25th Feb 2009

 

National Arbitration Forum

 

DECISION

 

Brass Rail Tavern (Toronto) Limited v. Worldwide Media, Inc c/o Domain Administrator

Claim Number: FA0901001240832

 

PARTIES

Complainant is Brass Rail Tavern (Toronto) Limited (“Complainant”), represented by Aussi Hagshi, Ontario, Canada. Respondent is Worldwide Media, Inc c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <brassrail.com>, registered with Homestead Limited d/b/a Namevault.com.

 

PANEL

The undersigned certifies that the Panel has acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.

 

Daniel B. Banks, Jr., Panel Chair.

Hugues G. Richard, Panelist.

Diane Cabell, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 12, 2009.

 

On January 6, 2009, Homestead Limited d/b/a Namevault.com confirmed by e-mail to the National Arbitration Forum that the <brassrail.com> domain name is registered with Homestead Limited d/b/a Namevault.com and that Respondent is the current registrant of the name. Homestead Limited d/b/a Namevault.com has verified that Respondent is bound by the Homestead Limited d/b/a Namevault.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 January 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2009 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@brassrail.com by e-mail.

 

A timely Response was received and determined to be complete on February 4, 2009.

 

On February 12, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hugues G. Richard, Diane Cabell 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

Brass Rail Tavern (Toronto) Limited was incorporated in the Province of Ontario, Canada, on November 6, 1959. It has continued to operate as a tavern and entertainment establishment under the name of Brass Rail since then. Brass Rail wishes and needs to advertise and communicate with its potential worldwide market, given that many of its customers are tourists and business travelers coming to the City of Toronto from many parts of the world.

 

Respondent’s <brassrail.com> domain name is identical to Complainant’s Brass Rail mark that has been in use continually since 1959. Respondent has no rights or legitimate interests in the domain name and makes no bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name as it resolves to a website which displays a prominent solicitation of offers to purchase the domain name along with links to commercial websites. Respondent does not appear to be commonly known by the domain name. 

 

Respondent should be considered as having registered and used the domain name in bad faith. There are circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The domain name resolves to a website which displays a prominent solicitation of offers to purchase the domain name and requires that any offer to be considered must be for a minimum of $2,500.

 

Finally, there is evidence that the domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. Respondent’s email address is admin@mostwanteddomains.biz and the site linked to the solicitation offers is titled “Most Wanted Domains.” It can be reasonably concluded that the Respondent is in fact in the business of registering domain names that it has no interest in, other than for reselling these domain names to those who have a use for them. 

 

B. Respondent

There is no basis for transferring the disputed domain name <brassrail.com> to Complainant. Complainant has failed to meet its burden of proof under each prong of the Policy and the Complaint must therefore be dismissed. At the outset, there can be no doubt that “brass rail” is a descriptive term for what one would expect: a rail made out of brass. Respondent registered the Disputed Domain based on its value as a descriptive term to which it believed no party could claim exclusive rights. Respondent uses the domain for a web site which displays advertising links related to the term “brass rail,” such as “brass rails” and “brass railing.” Respondent, domiciled in the U.S., had no knowledge of Complainant or its alleged trademark when it registered the Disputed Domain and, it follows, that Respondent did not register the domain name with Complainant in mind, and there is no evidence demonstrating that it did so, nor is there any evidence from which to infer such a conclusion.

Complainant does not possess a registered trademark for the term BRASS RAIL. Complainant’s sole documentary evidence is its articles of incorporation establishing its trade name as BRASS RAIL (TORONTO) LIMITED. It is well-established, however, that the mere existence of a trade name does not establish trademark rights under the Policy. In order to maintain a proceeding under the Policy, without the benefit of a registered trademark, Complainant must demonstrate it possesses common law trademark rights to BRASS RAIL. Proof of common law trademark rights requires evidence demonstrating that the term has acquired “secondary meaning” for Complainant’s services. No such evidence has been proffered, nor could it be proven in any event. Complainant operates an adult entertainment establishment commonly known as a strip club. Because strip clubs have “brass rail” posts upon which the dancers stride themselves, many strip clubs have adopted the term “brass rail” in the names of their establishments. Complainant is but one of these establishments and there is no evidence that consumers see Complainant, alone, as associated with the descriptive term “brass rail.” 

It is clear that Respondent has a legitimate interest in the Disputed Domain having registered it because it incorporates a descriptive term, and not based on an intent to profit from Complainant’s trademark rights. The fact that Respondent selected the Disputed Domain based on it incorporating a descriptive term, and not based on Complainant’s mark, is supported by the numerous other domain names Respondent has registered which incorporate the common words “brass” and “rail,” and variations thereof (e.g. <antiquebrass.com>; <railguards.com>; <speedrails.com>). 

Complainant has failed to establish that Respondent registered the Disputed Domain in bad faith. Anyone is entitled to register a descriptive term in a domain name under the UDRP, provided there is no evidence that such term was registered with the specific intent to profit from a Complainant’s trademark. There is not a scintilla of evidence supporting an inference that Respondent had any such malicious intent. The fact that Respondent registered the Disputed Domain solely based on its descriptive nature – and not because of Complainant’s trademark – is corroborated by the numerous other descriptive domain names Respondent has registered which incorporate the common words “brass” and “rail.” 

Finally, although laches is not a defense under the Policy, the fact that Complainant initiated this action more than eight years following Respondent’s registration of the Disputed Domain in August 2000 raises an inference that Complainant did not genuinely believe Respondent’s registration and use of the Disputed Domain were in bad faith, and that the registration and use were not genuinely causing harm to Complainant.

In summary, there is absolutely no merit to this Complaint. Complainant has no trademark rights to “brass rail.” Respondent registered the Disputed Domain because it was descriptive, without knowledge of Complainant’s alleged trademark. Respondent has used the Disputed Domain in connection with the bona fide offering of goods and services.   Accordingly, because Complaint has failed to meet its burden under the Policy, the Complaint must be dismissed.

A finding of Reverse Domain Name Hijacking is warranted where “the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.” Futureworld Consultancy Pty Ltd. v. Online Advice, D2003-0297 (WIPO July 18, 2003).[i] Here, there is no evidence whatsoever that Respondent knew, or should have known, about Complainant’s trademark. In fact, there is not evidence to support a finding that Complainant even has trademark rights. 

Supporting a conclusion that Complainant did not believe it had a strong case is the fact it waited eight years after Respondent registered the Disputed Domain to bring this Complaint. This is evidence that Complainant “did not seriously believe” that Respondent had violated the Policy. Rolling Stone LLC v. Robbins Carnegie Inc., FA 318048 (NAF Oct. 14, 2004).[ii] CF Norbert A. Aleman v. Crazygirls.com, supra. (While not finding abuse of the policy, the panel noted that complainant failed to “explain its inaction in defending its trademark during the period of nearly seven years since the respondent’s registration.”).

Since there was no basis for Complainant to initiate this proceeding, the Panel should find that Complainant has abused the Policy and, thus, engaged in Reverse Domain Name Hijacking. Respondent respectfully urges the Panel not to excuse Complainant’s actions simply because it appears Complainant is not represented by counsel. Ignorance of the Policy and rules is not a defense for respondents and it should not be for complainants, either.

 

FINDINGS

The Panel finds that Complainant has failed to establish enforceable rights to the “Brass Rail” mark under Policy 4(a)(i). Having reached this conclusion, the Panel declines to discuss the other elements of the Policy.

 

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.

 

Complainant does not possess a registered trademark for the term Brass Rail nor has Complainant demonstrated sufficient secondary meaning in the BRASS RAIL mark in order to establish common law rights pursuant to Policy ¶ 4(a)(i). Complainant’s self-serving assertions and lack of supporting evidence in the record do not prove that the BRASS RAIL mark has come to be associated as an exclusive identifier of Complainant’s business. Complainant’s trade name is not sufficient to establish common law rights in the mark. The Panel finds that Complainant has not established common law rights in the BRASS RAIL mark pursuant to Policy ¶ 4(a)(i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding that the complainant’s use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that the complainant had rights under the Policy).

 

Having found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the BRASS RAIL mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

A majority of the panel rejects a finding of reverse domain name hijacking. 

 

DECISION

Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

Daniel B. Banks, Jr., Panel Chair

Hugues G. Richard, Panelist

Diane Cabell, Panelist
Dated: February 25, 2009

 

 



[i]              Futureworld Consultancy Pty Ltd. v. Online Advice, D2003-0297 (WIPO July 18, 2003)

 http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0297.html

 

[ii]               Rolling Stone LLC v. Robbins Carnegie Inc., FA 318048 (NAF Oct. 14, 2004)

                http://domains.adrforum.com/domains/decisions/318048.htm