WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sealite Pty Limited v. Carmanah Technologies, Inc.
Case No. D2003-0277
1. The Parties
The Complainant is Sealite Pty Limited, an enterprise located in Somerville, Victoria, Australia. The Complainant is represented in this proceeding by Messrs Michael Morehead and David Gibbs of David Gibbs & Associates of Hastings, Victoria, Australia.
The Respondent in this proceeding is Carmanah Technologies, Inc., a corporation located in Victoria, British Columbia, Canada. The Respondent is represented by Patrick C. Trelawny of Jones Emery Hargreaves Swan in Victoria, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar for the disputed domain name is Tucows of Toronto, Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2003. Also on April 10, 2003, the Center transmitted by email to the registrar Tucows a request for registrar verification in connection with the disputed domain name. On April 11, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on April 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set as May 20, 2003, the date on which the Response was in fact received at the Center.
The Center appointed Dennis A. Foster as panelist in this Case on May 27, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
This Decision is due on June 10, 2003.
4. Factual Background
Both the Complainant and the Respondent are in the business of manufacturing and selling nautical equipment, including sea lights. The Respondent registered the disputed domain name, , on August 11, 2000. On January 29, 2003, the Complainant�s legal counsel wrote to the Respondent alleging trademark infringement and demanding the Respondent transfer the disputed domain name to the Complainant. The Respondent ceased operating its web site at the disputed domain name for a time, but the Respondent resumed using the web site on February 16, 2003. The Complainant then initiated this proceeding.
5. Parties� Contentions
Complainant
- The Complainant is a leading Australia-based manufacturer and marketer of LED (Light Emitting Diode) lanterns and navigation equipment for the global marketplace. The Complainant has been trading under the Sealite Pty Ltd name since August 29, 1983.
- The Complainant has operated a web site at "www..au" since 1998, and has expended significant resources in Internet marketing activities.
- In December 2002, a distributor of Sealite products in Tasmania advised the Complainant that the disputed domain name was being used by the Respondent in bad faith.
- The Complainant�s marketing initiatives have resulted in significant traffic to its web site, the extent of which is rapidly growing. As a result of this and other marketing initiatives, it enjoys substantial global reputation and goodwill in relation to its name.
- The name Sealite is well known in the industry as referring to the Complainant as a manufacturer and to its product offerings.
- The Complainant is a member of several professional organizations including the Australian International Marine Export Group, the International Association of Aids to Marine Navigation and Lighthouse Authorities, and the Australian Trade Commission (Complaint Annexes 5-7).
- Sealite has a network of more than 70 distributors situated in over 40 countries, many of which operate Internet sites listing the Sealite brand of products.
- The Respondent is a competitor of the Complainant in the manufacturing and marketing of marine LED lanterns.
- The Respondent has never been engaged in the bona fide offering of goods and services under the Sealite name or mark, is not known by the Sealite name and is not making a non-commercial or fair use of the Sealite mark.
- The Respondent is currently using the disputed domain name to redirect traffic to its web site at "" (Complaint Annexes 13-14), where the Respondent sells various solar powered LED lights. In using the disputed domain name in this manner, the Respondent is clearly seeking to capitalize on Sealite�s extensive reputation in the international marketplace. Its actions have the effect of misdirecting Internet users intending to access information about Sealite or its products. It also has the effect of misleading consumers to believe there is a connection between the Respondent and the Complainant.
- By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the Respondent site or location, or of a product or service on its web site or location. This conduct constitutes bad faith domain name registration and use of the disputed domain name.
- The contested domain name should be transferred to the Complainant.
Respondent
- The Complainant does not have a trademark or service mark in which it has rights.
- The Complainant�s alleged trademark is comprised of two common words, sea and lite (a common variant spelling of the word "light"), which describe the products that the Complainant offers for sale, i.e., a marine LED lantern or sealite (Response Annex 1, Merriam Webster�s Collegiate Dictionary, 10th ed., p.680).
- The Complainant admits that it has no registered trademark rights in or relating to the domain name in dispute in Australia or elsewhere (Complaint para. 11A, page 5).
- As a generic term and reference to the products in association with which it is used, the Complainant�s mark Sealite is incapable of being a registered trademark or acquiring any statutory rights under Australian law (Response Annex 2).
- As its mark is not registered, the Complainant is not entitled to any presumption of validity with respect to its alleged mark and must conclusively establish its legal right.
- In order to establish that the Complainant has acquired common law rights in the mark Sealite sufficient to found an action of passing off, the Complainant must establish that its mark has acquired distinctiveness or a secondary meaning through extended and extensive use. In the absence of proof of secondary meaning of a non-registered generic or descriptive mark, a Complainant has no enforceable rights. Pet Warehouse v. P, WIPO Case No. D2000-0105, (April 13, 2000); Successful Money Management Seminars, Inc. v. Direct Mail Express, NAF Case No. 96457 (March 7, 2001); Business Architecture Group, Inc. v. Reflex Publishing, NAF Case No. 97051, (June 5, 2001).
- In the case of a descriptive or generic trademark or name, such as the case at hand, there is a much higher legal standard or burden required to establish the distinctiveness of the mark under the common law than that which exists for a unique or �coined� mark (County Bookshops Limited v. Guy Loveday, WIPO Case No. D2000-0655, (September 22, 2000).)
- The Complainant has failed to provide sufficient evidence to establish that it has acquired common law trademark rights within Australia or elsewhere: the Complainant has alleged that it has carried on business since 1983, under the name of Sealite, but has not provided any evidence that it has sold products or provided services in association with its alleged trademark during that period.
- The Complainant has only cited membership in trade associations and product information as evidence of use.
- The Complainant has failed to provide any evidence of actual product sales or of packaging or labeling that identifies the nature, duration and extent of use of the mark Sealite.
- There are numerous third parties with prior right and/or equal right to that of the Complainant to the use of the trademark Sealite within Australia, the United States and Canada.
- Even if the Complainant has established common law rights in the trademark Sealite, the Respondent has a legitimate interest in and right to use the disputed domain name .
- Since 1998, the Respondent has continued with the business of Carmanah Research LTD, which had developed, marketed and sold solar-powered marine navigational lights and beacons since 1994.
- Since June 2001, the Respondent has acquired, and continues to acquire, generic domain names that are descriptive of its products, including and , as part of its web-marketing strategy.
- The Respondent was aware of the name of the Complainant company Sealite Pty Limited in December, 2002, when it acquired the disputed domain name, , but, as to the Respondent�s knowledge that the Complainant�s business activity was mainly limited to Australia, the Respondent did not attach significance to any connection between the generic disputed domain name and the Complainant.
- On the day it obtained the disputed domain name registration, the Respondent had a legitimate interest and continues to have such a legitimate interest. The domain name generically describes a certain family of wares, that is marine lighting products, that the Respondent sells and has sold since 1998.
- The Respondent does not suggest or make any reference so as to likely mislead consumers to believe that the Respondent�s goods or products on the disputed domain name web site are those of the Complainant.
- There is no requirement under the Policy that the domain name must have been used as a trademark to identify or distinguish goods. The Respondent has offered sea lights for sale since 1998 and its predecessor company since 1994.
- The Complainant has failed to establish that the Respondent acquired and is using the disputed domain name in bad faith. The Respondent has never offered to sell, rent or transfer the domain name registration to the Complainant or any other party for a premium or profit. The Respondent has not engaged in a pattern of conduct that prevents the Complainant from reflecting its marks in a domain name. At no time has the Respondent intentionally created a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondents� web site or location or product or service.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, paragraph 4 (a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant concedes it does not have a registered trademark for the word "Sealite" as used to refer to marine lighting products. Instead, the Complainant asserts that, by using its company name, Sealite Pty Limited, to sell sea light products, it has acquired trademark rights in that name. This common law type of trademark has been widely recognized with approval under the Policy. (Two cases cited by the Complainant in this regard are: English Harbour Entertainment Limited v. RaveClub Berlin, WIPO Case No. D2002-0287, (May 13, 2002); and Suburban Ostomy Supply Co., Inc. v. Frederic Tremblay, NAF Case No. FAO 301000140639, February 24, 2003.)
However, there is a problem with how the Complainant tries to show the Panel that its trade name also serves as a trademark. The first way the Complainant attempts to show this is to list the trade associations the Complainant belongs to, but this only shows the Panel that the Complainant is known by its company or trade name, Sealite Pty Limited (Complaint Annex 7). It is well settled that the Policy does not protect trade names or company names when this is the extent of their use. See for example Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000), where the Panel stated: "It is true that trade names�.were not intended to be made subject to the proposed dispute resolution procedure�.It must be concluded, therefore, that ICANN did not intend the procedure to apply to trade names�" ).
The second way in which the Complainant attempts to show the Panel that its company name also serves as a trademark is to show some of its products and their names and descriptions (Complaint Annexes 8-12). The Sealite SL60, a solar panel-powered lantern, is a typical example. In the Panel�s view, the only distinctive part of this product name is "SL60". Sealite is not because it is the company�s name and beyond that is only an alternative way to spell sea light, which is what the Complainant�s product is.
The Panel believes the Complainant is well aware of this critical deficiency in its arguments to have the disputed domain transferred to it. Why else would the Complainant so studiously avoid the question that begs to be answered in this Case, namely, why hasn�t the Complainant registered "Sealite" in Australia or some other jurisdiction during the 20 some years it has been in business?
The Respondent on the other hand has answered this question and the Panel believes the Respondent has a strong point when it argues that the Complainant�s company name can not be registered as a trademark in Australia because it is generic for all sea lights. In any case, the Panel does not believe the Complainant has shown its company name is used to distinguish any or all of its sea lights relative to other company�s sea lights. Therefore, the Panel finds the Complainant has not carried its burden of proof to show it has trademark rights in the disputed domain name, , per the Policy at paragraph 4(a)(i).
The Policy requires that the Complainant prove paragraphs 4(a)(i-iii) inclusively. Thus, since the Complainant has failed to prove 4(a)(i), the Panel need not discuss whether the Respondent has legitimate rights and interests in the disputed domain name, or whether the Respondent registered and was using the disputed domain in bad faith.
7. Decision
The Panel has found the Complainant failed to show that the disputed domain name, , is identical or confusingly similar to a trademark in which the Complainant has rights per the Policy at paragraph 4(a)(i).
Therefore, based on Policy paragraph 4(i) and the Rules, paragraph 15, the Panel orders that the disputed domain name, , remain registered to the Respondent, Carmanah Technologies, Inc.
Dennis A. Foster
Sole Panelist
Dated: June 11, 2003
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