6th Dec 2010
national arbitration forum
Future Steel Holdings, Ltd. v. Private Whois Service
Claim Number: FA1010001350737
Complainant is Future Steel Holdings, Ltd. (“Complainant”), represented by Ashlee Froese of Keyser Mason Ball LLP, Ontario, Canada. Respondent is Private Whois Service (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelmaster.com>, registered with Internet.bs Corp.
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.
Diane Cabell, Hugues G. Richard and Dr. Reinhard Schanda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2010; the National Arbitration Forum received payment on October 6, 2010.
On October 7, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <steelmaster.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 October 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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 email@example.com. Also on October 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 and determined to be deficient on November 2, 2010.
On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Hugues G. Richard and Dr. Reinhard Schanda, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is a Canadian company who manufactures pre-fabricated steel buildings of varying sizes for use in residential, agricultural and commercial industries.
Steelmaster Buildings Inc. is the exclusive licensee of the Complainant’s Trademarks in Canada and the US and has been operating in Canada and the US for over 20 years.
Complainant is the owner of a number of Canadian and US registered trade-marks comprised of exclusively or containing the verbiage STEEL MASTER. In respect of the trade-mark, STEEL MASTER, the Complainant and/or the Complainant’s Licensee have used the trade-mark in Canada and the US, respectively, since January 1989 and January 1983 in association with, respectively:
“Prefabricated or portable steel building”; and
“Prefabricated steel buildings and structural parts thereof”.
Given the length of use of the Complainants Trade-marks in the Canadian and US marketplace, the Complainant’s Trade-marks have generated significant goodwill and reputation.
The Complainant and/or the Complainant’s Licensee have diligently invested significant money into advertising and promoting the STEELMASTER brand, for example:
· national TV advertising campaigns throughout the US;
· classified print advertisements;
· feature articles;
· nationally distributed brochures;
· promotional merchandise distributed to customers.
Complainant estimates that the advertising expenditure to date is in excess of $20 million (US).
The exposure of the Complainant’s advertisements placed in several magazines is substantial. The readership number of these magazines are impressive.
Through the Complainant’s good reputation and successful advertising campaign, the Complaint and/or the Complaint’s Licensee has acquired a significant and sophisticated clientele base, which confirms the notoriety of the STEELMASTER brand. This includes high profile clients such as:
· 20th Century Fox
· 3M Corporation
· Army Corps of Engineer
· Canon USA
· US Department of Defense
· General Electric
· Toyota Motor Corporation
On July 8, 2010, the Complainant became aware of the Domain Name and immediately notified the Complainant’s Authorized Representative. At this time the Domain Name was used as a pay-per-click money-generating website that displayed 3rd party advertisements using the following keywords that are inextricably linked to the Complainant’s products and business:
· “metal building”
· “metal storage buildings”
· “metal buildings kits”
· “steel building”
· “buildings metal”
· “metal art”
· “steel frame buildings”
· “metal buildings packages”
· “metal sign”
· “metal building kit”
· “industrial buildings”
· “pre-engineered metal building”
· “storage building”
· “metal garages”
· “steel garages”
· “metal building prices”
It is clear from cross-referencing the above keywords with the statement of wares identified in the Complainant’s Trade-marks, namely:
· prefabricated or portable steel buildings
· prefabricated steel buildings
· portable prefabricated steel buildings
· prefabricated metal buildings
· portable prefabricated steel buildings
that the overlap is not likely to be accidental.
The Complainant’s Authorized Representative immediately issued a Demand Letter to both the Registrar and to the Respondent, asserting the Complainant’s rights to the Domain Name and requesting that the Domain Name be transferred to the Complainant.
Upon receipt of the Demand Letter, the Respondent seemingly changed the content contained on the Domain Name to a simple search engine.
However, upon further exploration of the Respondent’s website, it appears that the Respondent is still attempting to profit off of the goodwill attached to the Complainant’s Trade-marks. In entering search terms based upon the keywords that were displayed on the previous version of the Domain Name, as identified above, the search results as displayed on the revised Domain Name produces a number of research results that still contain 3rd party sponsored links. It is clear that the Respondent is still profiting off the Complainant’s goodwill and reputation.
Complainant contends that Domain Name at dispute is identical to some of the Complainant’s Trade-marks STEEL MASTER. Further the Domain Name is confusingly similar to the Complainant’s registered trade-marks that contain the verbiage STEEL MASTER, which is a dominant feature of some of the Complainant’s Trade-marks.
According to Complainant ownership of a registered trade-mark is prima facie evidence of the Complainant’s rights in the trade-mark.
Complainant further contends that Respondent has no rights or legitimate interest in the Domain name at dispute.
First of all Respondent is not commonly known as Steel Master.
As Respondent has blocked the history of the domain Name a way back machine search of the domain name to determine how the domain name has been used by Respondent, was not possible. According to Complainant it is evident that Respondent is not and has not used the Domain Name with any bona fide offering of any goods or services. Rather, the Domain Name is merely used as a pay-per-click money-generating scheme aimed at profiting off the goodwill generated by the Complainant’s Trade-marks
Furthermore, given the Respondent’s revision to the content contained on the Domain Name, it can be inferred that the Respondent acknowledged that its use of the Domain Name was not for a legitimate use. However, the Respondent continues to use the Domain Name in a manner that is prejudicial to the goodwill generated from the Complainant’s Trade-mark.
In all instances, the Respondent is not using the Domain Name in association with any legitimate non-commercial or fair use. The use of the Domain name by the Respondent is solely to profit off the goodwill generated by the Complainant’s Trade-marks. There is not , and has not been, any indication that the Respondent is intending to use the Domain Name for any purpose other than as a search engine for 3rd party sponsored links that are related to the Complainant’s products and business line.
Complainant notes again that the term STEEL MASTER is exclusively proprietary to the Complainant in respect of, inter alia, prefabricated steel buildings. According to Complainant the Respondent has specifically and intentionally targeted the Complainant’s products/industry in its pay-per-click scheme through the Domain Name for the Respondent’s commercial gain.
Complainant finally contends that Respondent has consistently used the Domain Name as a medium for commercial gain by exploiting the goodwill associated with the Complainant’s Trade-marks through the use of 3rd party sponsored links that are directly related/in competition with the Complainant’s product line and business.
The fact that the Respondent specifically pinpointed products that were linked to those of the Complainant’s makes it easy to infer that the Respondent was aware of the Complainant and its STEELMASTER brand. Moreover, as the Complainant’s Trade-marks were used and registered significantly prior to the Domain name registration, the Respondent is deemed to have notice of the Complainant’s Trade-marks and, inter alia, the Complainant’s right to the Domain Name.
A mistaken belief by the Respondent that the Domain Name was comprise of a generic name would not be a sufficient defense. However, given that the Respondent pinpointed the Complainant’s products, it can be inferred that the Respondent did not believe that the Domain Name was a generic term.
After receiving the initial demand letter, the Respondent amended that website. It can be inferred that the Respondent acknowledges its bad faith dealings with the Domain Name.
The Complainant asserts that the Respondent is not and has never used the Domain Name in good faith.
Moreover, in an effort to settle this matter without having to incur the expense of time of initiating UDRP proceedings, the Complainant explored the possibility of settling this matter and purchasing the Domain Name from the Respondent. Upon inquiry, the Respondent refused to produce documentary evidence that was critical to the Complainant’s purchase of the Domain Name from the Respondent, which further attests to not only the Respondent’s desire to profit off the Complainant’s rights to the Domain Name but also the suspicious conduct and bad faith dealings of the Respondent generally in relation to the Domain name.
Altogether, the evidence clearly indicates that the Respondent ha snot selected the Domain Name randomly but has pinpointed the Domain Name to offer 3rd party sponsored links that directly profit off of the Complainant’s Trade-marks. Such bad faith use of the Domain name cannot be cured, thereby legitimizing the Respondent’s rights to the Domain Name.
Respondent contends that there is no basis for transferring the disputed domain steelmaster.com (the “Disputed Domain”) to Complainant. This is a case of reverse domain name hijacking plain and simple. At the outset, “steel master” is a common descriptive term composed of the words “steel” and “master.” Anyone is entitled to register a descriptive term in a domain name on a first-come first served basis, provided there is no intent to target a trademark. Respondent acquired the Disputed Domain in a Snap names auction on December16, 2004, after it expired and was deleted. Complainant took no action until now – almost six year later –to enforce its purported trademark rights. Complainant’s more than half-decade delay in bring this action raises a strong inference that the Disputed Domain was not registered or used in bad faith, and that Complainant did not believe that there was any impropriety. Had there been any wrongdoing, Complainant arguably would have objected much earlier.
Respondent’s legitimate interest in the Disputed Domain is established based on the fact that the domain was registered entirely in good without intent to target any trademark with the registration. Respondent registered the Disputed Domain because it understood “steel master” to be a descriptive term composed of two words in the English language. “Master” is often associated with any number of words to create a term that means a person eminently skilled in a craft or activity. Zen master, chess master, master plumber are but a few examples. Because “master” is a laudatory term it is associated with
numerous businesses and trademarks. It’s no surprise that the term “steel master” is, subject to substantial third party use, including five (5) U.S. registered trademarks, and about 2.3 million organic 2 third party Google search results. Examples include Steelmaster organizers by MMF Industries; Steelmaster Transfer, Inc.; Steelmaster, a division of Buetfering Schleiftechnic GmbH; the Remington Steelmaster guitar; Steelmaster fasteners of Auckland; MEC Steelmaster Reloader; the Stanley
SteelMaster™ hammer; Steelmaster deburring machines Steelmaster Corp. of Middlebury, IN; and Steelmaster Finland.
Respondent has not engaged in bad faith registration or use. There is absolutely no evidence Respondent registered the Disputed Domain with Complainant’s trademark in mind or to take advantage or benefit from Complainant’s trademark or goodwill. The registration of the Disputed Domain was entirely in good faith based on the fact that it incorporated a common descriptive term. Respondent’s good faith basis for registering the Disputed Domain is further corroborated by the other domain names Respondent has also registered that incorporate a term composed of the a descriptive word followed by the word “master.” Examples include: clutchmaster.com, hardmaster.com, printmaster.org, and truckmaster.com. Respondent is also the registrant of numerous generic word and other descriptive term domain names including laptopcomputer.com, highsecurity.com, fajitas.com, carkeys.com, cordlessphone.com, and hilltop.com. Respondent also owns domain names that were unsuccessfully challenged under the UDRP, including: tirediscounter.com, propellerhead.com, and archivers.com. It is recognized under the Policy that a legitimate interest is established where the disputed domain name was registered as part of a larger pattern of related good faith domain name registrations. Such pattern is clearly present here.
Complainant is correct that the Internet WayBack machine at http://archive.org has no archived screenshots of steelmaster.com. This does not mean that the Disputed Domain has not been used. To the contrary, Respondent has used the Disputed Domain to display PPC links in connection with the domain name parking service HitFarm.com. Access to Domain Names hosted on HitFarm are blocked via robots.txt. This prevents Archive.org’s from crawling pages hosted with the parking service. Respondent has no ability to unblock the robots.txt
As Respondent advised Complainant prior to the initiation of the proceedings, the links that appeared were auto-generated by HitFarm which uses a feed from Yahoo.com. The links are associated with advertisers who have bid for their sponsored ads to appear in connection with user key word searches. In this case, the links on the web site, when clicked, generate a Yahoo search for the corresponding keyword. Respondent was unaware of the particular links that appeared on the web site. As soon as Respondent learned of the links from Complainant’s cease and desist letter, Respondent changed the web site as a courtesy to Complainant to avoid a dispute. Respondent advised Complainant of this prior to the suit in settlement communications. Respondent specifically stated that the change was made as an accommodation. Respondent modified the web site in the light of day. It is well-established that such unintended links do not constitute evidence of bad faith use or registration under the Policy. Even if the links constitute a bad faith use, these unintended links, occurring long after the Disputed 3 Domain was registered, do not support a finding that Respondent had a bad faith intent when it registered the Disputed Domain. Indeed, such subsequent and unintended actions cannot convert Respondent's good faith original registration of the Disputed Domain into bad faith. Complainant notes that a search for the term “steelmaster” on steelmaster.com still returns links for its goods and services. This is the case as well if a user were to search for “steelmaster” or “steel master” on Yahoo or Google. Related sponsored
search results appear alongside organic (non-sponsored) search results.
Proof of bad faith registration of a common descriptive term domain name requires evidence that Respondent specifically targeted the Complainant’s mark. Because of the substantial third party use of the term, it cannot be assumed that Respondent targeted Complainant’s trademark. The fact is the only target of Respondent’s registration was the common descriptive term “steelmaster.” Not only does that fail to support a finding of bad faith registration, such registration in and of itself, establishes Respondent’s legitimate interest.
Complainant’s argument that Respondent’s use of a domain privacy search raises an inference of bad faith is absurd under the circumstances. Respondent’s counsel promptly contacted counsel for Complainant. Respondent promptly arranged for the links objected to by Complainant to be removed. Respondent’s counsel provided Complainant with a comprehensive written reply to its cease and desist letter and, in that letter, identified the Respondent as Star Access, Inc. At no time has Complainant been unable to communicate with or ascertain the identity of Respondent. The use of a privacy service is
absolutely legitimate. It is a common practice and prudent to avoid spam and to protect privacy. Absent other factors demonstrating bad faith and/or the use of privacy to avoid the implementation of the proceedings, the use of a privacy service is simply a non-factor.
Respondent contends that Complainant has abused the proceedings and engaged in reverse domain name hijacking. Notwithstanding that Complainant cannot prove Respondent has violated the Policy, Complainant violated its certification that the Complaint was “complete and accurate.” In fact, the Complaint appears to be intentionally incomplete and, at times, misleading. Complainant has provided a mere portion of the exchange between counsel regarding the sale of the Disputed Domain.1 Complainant failed to state that Respondent advised Complainant that it was only seeking reimbursement of the amount it paid for the Disputed Domain which was $3,600. Complainant asked for proof and Respondent promised that the proof of payment would be provided if Complainant agreed to the settlement. Respondent’s counsel also advised that because the auction was open to the public, verification would not be an issue. Notwithstanding Respondent’s efforts to amicably and professionally resolve this matter at no profit to itself, Complainant initiated these proceedings without warning and, in so doing, withheld material evidence from the Panel, including Respondent’s detailed reply to Complainant’s cease and desist letter which clearly demonstrated Respondent’s good faith registration and use of the Disputed Domain. At the very least, it was incumbent on Complainant to reference the complete communications including the emails between counsel and the response to the cease and desist letter. Instead, Complainant misrepresented those communications, suggesting that this proves Respondent’s “desire to profit off the Complainant’s rights,” and demonstrates “suspicious conduct and bad faith dealings of the Respondent generally.” It is only Complainant that has schemed in its attempt to appropriate Respondent’s lawfully acquired property.
Respondent rejects as utter nonsense Complainant’s suggestion that Respondent’s counsel contacting Complainant to settle a matter for $3,650, which is the amount Respondent paid for the Disputed Domain, was “suspicious” and in “bad faith.” Respondent’s counsel advised that it would provide a verifiable receipt demonstrating what Respondent paid for the Domain Name. In a most generous fashion, Respondent offered for Complainant to pay the same price paid by Respondent, notwithstanding that it was Respondent who successful bid against numerous third parties, and that Respondent clearly acquired the Disputed Domain in good faith, as set forth in the response to the cease and desist letter. Respondent’s counsel truthfully represented to Complainant’s counsel that the price was $3,650.00. Complainant’s attempt to spin these good faith negotiations into some suspicious bad faith scheme is pure chicanery. What makes the misrepresentation a clear abuse of the proceedings is the fact that Complainant failed to state in the Complaint that Respondent committed to providing the proof of purchase price if Complainant agreed to settle the matter. The end result is that Complainant and Respondent both have had to expend unnecessary fees in this matter. Respondent is confident that a careful review of the record, including Respondent’s reply to Complainant’s cease and desist letter, along with the a complete thread of the substantive emails between the parties’ respective counsel, will demonstrate that it is Complainant, and not Respondent, that has violated the Policy.
Respondent contends that Disputed Domain solely incorporates the descriptive term “steelmaster,” which is composed of the common word “steel” and “master.” “Master” is often associated with any number of words to create a term that means a person eminently skilled in a craft or activity. Zen master, chess master, master plumber are but a few examples. The term “steelmaster” is subject to substantial third party use on the Internet. A Google search for “steelmaster” without the words “building,” “shed,” “future,” or “Canada” to exclude references to Complainant, 5 yielded 2.29 million third party results. There are 8 third party U.S. registered trademarks registered to five (5) third party registrants for a variety of goods including metal high speed roll-up doors, marketing displays, grinding machines, protective gloves, lubricating grease, office supplies, and security boxes.
Respondent purchased the Disputed Domain on December 16, 2004 for $3,650.00, as the successful bidder at a SnapNames.com auction. SnapNames.com auctions domain names that expire and are deleted. Respondent acquired the Disputed Domain because it incorporated a common descriptive term to which it believed no party could claim exclusive rights.
Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the domain name. Respondent did not register the Disputed Domain with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site.
Respondent did not register the Disputed Domain to prevent Complainant from owning a domain name incorporating its trademark. Id. Respondent owns several other domain names which incorporate a term composed of the a common word followed by the word “master.” Examples include: clutchmaster.com, hardmaster.com, printmaster.org, and truckmasters.com. Respondent is also the registrant of numerous generic word and descriptive term domain names including laptopcomputer.com, highsecurity.com, fajitas.com, carkeys.com, cordlessphone.com, and hilltop. Respondent also owns domain names that were successfully defended under the UDRP, including: propellerhead.com, and archivers.com.
Respondent hosts the Disputed Domain with HitFarm.com, a domain name monetization service, which displays pay-per-click advertising links on hosted domain names and shares advertising revenue earned from the ads with the domain name owners. HitFarm populates the links on the domain names it hosts with a sponsored advertising feed from Yahoo. The links are generated automatically by Yahoo and HitFarm’s technology based on the contextual meaning of the terms within the domain name. The sponsored ads that are displayed are for advertisers bidding on those keywords across the entire Yahoo advertising platform. The sponsored ads that appear in connection with the term “steelmaster” are the same ads that appear along organic search results in connection with a user search query entered at Yahoo.com. Similarly, if a user enters the query “steelmaster” in the search box on Respondent’s web site, it will also yield sponsored ads similar to those appearing alongside such a query run on Yahoo.com.
Respondent does not dispute whether Complainant has a trademark identical or confusingly similar to the Disputed Domain, except to note that Complainant does not enjoy exclusive rights to the term “steelmaster.” To the contrary, at least six other parties own trademark registrations for this term.
Respondent further contends that it has right and estimate interests in the Domain name at dispute. “Steelmaster” is a common descriptive term composed of the common words “steel” and “master.” The mere registration of domain names that contain descriptive terms establishes a legitimate interest under the Policy, provided the domain was not registered with a trademark in mind.
There can be no doubt that Complainant’s mark is a common descriptive term subject to substantial third party use. There is no evidence the Disputed Domain was registered with Complainant’s trademark in mind. To the contrary Respondent registered the Disputed Domain because is happened to be offered for sale at a SnapNames.com expired domain name auction.
Respondent’s legitimate interest is also supported by the fact that Respondent has registered a number of domain names which, like steelmaster.com, incorporate common words together with the word “master,” including blademaster.com, clutchmaster.com, hardmaster.com, printmaster.org, and truckmasters.com.
It is true, as Complainant has alleged, that links related to Complainant’s goods and services have appeared on Respondent’s web site. But these were not intended by Respondent and, thus, do not make Respondent’s interest illegitimate. Respondent did not select the links and was unaware of the links. They were auto-generated by Yahoo!, Hitfarm’s upstream provider. Respondent owns hundreds of domain names and, while it seeks to avoid conflict with trademark owners, is unable to monitor every dynamically generated link created by Yahoo at all times. After Respondent became aware of the links, it took action to have them removed by converting the site to a generic search page. Respondent has acted in good faith at all times Because they were unintended, the links do not in any way make Respondent’s interest illegitimate.
Accordingly, Respondent has demonstrated that it has rights and a legitimate interest in the Disputed Domain.
Finally Respondent contends that Complainant has not demonstrated that the Domain Name was registered and is being used in bad faith.
There is absolutely no evidence of bad faith registration or use. Respondent had no knowledge of Complainant’s alleged mark when it registered the Disputed Domain. Respondent simply registered the domain because it incorporated a common descriptive term and because it was offered for sale at a SnapNames.com expired domain name auction.
As explained above, and admitted in the Complaint, the term “steel master” is subject to
substantial third party use. This includes 6 third party registered U.S. trademarks and 2.9 million third party Google search results. Absent direct proof that a common term domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.
Respondent should also be found to have registered the Disputed Domain in good faith since it was purchased as a public SnapNames expired domain name auction. The expiration of a domain name is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith.
Moreover, Respondent only sought to have its out-of-pocket acquisition costs reimbursed. Under the UDRP it only constitutes bad faith to attempt to sell a domain name to profit from a Complainant’s trademark. Here, the opposite is actually true. Complainant was offering the domain name at cost (i.e. at no profit) to Complainant because it alleged to own a trademark. Such professional behavior is far from
bad faith. Respondent’s behavior has at all times been represented by good faith and professionalism – a stark contrast to Complainant’s roughhousing.
Complainant’s argument that Respondent’s use of a domain privacy search raises an inference of bad faith is absurd under the circumstances. The privacy service Respondent used forwarded Complainant’s cease and desist letter to Respondent. Respondent’s counsel promptly contacted counsel for Complainant following receipt of the cease and desist letter. Respondent promptly arranged for the links objected to by Complainant to be removed. Respondent’s counsel provided Complainant with a comprehensive written reply to its cease and desist letter and, in that letter, identified the Respondent as Star Access, Inc. At no time was Complainant been unable to communicate with or ascertain the identity of Respondent and, thus, the use of the privacy service is absolutely legitimate.
Finally, Complainant did not initiate these proceedings until more than 5 years following
Respondent’s registration of the Disputed Domain. This delay in taking action helps to raise an inference that the Complainant did not truly believe Respondent engaged in bad faith registration.
There is absolutely no basis for this claim. A finding of Reverse Domain Name Hijacking is warranted where “the [c]omplainant 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.”
Complainant withheld material evidence from the Panel to create a misleading version of the facts. Complainant failed to disclose that the full communications between Complainant’s counsel and Respondent’s counsel, particularly in connection with Respondent’s promise to provide a verifiable receipt for the SnapNames.com purchase. Complainant spun facts regarding a very professional reply to Complainant’s C and D Letter and Respondent’s generous offer to transfer the Disputed Domain to Complainant at no profit as some sort of sinister scheme. Such misrepresentation constitutes an abuse of the proceedings and warrants a finding of reverse domain name hijacking.
Complainant has brought forth case with no basis, which it must have known had no basis. Complaint has further mislead the Panel by withholding key evidence demonstrating Respondent’s good faith registration and use of the Disputed Domain. Accordingly, the Panel should find that Complainant has abused the proceedings and, accordingly, issue a decision finding that Complainant has engaged in reverse domain name hijacking.
The Panel finds that:
1. the Domain Name <steelmaster.com > is confusingly similar to Complainant’s marks,
2. the Respondent has established rights and legitimate interests in the Domain Name <steelmaster.com >and
3. the Respondent has not registered the Domain Name <steelmaster.com >, in bad faith.
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."
Preliminary Issue: Deficient Response
Although Respondent’s Response was received without the annexes separated from the Response and therefore was not in compliance with Forum Supplemental Rule 5(c)(i), the Panel has decided to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
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
According to the UDRP, in order to satisfy Policy ¶ 4(a)(i), a complainant is required to prove that Respondent’s “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.”
Complainant, Future Steel Holdings, Ltd., provides evidence that it holds multiple trademark registrations with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA 450,472 issued November 27, 1992) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,376,644 issued December 31, 1985) for Complainant’s STEELMASTER and STEEL MASTER marks respectively.
Complainant alleges that Steelmaster Buildings, Inc. is the exclusive licensee of Complainant’s STEELMASTER and STEEL MASTER marks in relation to the manufacture of pre-fabricated steel buildings of varying sizes for use in residential, agricultural, and commercial industries. The Panel finds that Complainant has established rights in its STEELMASTER and STEEL MASTER marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends that Respondent’s <steelmaster.com> domain name is identical to Complainant’s STEEL MASTER mark pursuant to Policy ¶ 4(a)(i). The Panel finds that the disputed domain name contains Complainant’s entire mark, removes the space separating the terms of the mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel is of the view that the alterations to the disputed domain name are insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Thus, the Panel concludes that Respondent’s <steelmaster.com> domain name is identical to Complainant’s STEEL MASTER mark under Policy ¶ 4(a)(i).
While Respondent contends that the <steelmaster.com> domain name is comprised of common and descriptive term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Rights or Legitimate Interests
The Panel is of the view that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent attempts to establish rights and legitimate interests under Policy ¶ 4(c)(i), by demonstrating a bona fide offering of goods and services. Respondent contends that it is in the business of purchasing domain names that include the term “master.” Respondent asserts that it has purchased the <clutchmaster.com>, <hardmaster.com>, <printmaster.com>, and <truckmasters.com> domain names. Respondent alleges that it hosts the <steelmaster.com> domain name with the third-party, <HitFarm.com>, which displays pay-per-click advertising hyperlinks on hosted domain names and shares advertising revenue with domain name owners. Respondent avers that the hyperlinks on the resolving website are populated based on the contextual meaning of the terms within the domain and based on the search query entered into the search engine. Respondent argues that it currently uses the disputed domain name to resolve to a website with generic hyperlinks, that do not relate to Complainant’s business, such as dating websites. The Panel determines that Respondent’s use of the <steelmaster.com> domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services).
Respondent alleges that Complainant first contacted Respondent about selling the domain name to Complainant for the amount of money that Respondent originally paid for the domain name. Respondent claims that it purchased the <steelmaster.com> domain name for $3,650.00 in a public auction and offered to sell the domain name to Complainant for that amount. Respondent asserts that it offered to provide proof of purchase if Complainant would agree to Respondent’s price. According to Respondent, Complainant did not respond to Respondent’s offer to provide the verifiable purchase information. The Panel finds Respondent’s offer to sell does not mean Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent claims that the disputed domain name formerly resolved to a website that contained hyperlinks relating to Complainant’s business. According to Respondent, Respondent did not know that the third-party, Yahoo!, had provided such hyperlinks to the website. Respondent contends that after Respondent became aware of the hyperlinks, Respondent converted the website into a generic search page. The Panel finds that Respondent reacted responsibly and made a good faith effort to eliminate any unintended confusion. See Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007) (The panel accepted respondent’s explanation that it did not know until receiving a cease and desist letter from the complainant that, without instructions, its registrar “had posted unauthorized third party links on the website and that when it discovered this fact it was ‘shocked,’ demanded that they be removed and when they were not removed, [the] respondent changed its registrar.”).
Respondent also argues that the terms of the <steelmaster.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Since the Panel agrees with Respondent, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Registration and Use in Bad Faith
To succeed with a UDRP claim, Policy 4(a)(iii) requires a Complainant to establish that both registration and use are in bad faith. Panel finds that Complainant failed to meet the burden of proof of bad faith registration. 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 the 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).
Policy ¶ 4(b) suggests several examples of bad faith. No assertion is made that Complainant was prevented from registering a corresponding domain name as described in Policy ¶ 4(b)(ii). Policy ¶ 4(b)(iii) requires disruption of a competitor’s business and Policy (b)(iv) requires an intent to lure traffic and create confusion. Given the multiple marks that incorporate the term “steel master” however, it is by no means certain that it is Complainant who would have been the particular target of such disruption or confusion. Nor is there any indication that such occurred during the first 4 years of registration by Respondent. The Panel is not persuaded that the registration was made with an intent to extort value from Complainant’s mark. We accept Respondent’s evidence that its business model is the acquisition and sale of domain names that correspond to common words and that its purpose at registration was not in violation of Policy 4(b)(ii), (iii) or (iv). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Nor does the Panel find that Respondent’s offer to sell the disputed domain name was not evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). Respondent provided evidence that it purchased the <steelmaster.com> domain name at a domain name auction for $3,650.00 as established in its Annex (Exhibit 5). At no time did Respondent approach Complainant to initiate a sale, but rather simply responded to Complainant’s demand to transfer the domain with an offer to do so if Complainant would pay these out-of-pocket expenses. See Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion); see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant that the complainant, and not the respondent had initiated contact, inquiring about purchasing the domain name <craftwork.com>, and that this fact tended to weigh against a finding of bad faith).
The Panel takes no position on whether the recent use of the domain name to featured hyperlinks relating to Complainant’s business was in bad faith. Some Panelists would find that this simply constitutes a directory service and is therefore legitimate where the directory results are in fact related to the common meaning of the domain name. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith). As the Panel finds a lack of bad faith registration, it need not address this point.
Reverse Domain Name Hijacking
Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends 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 and that Complainant materially misrepresented the terms of Respondent’s offer to sell the domain. The Panel finds that Complainant’s filing of the instant Complaint was based on a good faith belief that the use of the domain <steelmaster.com> to generate links to its products was sufficient to establish bad faith. As such, Complainant’s filing is not an abuse of the UDRP Policy. Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
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 <steelmaster.com> domain name remains with RESPONDENT.
Dr. Reinhard Schanda, Chair
Diane Cabell, Hugues G. Richard, Panelists
Dated: December 6, 2010