DECISION

Future Steel Holdings Ltd. v. Kim Majercik

Claim Number: FA0401000224964

PARTIES

Complainant is Future Steel Holdings, Ltd. Brampton, Canada (“Complainant”), represented by Olivia Maria Baratta, of Kilpatrick Stockton LLP, 1100 Peachtree St. N.E., Suite 2800, Atlanta, GA 30309.  Respondent is Kim Majercik, 47 Dillard Street, Murphy, NC 28906 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <steelmaster.us>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 9, 2004; the Forum received a hard copy of the Complaint on January 12, 2004.

On January 9, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <steelmaster.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On January 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of February 3, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Respondent requested an extension of 17 days for the Response.  The Forum granted this extension on February 3, 2004. 

A timely Response was received and determined to be complete on February 19, 2004.

Complainant submitted an untimely Additional Submission.  The Submission does not fulfill usDRP Supplemental Rule 7, which states a submission must be submitted within five days of the submission of the Response or the Response due date.  Neither the hard copies nor the payment were received by the February 24, 2004 deadline.  However, the Panel in its discretion elects to consider the Additional Submission despite the deficiencies.  Cf. Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

On March 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant, Future Steel Holdings, Ltd., makes the following assertions:

1. Respondent’s  <steelmaster.us> domain name is confusingly similar to Complainant’s STEEL MASTER mark.

2. Respondent does not have any rights or legitimate interests in the <steelmaster.us>  domain name.

3. Respondent registered and used the <steelmaster.us>  domain name in bad faith.

B. Respondent

Respondent, Kim Majercik, is a collector of vintage Volkswagen autos.  Because of Respondent’s hobby, she asserts that she and her 1972 Volkswagen are known as the “Steelmaster Bug.”  Respondent alleges that she intends to use the domain name in conjunction with her Volkswagen hobby; however, Respondent has submitted no evidence of preparations to use the domain name.

Respondent contends that because the terms “steel” and “master” are generic, Respondent cannot use them in bad faith.

Respondent contends that Complainant only has rights in the STEEL MASTER mark as the two separate words are used together.  Respondent asserts that Complainant should not be able to exclude all uses of the words “steel” and “master”. 

C. Additional Submissions

Complainant alleges that Respondent sells domain names for a profit.  Complainant says that Respondent has not offered evidence to show that she has been called “Steelmaster Bug” for over a decade.  Complainant asserts that Respondent is employed or affiliated with Complainant’s former business partners.

FINDINGS

Since January 1983, Complainant has used the STEEL MASTER mark to offer and sell prefabricated steel buildings to the general public.  Complainant registered the STEEL MASTER mark on December 31, 1985 (Reg. No. 1,376,644).  Complainant also registered the STEELMASTER design mark on February 23, 1993 (Reg. No. 1,753,587).  Additionally, Complainant has used the <steelmasterusa.info> domain name since 2001.  

Complainant has invested substantial efforts and sums of money on national and local advertising promoting its products provided under and identified by Complainant’s STEELMASTER marks. 

Respondent registered the <steelmaster.us> domain name on July 21, 2002.  Respondent also has registered the domain names <steelmasterdirect.com> and <steelmasteronline.com>, both of which incorporate Complainant’s STEELMASTER marks.  Respondent is not commonly known as “steelmaster.us”. 

Respondent, prior to her adoption and use of the domain name<steelmaster.us>,was aware that Complainant was the owner of the STEELMASTER marks because of the widespread and long-standing advertising and marketing of products under the STEELMASTER marks and the marketing of Complainant’s products in connection with the STEELMASTER marks, including online.  Moreover, Respondent is aware of Complainant’s rights because Respondent is associated with a competitive business, owned by Complainant’s former business partners, and therefore would have known about her employers’ competitors.

On November 24, 2003, Respondent told Complainant’s counsel that she would sell the domain names to Complainant for US $500 each. 

DISCUSSION

Paragraph 15(a) of 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has used the STEEL MASTER mark since January 1983, registering it on December 31, 1985.  It also registered the STEELMASTER design mark on February 23, 1993 (Reg. No. 1,753,587).  Additionally, it has used the <steelmasterusa.info> domain name since 2001.  Complainant has rights in the STEEL MASTER mark because of its use in commerce and registration.  See Janus Int’l Holding Co. v. Rademacher, 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); see also 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 secondary meaning”).

The <steelmaster.us> domain name is identical to the STEEL MASTER mark.  The only difference is the omission of the space between the words and the addition of the ccTLD “.us”, which does not significantly distinguish the domain name from the mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark).

Accordingly, the Panel finds that the <steelmaster.us> domain name is confusingly similar to Complainant’s STEEL MASTER mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name, pursuant to usDRP Policy ¶ 4(c)(i) nor is it commonly known as the domain name, pursuant to usDRP Policy ¶¶ 4(c)(iii).  Given the WHOIS registration information, the Panel concludes that Respondent does not have rights and legitimate interests in the domain name.  See Gallup Inc. v. Amish Country 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 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 never applied for a license or permission from Complainant to use the trademarked name). 

Respondent is not using the domain name nor has it demonstrated preparations to use the domain name.  Thus, Respondent’s actions constitute passive holding.  Therefore, Respondent is not using the <steelmaster.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to usDRP Policy ¶¶ 4(c)(ii) and 4(c)(iv).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <steelmaster.us> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is affiliated with Complainant’s competitor.  The Panel infers that Respondent has registered the domain name to disrupt Complainant’s business pursuant to usDRP Policy ¶ 4(b)(iii).  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); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

Respondent had notice of Complainant’s rights in the STEEL MASTER mark based on Complainant’s trademark registrations.  Registration of a domain name confusingly similar to a registered mark, despite constructive knowledge of the marks holder’s rights, evidences bad faith registration and use.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent also held the disputed domain name without evidencing a bona fide intent to use it.  Respondent has not made use of the disputed domain names, but the usTLD Policy does not require Complainant to prove bad faith registration and use of the names, only bad faith registration or use.  The Panel may construe this “passive holding” as evidence of bad faith.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, Respondent offered to sell the domain name to Complainant for $500.  Therefore, the Panel infers that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs.  See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

            The Panel thus finds that Respondent registered and used the <steelmaster.us>

domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 15, 2004

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