2nd Jun 2010

 

National Arbitration Forum

 

DECISION

 

Steinway, Inc. v. Carey Simon

Claim Number: FA1004001318229

 

PARTIES

Complainant is Steinway, Inc. (“Complainant”), represented by Debra Serota, of Fish & Richardson P.C., Massachusetts, USA. Respondent is Carey Simon (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <american-steinway.com>, registered with GoDaddy.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.

 

Charles K. McCotter, Jr., David E. Sorkin, and Mark McCormick, Chair as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2010.

 

On April 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <american-steinway.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 April 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@american-steinway.com. Also on April 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received on May 10, 2010 but was not in compliance with Rule 5(a) as the annexes were not separated from the response.

 

An Additional Submission was received from Complainant on May 17, 2010. The Submission complied with Supplemental Rule 7. 

 

An Additional Submission was received from Respondent on May 25, 2010. This Submission also complied with Supplemental Rule 7.

 

On May 19, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Charles K. McCotter, Jr., David E. Sorkin, and Mark McCormick, Chair, as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name <american-steinway.com> registered and used by Respondent is confusingly similar to Complainant’s STEINWAY name and mark in which Complainant has trademark and common law rights. 

 

Complainant also contends that Respondent has no rights or legitimate interests in the <american-steinway.com> domain name and that Respondent registered and is using the domain name in bad faith.

 

B. Respondent

Respondent denies that its <american-steinway.com> domain name is confusingly similar to Complainant’s STEINWAY mark. Respondent contends that he is making a “nominative fair use” of the mark in a non-confusing manner. He also contends that he has rights and legitimate interests in the domain name and that he did not register and use the domain name in bad faith.

 

C. Additional Submissions

Complainant

In its Additional Submission, Complainant contends that Respondent’s use of the disputed domain name does not constitute fair use and reiterates its contentions that it has proven the necessary elements in support of its Complaint.

 

Respondent

In his Additional Submission, Respondent contends that Complainant has failed to establish the elements essential to support its Complaint and that Complainant has not negated Respondent’s defense of nominative fair use.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to Complainant’s STEINWAY mark. The Panel further finds that Complainant has failed to prove that Respondent lacks rights or legitimate interests in the domain name and that Respondent registered and is using 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.”

 

The Panel has considered the parties’ Additional Submissions, although as noted above they add little to the parties’ original submissions. One member of the Panel would not consider the Additional Submissions at all, finding no exceptional circumstances present that would warrant their consideration. See, e.g., Sina.com Online v. CyberTavern, LLC, FA 1235499 (Nat. Arb. Forum Jan. 13, 2009) (Sorkin, dissenting).

 

Respondent’s Response was submitted without separation of the annexed material from the Response. On that basis, the Response did not comply with ICANN Rule 5(a). Considering the technical nature of the breach and its relative insignificance, the Panel has determined to allow and consider the Response so the case can be resolved on its merits.

 

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

 

Complainant has for many years manufactured pianos under the Steinway name. Complainant’s registration of its STEINWAY mark with the United States Patent and Trademark Office in 1921 conclusively establishes its rights in the mark within the meaning of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006). Respondent has no connection with Complainant and is not authorized by Complainant to use the STEINWAY mark. Respondent’s disputed domain name <american-steinway.com> includes the mark but adds a descriptive term “american,” a hyphen between the terms, and the generic top-level domain “.com.” These differences do not adequately distinguish Respondent’s domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004). (addition of a geographically descriptive term does not prevent confusion); Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (adding a punctuation mark does not prevent confusion); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (adding the gTLD to a domain name does not distinguish it). The Panel finds that Respondent’s <american-steinway.com> domain name is confusingly similar to Complainant’s STEINWAY mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent’s business partner Robert Friedman has been in the business of buying, restoring and reselling Steinway pianos for more than 35 years. Friedman partnered with Respondent in 2009 to use the <american-steinway.com> domain name to resolve to a website through which Friedman’s business services would be identified and offered. The record establishes that the domain name is in fact used in connection with a legitimate business in which only Steinway pianos are refurbished and resold. Friedman in the past even sold restored pianos to Complainant. Neither Friedman nor Respondent has ever had any affiliation with Complainant. Respondent on the website identifies the business he operates with Friedman as the “World’s Largest Used Steinway Piano Wholesaler” and expressly disclaims any affiliation with Complainant. 

 

While the effectiveness of this information is disputed, the evidence supports an inference that Respondent’s use of the domain name is nominative fair use that gives Respondent rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006). Respondent’s disclaimer of any affiliation with Complainant is further evidence supporting Respondent’s contention that he has rights and legitimate interests in the disputed domain name. See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000). It is clear that Friedman and Respondent are making a bona fide offering of restored Steinway pianos through their website. 

 

The prevailing view in other URDP cases is that a reseller of goods has a right to incorporate a manufacturer’s mark in an offering of goods and services when the record shows the following:

 

1.   The respondent actually offers the goods and services at issue;

2.   the respondent uses the site only to offer those goods;

3.   the site accurately reveals the lack of affiliation with the trademark owner; and

4.   the respondent is not trying to corner the market on all relevant domain names, thus depriving the trademark owner of own use of its mark in a domain name.

 

See ITT Mfg. Enters., Inc. v. Nicoll, D2008-0936 (WIPO Nov. 7, 2008); Jandy Industries, Inc. v. Jurtin, FA1230025 (Nat. Arb. Forum Dec. 9, 2008). Respondent’s use of the <american-steinway.com> domain name satisfies these requirements. The record thus establishes that Complainant has failed to prove that Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Because Respondent has rights and legitimate interests in the disputed domain name, the Panel determines that Respondent did not register or use the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).

 

DECISION

Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Charles K. McCotter, Jr., David E. Sorkin, and Mark McCormick, Panelists
Dated: June 2, 2010

 

National Arbitration Forum