17th Oct 2013

national arbitration forum

DECISION

CoorsTek, Inc. v. Martin Packer / PulseGuard

Claim Number: FA1308001515110

 

PARTIES

Complainant is CoorsTek, Inc. (“Complainant”), represented by Lindette C. Hassan of Fox Rothschild LLP, Pennsylvania, USA. Respondent is Martin Packer / PulseGuard (“Respondent”), represented by Ari Goldberger of ESQwire.com, P.C., New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <flow-guard.com>, registered with Active Registrar, Inc.

PANEL

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

Jonas Gulliksson (chair), James A. Carmody and The Honourable Neil Anthony Brown QC as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2013; the National Arbitration Forum received payment on August 16, 2013.

On August 17, 2013, Active Registrar, Inc. confirmed by e-mail to the National Arbitration Forum that the <flow-guard.com> domain name is registered with Active Registrar, Inc. and that Respondent is the current registrant of the names. Active Registrar, Inc. has verified that Respondent is bound by the Active Registrar, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2013 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@flow-guard.com. Also on August 21, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 and determined to be complete on September 20, 2013.

Respondent submitted an Additional Submission, which was found to be compliant on September 25, 2013.

Complainant also submitted an Additional Submission, which was found to be compliant on September 30, 2013.

On October 4, 2013, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (chair), James A. Carmody and The Honourable Neil Anthony Brown QC as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of trademark registrations for FLOWGUARD and FLOWGUARD USA. In 2010, Complainant acquired the company Flowguard Ltd. and its assets including the mentioned trademarks and their associated goodwill. Following the acquisition, Complainant conducted its own due diligence and became aware of the existence of the disputed domain name.

Subsequently, Complainant discovered that, since at least as early as 1988, the Flowguard marks have been used in connection with the sale of pulsation dampener equipment, first by Flowguard Ltd., then by Complainant as a successor in interest. The FLOWGUARD trademark was registered in Australia on December 13, 1994, in France on January 23, 1995 and in Benelux on May 1, 1996. It is also registered in Germany, the United Kingdom and the United States. The disputed domain name was not registered until August 15, 1996. This is well after the Flowguard marks were first used and more than 3 months after the trademark FLOWGUARD was registered in Benelux.

Since its inception, Complainant has expended considerable time, money, effort and resources in developing extensive consumer recognition and goodwill through the active use of its trademarks. As a result, the trademarks are well-known by virtue of their extensive and long-standing adoption and use.

Complainant also operates the website at the <flowguard.com> domain name, created on March 24, 1998.

Complainant contends that the disputed domain name is confusingly similar, if not identical, to Complainant’s registered trademarks. Respondent’s use of a hyphen between “flow” and “guard” does not distinguish the disputed domain name from Complainant’s trademarks.

Respondent does not have any rights or legitimate interests in respect of the disputed domain name. Complainant has not given Respondent the right to use Complainant’s trademarks, nor licensed them to Respondent.

The original founders of Flowguard Ltd. previously worked with Respondent. While working together, the founders and Respondent formed a company called Flow-chem Hydro. Ltd. (“Flowchem”), which made pulsation dampeners. The technology for those pulsation dampeners was licensed to Flow-chem by Respondent. A number of years later, Respondent terminated the license to Flow-chem and its relationship with Flow-chem. Flow-chem thereafter became Flowguard, Ltd (“Flowguard”).

As of the date of the submission of the complaint, the disputed domain name is registered to a Mr. Martin Packer of PulseGuard—a known competitor of Complainant’s business. Mr. Packer and PulseGuard have a history of using confusingly similar marks to compete with Complainant.

There is no evidence that Respondent has been commonly known by the disputed domain name. The WHOIS information does not indicate that Respondent is or ever was commonly known by the disputed domain name, nor has Complainant ever granted Respondent permission to use the Complainant’s trademarks in any manner.

Respondent’s approach to disrupt Complainant’s business and free ride on Complainant’s goodwill is evidence of its bad faith registration of the domain name. Respondent could and should have selected and registered another domain name that did not include Complainant’s trademarks. Respondent had the duty to clear its domain name prior to its registration. Instead, Respondent chose to promote its own website and free ride on the goodwill associated with Complainant’s trademarks.

Respondent makes statements on its website that “Flowguard Distributors” can be found at certain hyperlinks/URLs listed on that page. Even though this page is titled “Flowguard Distributors”, and not “Flow-Guard Distributors”, none of the distributors listed on this page sell Complainant’s “FlowGuard” products. Moreover, by using the term “Distributors” on this page, Respondent is impliedly stating that companies listed in this page are third parties, i.e. they are not Respondent. However, WHOIS records demonstrate that many of the websites found at the hyperlinks/URLs listed on this page are, in fact, owned by Respondent or Respondent’s agent.

By selecting and registering a domain name that is confusingly similar to Complainant’s trademarks and website at Complainant’s <flowguard.com> domain name, used to advertise the same types of goods, Respondent has engaged in an ongoing bad faith effort to intentionally attract and misleadingly divert consumers to its website for commercial gain. Respondent has created a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Internet users seeking to access the online presence of Complainant could easily find themselves directed to Respondent’s website by typing in the distinctive portion of Complainant’s trademark either as a domain name or in an Internet search.

The disputed domain name is not descriptive. Under U.S. trademark law, once a registered mark has been in use in commerce continuously for five years or more and there has been no final decision adverse to the owner’s claim of ownership of the mark for the covered goods or services, or to the owner’s right to register the mark for the covered goods or services, or to the owner’s right to register the mark or to keep the mark on the register, that registration becomes “incontestable”. Once a registration for a mark becomes “incontestable”, that registration is conclusive evidence of the owner’s exclusive right to use the registered mark in commerce. The registration for the mark FLOWGUARD USA became incontestable in 2010. Additionally, when examining the application to register this mark, the U.S. Patent and Trademark office did not find the term “Flowguard” to be descriptive. Respondent should not be able to use the UDRP to circumvent U.S. trademark law by asserting that the term “Flowguard” is descriptive and using the term “flowguard” as a domain name.

Respondent has argued for dismissal of Complainant’s complaint on laches alone. However, the doctrine of laches is not a universal bar in all cases. Rather, panels are analyzing this doctrine, if at all, on a case-by-case basis and as a mere factor in the bad faith activity. Respondent clearly knew of Complainant’s superior rights in its non-descriptive trademarks and has attempted to conceal Respondent’s efforts to divert business using Respondent’s copycat website.

Complainant has not been dilatory in bringing this action. It only acquired the rights to the FLOWGUARD trademark in 2010. Also, Respondent’s efforts toward diverting business have recently increased. According to “Archive.org”, Respondent added the “FlowGuard Distributors” language to its website sometime after June, 2009.

Every time Respondent renews its registration, it renews its obligation to use that domain name in good faith. Not only did Respondent originally register the disputed domain name in bad faith, but it is clear that it also continues to register the domain name in bad faith. Respondent appears to have re-registered the disputed domain name since 2009. The Panel should not allow Respondent to hide behind laches.

B. Respondent

Respondent registered the disputed domain name because it is a combination of two English words to which he believed no party could claim exclusive rights. The words “Flow” and “Guard” are combined and used to their common meaning “to protect against excessive flow dangers”.

Respondent did not register the disputed domain name with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Until the filing of the instant Complaint, Respondent had no knowledge of Complainant’s alleged interest in the disputed domain name.

Respondent did not register the disputed domain name to prevent Complainant from owning a domain name incorporating its trademark, but to promote solutions related to protection against excessive flow dangers in industry. For almost 17 years, prior to the filing of the instant complaint, Respondent has operated the website that resolves to the disputed domain name, without complaint from Complainant. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy.

Even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises the strong inference that the Complainant did not truly believe Respondent engaged in bad faith registration. When there is a valid assignment of a trademark, the assignee steps into the shoes of the assignor, and can claim priority in the trademark dating back to the time of the assignor’s first use. Assuming that Complainant can produce a document that it purchased the goodwill of its predecessors in interest, and can trace title back, it now stands in the shoes of the predecessors and its claim is inexplicably 17 years late. At best, per Complainant’s admission, it assumed the rights and goodwill to the alleged trademarks in 2010 and then waited 3 years to file the instant claim. Either way, Complainant’s long delay particularly demonstrates that laches is appropriate. Complainant was likely aware of the disputed domain name since at least 1998 when the Complainant registered its own <flowguard.com> domain name. The complaint should be denied on this basis alone.

Complainant’s trademark is not identical or confusingly similar to the disputed domain name. A valid trademark assignment requires the sale of the goodwill of the underlying business associated with the mark. Other than screen shots of USPTO and other trademark authorities’ records, purporting to show Complainant as an “assignee”, Complainant has set forth no proof o record of its trademark assignment and the purchasing of the goodwill its alleged predecessors in interest. Thus, Complainant has failed to establish its rights under this element of the Policy.

Respondent has rights and a legitimate interest in the domain name. The registration of domain names that contain common dictionary words are permissible on a first-come, first served basis, and such registration establishes Respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind. Here, there simply is no evidence supporting an inference that Respondent registered the disputed domain name with Complainant’s trademark in mind.

Moreover, it is well established that the use of a domain name in connection with a bona fide offering of goods or services establishes Respondent’s legitimate interest pursuant to paragraph 4(c)(i) of the Policy. Respondent’s legitimate interest is bolstered by the fact that he uses the disputed domain name in connection with the bona fide provision of “Flow Fuses” and “Breather Bag” products. There is no evidence that any links related to the goods and services covered by Complainant’s trademark have ever appeared on Respondent’s website and, thus, no credible argument can be made that Respondent’s use of the domain is illegitimate or targets the Complainant in any way.

Complainant has not demonstrated that the domain name was registered and is being used in bad faith. Respondent registered the disputed domain name 2 years prior to the date Complainant registered its own domain name and has used the disputed domain name for 17 years. Respondent had no knowledge that Complainant had any interest in the disputed domain name. Moreover, because of the substantial third-party use of the common words “flow” and “guard”, Complainant must produce specific evidence of bad faith since there is no proof that Complainant’s mark was the reason Respondent registered the disputed domain name.

Complainant’s silence for 17 years raises the inference that Complainant did not believe Respondent’s registration and use of the disputed domain name was in bad faith. Thus, the Complainant has failed to meet its burden of proving bad faith registration and use.

FINDINGS

The Complainant is the holder of, inter alia, the trademark registrations for FLOWGUARD, registered in:

– Australia on December 13, 1994, for goods in class IC7,

– France on January 23, 1995, for goods in class IC7, and

– Benelux on May 1, 1996, for goods in class IC7.

The disputed domain name was registered on August 15, 1996.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)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

The disputed domain name consists of the words “flow” and “guard” with a dash between them and with the addition of the generic Top Level Domain (“gTLD”) “.com”. According to well-established consensus among UDRP panels, the gTLD is generally not distinguishing. The Panel finds that the difference between the disputed domain name and the FLOWGUARD trademarks is insufficient to avoid a finding of confusing similarity under the first element of the Policy.

The Panel is of the opinion that the word flowguard is not descriptive in relation to the relevant goods for which is used by Complainant. This is also supported by the fact that it has been considered registrable as a trademark by relevant registration authorities. According to established trademark practice suggestive marks are considered distinctive.

In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s FLOWGUARD trademark in the meaning of paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled.

Lashes

The Panel notes that the parties do not dispute that Respondent registered the disputed domain name on August 15, 1996, 17 years prior to this proceeding and 3 years prior to the inception of the UDRP. Further, Respondent has provided the Panel evidence of its use of the mark FLOWGUARD in connection with its business since that date. Accordingly, a majority of the Panel finds that the presumption in favor of Complainant upon satisfaction of the first element of the Policy has been successfully rebutted by Respondent’s showing of legitimate use of the domain name at issue for more than a decade and by the fact of laches on the part of Complainant. It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent’s domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion. Previous panels have found that the principles associated with the equitable doctrine of laches may inform the panel in cases such as this. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).

See also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) ( laches is “a valid defense in any domain dispute where the facts so warrant.” ); Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012) (“The Panel also finds that the doctrine of laches should apply as a defense in this matter and thus further support the legitimacy of Respondents’ rights and interests in the disputed domain names.”); IDN, Inc. v. Name Administration Inc. (BVI), FA 1461862 (Nat. Arb. Forum Oct. 23, 2012).

Accordingly, a majority of the Panel finds that Complainant has failed to satisfy the second element of the Policy and the Complaint must be dismissed.

DECISION

The Panel has considered the long time between the original registration of the disputed domain name and the institution of this proceeding and the fact that the disputed domain name was established before the entering into force of the ICANN UDRP Policy as giving rise to laches. Therefore there is no reason for the panel to investigate the last element of Paragraph 4(a) of the Policy.

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

Accordingly, it is Ordered that the <flow-guard.com> domain name REMAIN WITH Respondent.

 

Jonas Gulliksson (chair), James A. Carmody and The Honourable Neil Anthony Brown QC, Panelists

Dated: October 17, 2013