9th Jul 2002

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Great American Insurance Company v. Ron Hamilton

Claim Number: FA0204000109753

 

PARTIES

Complainant is Great American Insurance Company, Cincinnati, OH, USA (“Complainant”) represented by David S. Levine.  Respondent is Ron Hamilton, St. Petersburg, FL, USA (“Respondent”) represented by Ari Goldberger, of ESQwire Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <greatamerican.biz>, registered with Register.com.

 

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.

 

James Alan Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

 

Complainant submitted a Complaint to the Forum electronically on April 18, 2002; the Forum received a hard copy of the Complaint on April 19, 2002.

 

On April 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

 

On May 9, 2002, Respondent requested, with Complainant’s consent, an extension for the filing of its Response. The Forum approved the request on May 9, and set a new deadline of May 24, 2002 by which Respondent was permitted to submit its Response.

 

A timely Response was received and determined to be complete on May 24, 2002.

 

On June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

  1. Complainant

Complainant is the owner of two separate servicemark registrations of the GREAT AMERICAN name. The registrations covered annuity underwriting services, property, and casualty, life, health, accident, and annuity insurance agency and brokerage services, claims adjustment, claims administration services, and insurance underwriting services.

 

The disputed domain name is identical to the servicemarks owned by the Complainant.

 

Complainant was aware of no right or legitimate interest of the Respondent in the domain name. A search of the United States Patent and Trademark Office database revealed no registrations for “Great American” in Respondent’s name.

 

Complainant asserted that it had invested substantial time, money, and effort in it’s brand, Great American which was used by approximately 15 separate companies all of which used the Great American formative in their name. Complainant had also purchased the naming rights to a new major league baseball stadium, which would be used by the Cincinnati Reds baseball team.

 

Finally, Complainant asserted that Respondent’s use of <greatamerican.biz> will diminish the value of the investment that had been made in its name and potentially cause confusion among users depending upon Respondent’s intentions for that name, which are currently unknown.

 

  1. Respondent

The Respondent is the president of Great American Natural Products, Inc., a Florida corporation which was established in April of 1985. The corporation sold natural products including herbs, spices, bulk foods, gourmet coffees, teas, and perfumes.

 

Respondent had a trademark registered in the state of Florida for Great American Natural Products, Inc. First use was asserted to have taken place in January 1985. The registration date was May 17, 1985.

 

The dominant component of Respondent’s business name is “Great American”. The company is commonly referred to as simply “Great American”.

 

The Respondent had registered the disputed domain to use for his business Great American Natural Products, Inc.

 

Complainant could not assert exclusive rights to the term “Great American” which is the subject of tremendous third party use. There were 326 active pending and registered U. S. trademarks which incorporate the common term “Great American”. There were over a thousand businesses in the United States that contain the common term “Great American” in their business name. A query on the Internet search engine Google returned 369,000 web pages containing the common term “Great American”. There were 60 companies in the state of Florida alone that operated under fictitious names incorporating the term “Great American”. There were 755 domain names that contain the term “Great American”.

 

Respondent denied bad faith registration or use of the disputed domain name. The disputed domain name had not been sold or offered for sale to the Complainant or any other party. It was not registered to prevent the Complainant from reflecting its mark in a corresponding domain name or to disrupt Complainant’s business or to confuse consumers. Prior to this dispute, Respondent was unaware of the Complainant or it’s trademark.

 

Respondent maintained that under paragraph 4(c)(i) it was an owner of a trademark registration in the state of Florida for “Great American Natural Products, Inc.” Respondent had established clear legitimate interest under paragraphs (4)(c)(ii) and (iii). Respondent had conducted business under its corporate name since 1985 and was commonly known by the domain name. Both registration and subsequent use had occurred long before any notice of the dispute concerning the domain name <greatamerican.biz>.

 

Respondent’s legitimate interest was also established under paragraph 4(c)(ii) since the disputed domain name was registered in connection with a bona fide offering of goods and services, namely the natural products sold by the corporation since 1985.

 

Finally, the fact that “Great American” is an extremely common term subject to substantial third party use, supported a finding that Respondent had legitimate interests in the disputed domain.

 

Respondent asserted that Complainant had engaged in reverse domain name hijacking. Complainant must have known that it could not have exclusive rights to such a common term as “Great American”. Rather than making a courtesy call or sending an E-mail to Respondent, Complainant launched an unwarranted shot in the dark attack that had put Respondent to substantial expense and aggravation. Complainant should have known there was no basis for the Complaint and should not be able to shelter itself in ignorance when a simple call or E-mail would have revealed the legitimacy of Respondent’s right to the disputed domain name and the illegitimacy of Complainant’s proceeding herein.

 

FINDINGS

  1. The Complainant is the owner of two separate servicemark registrations for the Great American name with the United States Patent and Trademark Office. Those registrations are associated with property, casualty, life, health, accident, and annuity insurance services.
  2. The Respondent is the owner of a Florida trademark registration for GREAT AMERICAN NATURAL PRODUCTS, INC.
  3. Respondent has been engaged in the business of marketing and sales of natural products including herbs, spices, bulk foods, and other items since 1985.
  4. Respondent’s corporation has been commonly known by the domain name since at least 1995.

 

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

 

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(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.

 

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

 

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

 

Complainant’s Rights in the Mark

Complainant has established rights in the Great American mark by registration with the United States Patent and Trademark Office and subsequent continuous use. Respondent’s <greatamerican.biz> domain name contains Complainant’s formative “Great American” in its entirety. It was therefore concluded by the Panel to be identical within the meaning of the STOP Policy.

 

Respondent’s Rights or Legitimate Interests

The Panel concluded the Respondent is the owner of a Florida trademark registered May 1985. Respondent has rights and legitimate interests in the disputed domain by virtue of the registration for a business commonly known by the domain name. See Argosy Gaming Co. v. Argosy Publ’g Inc., DBIZ2001-00024 (WIPO Feb. 21, 2002). In that case Respondent demonstrated that it was known by the name Argosy prior to the registration of the domain name.

 

Respondent’s assertions concerning the operation of the business in a corporate name since 1985 selling various food products was unrebutted in the evidence. It therefore appeared to the Panel that Respondent had been engaged in bona fide of offering of goods and services for more than 15 years prior to any notice to Respondent of a dispute. HBO Einkuf Und Mktg. GmbH v. Coov Motorland Fahrzeugtechnic GmbH, DBIZ2001-00052 (WIPO Feb. 14, 2002). In that case Respondent had used the business identifier MOTORLAND in connection with a bona fide offering of goods or services. It’s business in motorbikes and related services served to establish rights in respect to the domain name MOTORLAND.

 

The Panel is persuaded that “Great American” is an extremely common term subject to substantial third-party use, a factor which may weigh heavily towards a finding of Respondent’s legitimate interests in the disputed domain. A similar fact situation was presented in First Am. Funds, Inc. v. Ult. Search, Inc. D2000-1840 (WIPO Apr. 20, 2001). The disputed name was <firstamerican.com> which was very similar to the one in dispute here. Because of the common nature of the term and its extensive third-party use the Panel found that the Respondent had legitimate interest in the disputed name.

 

Reverse Domain Name Hijacking

Respondent has asked the Panel to make a finding of attempted reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

 

In order to succeed, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use in that, nevertheless, the Complaint was made. See Sidney Opera House v. Trilynxpty. LTD., D2000-1224 (WIPO, Oct. 31, 2000).

 

Panels have found reverse domain name hijacking in similar situations in which the domain name reflected a mark that was likely to have multiple legitimate users.See Smart Design LLC v. Hughes D2000-0993 (WIPO, Oct. 18, 2000). The Complainant herein must have known of the more than 300 active pending and registered U. S. Trademarks which incorporate the common term “GREAT AMERICAN”. “A search of the United States Patent and Trademark Office database revealed no registrations for “GREAT AMERICAN” in Respondent’s name”. (Paragraph 6b of the Complaint).

 

Other Panels have found that the lack of any evidence that the Respondent had registered the name in bad faith would strongly favor a finding of reverse domain name hijacking. See Deutsche Welle v. Diamond Wear Ltd. D2000-1202 (WIPO Jan. 2, 2001). In the Deutsche Welle case, there was not a shred of evidence to suggest that Respondent in the United States should have been aware of the Complainant, a German broadcasting service, when it registered the disputed domain name in 1994.

 

The Complaint before this Panel fails to set forth any bad faith allegations against the Respondent. The Complainant merely urges that Respondent’s domain will “diminish the value and investment Respondent [sic] has made in it’s name, and potentially cause confusion among users depending upon Respondent’s intentions for that name which are currently unknown.”

 

The Panel also understands that a finding of reverse domain name hijacking should be reserved for those cases where bad faith conduct by the Complainant is utterly clear. This is because to make a finding of reverse hijacking in all but the clearest of cases would have a chilling effect on parties seeking to proceed under the STOP Policy where their right to relief might not be clear. Certainly other conduct by the Complainant, such as granting an extension in the time to file a Response could be called generous and in the best of faith and with those thoughts in mind the Panel concluded that a reverse hijacking finding was unwarranted in this case.

 

DECISION

In accordance with STOP Rule 15(e)(ii), it was concluded that the Respondent demonstrated that it has legitimate right to the domain name; the Panel therefore orders that the Complaint be dismissed and that no subsequent challenges under this Policy against the domain name that is the subject of the Panel’s decision shall be permitted.

 

 

 

James Alan Crary, Panelist
Dated: July 9, 2002