Complainant is DoorKing, Inc. of Inglewood, California, United States of America, represented by J. Mark Holland & Associates of Newport Beach, California, United States of America.
Respondent is United Marketing Group, Inc., of Los Angeles, California, United States of America, represented by John Berryhill of Ridley Park, Pennsylvania, United States of America. 2. The Domain Names and Registrars
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2012. On May 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Response was filed with the Center on May 28, 2012.
The Center appointed Douglas M. Isenberg, Gaynell Methvin and W. Scott Blackmer as panelists in this matter on June 29, 2012. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background
Complainant states that it is the owner of three federal trademark registrations for the mark DOORKING in the United States of America (“US”), which “has been and continues to be Complainant’s company name and main trademark for more than 60 years”; and that it is the owner of two federal trademark applications for the mark DKS in the US, “which Complainant has been using for many years.” In support thereof, Complainant cites and provides evidence of the following, all of which are (or were) used in connection with movable gates or similar or related goods:
Mark Registration or Application No. Date of First Use in Commerce Date of Registration Status
DOORKING
Reg. No. 594,131
December 28, 1951
August 24, 1954
This registration was not renewed and therefore has expired.
DOORKING
Reg. No. 2,387,089
December 10, 1951
September 19, 2000
Registration cancelled because registrant did not file an acceptable declaration under Section 8.
DOORKING
Reg. No. 2,367,899
December 10, 1951
July 18, 2000
Registration cancelled because registrant did not file an acceptable declaration under Section 8.
DOORKING
App. No. 85,506,624
December 10, 1951
N/A
A non-final Office action has been sent (issued) to the applicant.
DOORKING
App. No. 85,506,647
December 10, 1951
N/A
A non-final Office action has been sent (issued) to the applicant.
DKS
App. No. 85,506,664
March 1, 2000
N/A
A non-final Office action has been sent (issued) to the applicant.
DKS
App. No. 85,508,694
March 1, 2000
N/A
A non-final Office action has been sent (issued) to the applicant.
With respect to the “dead” DOORKING trademarks listed above (that is, US Registration Nos. 594,131; 2,387,089; and 2,367,899), Complainant explains that “the registrations inadvertently had been allowed to lapse, due mainly to Complainant changing attorneys.”
The Disputed Domain Name was created on July 16, 2010; and the Disputed Domain Name was created on February 17, 2005.
Respondent states that it is “a reseller of Complainant’s products” and that its websites associated with the Disputed Domain Names each “resolves to a web page prominently identifying the seller as ‘Elite Gates’,” which Respondent describes as “a trade name of” Respondent, and that each website “advertises only the Complainant’s products for sale.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name “includes the identical mark that has been and continues to be Complainant’s company name and main trademark for more than 60 years: DOORKING”; and the Disputed Domain Name “includes Complainant's other trademark DKS”.
- Complainant has not authorized Respondent “to use Complainant’s name” to “sell[] certain of Complainant’s products”; Respondent’s websites are “covered with Complainant’s products and other od Complainant’s trademarks”; and Respondent “is attempting to mislead customers into thinking that they are purchasing products FROM the genuine company (Complainant DoorKing)”.
- “Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location”. B. Respondent
Respondent contends, in relevant part, as follows:
- With respect to Complainant’s allegations of trademark rights in the mark DKS, “the Complainant does not present competent evidence of an enforceable right, but merely references two pending US registration applications”.
- Respondent has rights or legitimate interests in each of the Disputed Domain Names because Respondent clearly satisfies three of the four requirements applicable to resellers described in the landmark decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, namely, Respondent actually offers the goods at issue; the sites accurately disclose Respondent’s relationship with Complainant; and Respondent has not tried to corner the market in all domain names. Further, Respondent contends that it has satisfied in intention of the other element of Oki Data as well – which states, “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods” – because “links to other clearly identified manufacturers [on Respondent’s websites] do not… change the character of the Respondents' website as one concerned overwhelmingly with the sale of the Complainant’s products”. (Internal punctuation omitted.)
- Respondent has not registered and used the Disputed Domain Names in bad faith because “the use of domain names for the purpose of exclusively highlighting or showcasing genuine goods in a non-deceptive manner is a legitimate nominative use of trade and service marks in domain names, and perforce not a ‘diversionary’, ‘misleading’ or ‘competitive’ use of a trade or service mark under relevant US law or principles based on the Oki Data factors as they have been further developed and applied under the Policy”. 6. Discussion and Findings
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.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element, it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – with respect to either of the Disputed Domain Names, the Panel makes no findings with respect to the second or third elements of the Policy. A. Identical or Confusingly Similar
Although many decisions under the Policy begin with an analysis of whether the disputed domain name is identical or confusingly similar to Complainant’s trademark, paragraph 4(a)(i) requires as an initial matter – that is, before engaging in any comparison of a domain name to a trademark – that a Complainant show that it “has rights” in a trademark.
With respect to its assertion of rights in the mark DKS, Complainant cites only the two pending applications listed above and says that it “has been using” this mark “for many years.” However, as numerous decisions under the Policy have held, a trademark application is not evidence of any rights. See, e.g., 24Poker AB v. Jim Bim,WIPO Case No. D2005-1097 (“[t]here is general agreement among panelists that a trademark application does not establish a trademark right within the meaning of paragraph 4(a)(i)”); and Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM.,WIPO Case No. D2002-0707 (“[a] trademark application does not establish a trademark right”).
Furthermore, Complainant has not asserted – other than its broad and unsupported statement that it “has been using” the mark DKS “for many years” – any common law rights in and to the mark DKS. In any event, to establish such common law rights, the Policy requires that a Complainant provide “[r]elevant evidence of… ‘secondary meaning’ includ[ing] length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. Complainant has provided no such evidence.
Accordingly, Complainant has failed to establish that it “has rights” in the DKS mark and, therefore, with respect to the Disputed Domain Name , Complainant has failed to satisfy its burden under paragraph 4(a)(i) of the Policy.
Similarly, with respect to Complainant’s assertion of rights in the mark DOORKING, the pending trademark applications cited by Complainant do not establish trademark rights for purposes of the Policy. Furthermore, Complainant has not provided any evidence of the length and amount of sales under the DOORKING trademark, the nature and extent of advertising, consumer surveys or media recognition, so Complainant has not established that it has common law rights in and to the DOORKING mark. And, although Complainant apparently once owned three federal trademark registrations for DOORKING, all of these registrations have expired or been cancelled – a fact that Complainant blames, without elaboration, “mainly to Complainant changing attorneys” (emphasis added). While the Panel has no reason to question this unsupported excuse, the Panel is aware of no authority that expired or cancelled trademark registrations are appropriate evidence of rights under the Policy. As a result, the Panel is left with no evidence in the Complaint of any rights that Complainant has in the mark DOORKING.
Accordingly, Complainant has failed to establish that it “has rights” in the DOORKING mark and, therefore, with respect to the Disputed Domain Name , Complainant has failed to satisfy its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so. C. Registered and Used in Bad Faith
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Presiding Panelist
Gaynell Methvin
Panelist
W. Scott Blackmer
Panelist
Dated: July 9, 2012
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