31st Oct 2007
National Arbitration Forum
LandSmith, LLC v. Port Media c/o Domain Admin
Claim Number: FA0708001059595
Complainant is LandSmith, LLC (“Complainant”), represented by Kenneth A. Baldwin, of McCormick, Barstow, Sheppard, Wayte & Carruth, LLP, 5 River Park Place East, Fresno, CA 93720. Respondent is Port Media c/o Domain Admin (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landsmith.com>, registered with Nameview, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Mark McCormick, Prof. David E. Sorkin and James A. Carmody, Esq., (Chair), as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 9, 2007.
On August 21, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <landsmith.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 August 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2007 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 email@example.com by e-mail.
On September 11, 2007, Respondent requested, with Complainant’s consent, additional time by which to file a Response to the Complaint. The National Arbitration Forum subsequently granted Respondent’s request, extending the deadline by which a timely Response could be received to October 1, 2007.
A timely Response was received and determined to be complete on October 1, 2007.
Each party timely submitted an Additional Submission which was reviewed by the Panel.
On October 11, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Mark McCormick, Prof. David E. Sorkin and James A. Carmody, Esq., (Chair), as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The domain name at issue, <landsmith.com>, is confusingly similar to Complainant’s LANDSMITH mark.
2. Respondent does not have any rights or legitimate interests in the <landsmith.com> domain name.
3. Respondent registered and used the <landsmith.com> domain name in bad faith.
1. Complainant had no protectable interests in its LANDSMITH mark at the time Respondent registered the domain name at issue.
2. Respondent is using the domain name at issue and has rights or legitimate interests in it.
3. Respondent did not register and has not used the domain name at issue in bad faith.
C. Additional Submissions
Each of the parties filed an Additional Submission which essentially restated the arguments initially made.
LANDSMITH is a service mark owned by Complainant and registered in 2006 and 2007 with the United States Patent and Trademark Office (“USPTO”) reflecting a date of first use of June 1, 1999. This mark was also registered by Complainant in 2005 with the states of California and Nevada, again reflecting a first use of the mark in 1999. Complainant alleges, without specifics or proof, that it has used LANDSMITH as a common law trademark since 1999 in connection with real estate and construction related services.
In 2001, Respondent registered <landsmith.com>, arguably offering some of the same services as Complainant at Respondent’s website associated with the domain name at issue. Apparently, Respondent uses the site for affiliate advertising purposes associated with <hitfarm.com>.
The Respondent claims that “landsmith” is a generic term meaning one who “works at land” and that its registration of the domain name at issue four years prior to any registration of LANDSMITH anywhere was perfectly proper since there is no evidence of its actual knowledge of Complainant’s use of the mark in 1999. Accordingly, Respondent argues that its prior registration of <landsmith.com> trumps Complainant’s subsequent registrations of LANDSMITH with California, Nevada and the USPTO. At the very least, argues Respondent, Complainant has not proven and cannot prove registration in bad faith of the domain name at issue.
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.
Registration and Use in Bad Faith
From the record before the Panel, it is obvious that Respondent registered the domain name at issue in 2001, while Complainant’s first state registrations of LANDSMITH were in 2005. There is no proof that Respondent had actual notice of Complainant’s claimed use of the mark since 1999, and Respondent denies any such knowledge. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii).
Because that conclusion is dispositive of the present matter, the Panel need not address the questions of identicality/confusing similarity or rights/legitimate interests.
Complainant has failed to establish all three elements required under the ICANN Policy. Accordingly, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Chair
Hon. Mark McCormick, Panelist
Prof. David E. Sorkin, Panelist
Dated: October 23, 2007
National Arbitration Forum