prior federal registration test, we turn to the question as to whether Complainant has established that it had common law rights in its service mark predating Respondent’s registration of the disputed domain name.

In this regard, the Policy is broad.  As noted by Professor McCarthy in his treatise (McCarthy, Trademarks and Unfair Competition, section 25:74.2 (4^th ed. 2002):

“(1) it does not require that the challenged domain name be identical to a registered trademark owned by the complainant; it requires only that the domain name be identical or confusingly similar to the challenger’s trademark; (2) the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required – unregistered or common law trademark or service mark rights will suffice.”  [Emphasis in original.]

The rub is that in the record and the context of this proceeding, Complainant has not demonstrated that it had prior common law rights in its mark.

In its Additional Submission, Complainant does assert that it had rights existing at the time of the domain name’s registration by pointing to the United States Patent and Trade Office certificate that lists the first use of the ABT mark as being in 1936 and the first use in commerce as being May 1982.

But that is all the evidence submitted by Complainant and it is not sufficient.

In Weatherford Int’l, Inc., supra, the Panelist stated:

“Establishing common law rights in a mark requires a showing by Complainant that its mark has acquired secondary meaning.  In other words, Complainant must establish that the public associates the asserted mark with its goods and services.”

In Coupons, Inc. v. Motherboards.com a/k/a DNS Admin., FA 192249 (Nat. Arb. Forum, Nov. 4, 2003), the Panel cited authorities listing the factors which may establish common law rights in a mark.

Thus, in Media West-GSI, Inc. v. Earthcards.com, Inc., D2000-0463 (WIPO July 28, 2000), the Panel enumerated the factors that may establish secondary meaning:

“This test requires a demonstration that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services.  In determining whether a mark has acquired a secondary meaning, courts consider such factors as:  (1) advertising expenditures, (2) consumer surveys liking the mark to a source, (3) unsolicited media coverage of the service, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”  (References omitted)

Also cited was Australian Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002), wherein the Panel held that common law rights had been established.  It was said:

“It is undisputed that Complainant has been identifying itself and its services with the ‘Austrade’ mark since 1986.  Also undisputed are Complainant’s claim that, in recent fiscal years, it has invested over 10 million Australian dollars to raise awareness of its services, and raised as much in the annual revenue for services provided, all in conjunction with its use of the ‘Austrade’ identifier.  Additionally, the name has appeared in brochures and other written materials published by Complainant for a wide audience.  Complainant also demonstrates awareness of its name and services both within and outside of Australia.”

Obviously, Complainant has failed to meet its burden.

As in Weatherford Int’l, Inc., supra, it is held that because Complainant must satisfy each element listed under Policy ¶ 4(a) in order to prevail in a dispute under the Policy, it is not necessary to consider compliance with Policy ¶¶ 4(a)(ii) & (iii).

This decision should not be construed as a determination that Complainant could never establish common law rights in its mark that are prior to the registration of the disputed domain name.  On the record before the Panel, however, Complainant has failed to meet its burden.

DECISION

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

Accordingly, it is Ordered that the Complaint be DISMISSED.

JUDGE IRVING H. PERLUSS (Retired), Presiding Panelist

JAMES A. CARMODY, Esq., Panelist

JUDGE R. GLEN AYERS, Esq., Panelist
Dated: February 20, 2004

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