The Complainant is Kimmel Scrap Iron & Metal Co. of Detroit, Michigan, United States of America (“USA” or “US”), represented by Clark Hill PLC, USA.
The Respondent is Michael Bader, P-1 Enterprises of Eastpointe, Michigan, USA. 2. The Domain Name(s) and Registrar(s)
The disputed domain name (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 3, 2016. 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. 4. Factual Background
The Complainant, a corporation organized under the laws of the US State of Michigan, was founded by the Kimmel family in 1930 and has operated in the metal scrap industry in Detroit, Michigan since 1950. The Complainant claims KIMMEL as a common law service mark for metal scrapping and recycling services since “at least as early as 1950”, with average annual sales of about USD 4,200,000 over the period since then and a total expenditure of some USD 600,000 since 1950 on advertising and marketing. The record includes media references to the Complainant as a metal scrap and recycling business.
As shown in the Registrar’s WhoIs database, the Domain Name was registered on February 23, 2004, by Michael Bader of P-1 Enterprises (collectively, the “Respondent”). The Complaint explains that “P-1 Enterprises” or “P 1 Enterprises” is a fictitious name formerly used by Mr. Bader, who was also affiliated with a business known as “LAN Solutions”. The Complainant engaged LAN Solutions in 2004 to obtain a domain name and develop a website for the Complainant. Mr. Bader did so by registering the Domain Name, but in his fictitious business name (without the Complainant’s knowledge, according to the Complaint). The Domain Name redirected to a site controlled by Mr. Bader at “/kimmel”, which served as the Complainant’s website for approximately two years, displaying the Complainant’s content and contact information. Screenshots of this “old website” of the Complainant are available online through the Internet Archive’s Wayback Machine. The Domain Name currently continues to resolve to the above‑mentioned website.
The Complainant found Mr. Bader unresponsive to its service requests and retained another consultant in 2007 to modernize its website. At that point, the Complainant discovered that it had no control over the website and that customer inquiries sent through the website were no longer being delivered to the Complainant. The Respondent reportedly did not reply to the Complainant’s repeated contact attempts, and the Complainant ultimately created a new website at “.” Seven years later, the Complainant attempted again to contact the Respondent without success and eventually initiated the current UDRP proceeding, as the Respondent continued to renew the Domain Name registration. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its claimed KIMMEL common law service mark and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondent registered the Domain Name covertly in his own fictitious business name and kept control of the Domain Name, while aware that he had no right to it, to disrupt the Complainant’s business or otherwise in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant does not hold a registered trademark but claims that the family name that comprises the distinctive portion of its company name has acquired secondary meaning as a service mark in a particular geographic area. The consensus view on common law or unregistered marks s summarized as follows in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys, and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the complainant’s rights in a common law trademark.”
The Panel considers that the record here is barely adequate to establish that KIMMEL has acquired such secondary meaning for purposes of common law protection as a trademark. As the business has been in continuous operation for 65 years, however, the Panel finds that the name is likely to have acquired distinctiveness in the metal scrapping business in the Detroit area, and there is some media as well as sales support for this conclusion. Accordingly, the Panel finds that the Complainant has established interests in a mark for purposes of the first element of the Complaint.
The first element of the UDRP is “essentially a standing requirement” requiring “a straightforward visual or aural comparison” of the Complainant’s mark with the alphanumeric string in the Domain Name. WIPO Overview 2.0, paragraph 1.2. The Domain Name is comprised of the mark and the generic word “scrap”, which does not avoid confusion, both because it is generic and because it is relevant to the Complainant’s business and, in fact, forms part of the Complainant’s name.
The Panel concludes that the first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, the Respondent has not come forward to assert any rights or legitimate interests in the Domain Name or to dispute the Complainant’s account of the history between the Parties. The Complainant hired the Respondent to obtain the Domain Name on the Complainant’s behalf, and the Respondent used the Domain Name to create a website for the Complainant. There is no indication that the Respondent had any business with a similar name or, in fact, used the Domain Name other than as the Complainant’s agent, although not, perhaps, entirely in the manner the Complainant would have preferred.
Thus, the Panel concludes on this record that the Respondent’s only legitimate interest in obtaining the Domain Name was on behalf of the Complainant and that the Respondent had and has no rights or legitimate interests of its own in the Domain Name. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (“you” refers to a respondent):
“(ii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
These illustrations cited by the Complainant do not readily fit the circumstances of this case. There is no evidence that the Respondent competed with the Complainant or used the Domain Name to misdirect Internet users for commercial gain. Along with most UDRP panels, this Panel also declines to find bad faith based on the Respondent’s presumed knowledge and motives at the time of a more recent renewal of the Domain Name registration. See WIPO Overview 2.0, paragraph 3.7.
The Complainant argues that it never intended for the Respondent to register the Domain Name in its own business name, but it cites no instructions to the contrary, and it accepted the arrangement for years.
The Panel does not find sufficient evidence on this record to conclude that the Respondent acted in this manner as part of a scheme to defraud the Complainant or steal business from the Complainant.
The Panel is sympathetic to the Complainant’s plight; it is not the first company to realize that its agent has kept control of a domain name when their relationship ended. These problems can be avoided with appropriate contract provisions and supervision, and they may be amenable to legal remedies, but often not in a UDRP proceeding. The reason for that is simple: The Policy, paragraph 4(a)(iii) requires a showing of bad faith both in the registration and in the use of the Domain Name. It is typically difficult in such cases to establish bad faith at the time of registration, when the agent registered a domain name at the behest of the principal. The Respondent in this case registered the Domain Name at the Complainant’s request and built an associated website that the Complainant used in its business. The Respondent later provided allegedly unsatisfactory service and failed to turn over control of the Domain Name. That may be grounds for a contract claim or another legal complaint. But unless it can be shown that the Respondent likely planned this course of action from the outset, to wrest more money from the Complainant, for example (and the Respondent here has made no such demands), it does not appear to be evidence of bad faith in the original registration of the Domain Name.
The Panel concludes, therefore, that the third element of the Complaint has not been established. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: August 8, 2016
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