Astro-Med, Inc. v. B. Evans; Merry Christmas Everyone!

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans

Case No. D2000-0072

1. The Parties

1.1 Complainant is Astro-Med, Inc., a corporation organized and existing under

the laws of the State of Rhode Island, USA, with a principal place of business

at 600 East Greenwich Avenue, West Warwick, Rhode Island, USA. Respondents are

Merry Christmas Everyone!, an entity with unknown legal status, with an address

at 8635 W. Sahara, Las Vegas, Nevada 89117, USA, and B. Evans, with e-mail address

as bevans8576@aol.com. Complainant is represented by counsel in this proceeding

(Duffy & Sweeney, Ltd., Providence, Rhode Island, USA).

2. The Domain Name(s) and Registrar(s)

2.1 The two domain names which are the subject of this proceeding are "grasstelefactor.com"

and "grass-telefactor.com", owned by Merry Christmas Everyone!, with

B. Evans as administrative contact. Both domain names are registered with Network

Solutions, Inc., Herndon, Virginia, USA.

3. Procedural History

3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center

("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy

("Policy") on February 17, 2000.

3.2 An Acknowledgment of Receipt of Complaint was sent from WIPO to Complainant

on February 17, 2000, wherein additional requests were made by WIPO pursuant

to the Policy Rules ("Rules") and the WIPO Supplemental Rules ("Supplemental

Rules"). Complanaint submitted a Response to these requests the same day.

3.3 On February 17, 2000, a Request for Registrar Verification was sent to

Network Solutions, Inc. which issued its verification on February 18, 2000.

3.4 The Notification of Complaint was sent from WIPO to Respondents by e-mail,

courier, and facsimile on February 18, 2000.

3.5 Since no Response was filed by March 8, 2000 pursuant to Rule 5(a), a Notification

of Respondent Default was sent on March 9, 2000.

3.6 The Notification of Appointment of an Administrative Panel ("Panel")

was sent on March 15, 2000, thus commencing this administrative proceeding.

3.7 On March 20, 2000 the Panel issued a Rule 12 Request directed at Complainant

whereby it requested additional evidence concerning the ownership of the GRASS

and TELEFACTOR trademarks by Complainant as well as requested evidence of current

trademark use of GRASS, TELEFACTOR and GRASS-TELEFACTOR. Complainant filed a

Response to the Rule 12 Request on March 22, 2000 with evidence concerning the

trademarks in issue.

4. Factual Background

4.1 Since Respondent has not filed a Response within the requisite time period, the dispute shall be decided upon the allegations in the Complaint. (Rule 5(d); Rule 10(d); Rule 14(b)).

4.2 The Complainant is a leading manufacturer of specialty printer and instrumentation systems and holds a predominant position worldwide in the development, design and sales of these products. These products are sold under the trademarks GRASS, QUICK-LABEL and ASTRO-MED (Complaint Paragraph 9).

4.3 For over sixty years, the GRASS brand has been the "gold standard" by which life sciences instrumentation is measured. On November 26, 1963, the trademark GRASS was registered in the United States Patent and Trademark Office for "electroencephalographs and related neurophysiology equipment" under Registration Number 760640 (Complaint Paragraph 10).

4.4 In 1994, Complainant acquired the Grass Instruments Company and the trademark GRASS was duly assigned to Complainant. Complainant continues to design, market and sell GRASS clinical instrumentation systems throughout the world (Complaint Paragraph 11; Response to Rule 12 Request Paragraph 1).

4.5 Telefactor Corporation was founded in 1972, and has been an industry leader in the design, manufacture and supply of electronic instrumentation and software in the field of neurophysiology. The TELEFACTOR trademark has been used for nearly thirty years for these products. The record does not indicate that the TELEFACTOR trademark is registered, but this trademark was assigned to Complainant by Asset Purchase Agreement dated December 14, 1999 (Complaint Paragraph 12; Response to Rule 12 Request Paragraph 2).

4.6 On or about December 17, 1999, Complainant announced that it was combining

the Grass Instruments Group with the Telefactor business to create the Grass-Telefactor

Instruments Group (Complaint Paragraph 14).

4.7 On December 17, 1999, Respondent Evans sent an e-mail to Complainant reading

as follows: "Someone emailed me about a few domain names I own: www.grasstelefactor.com<http://grasstelefactor.com>www.grass-telefactor.com

<http://grass-telefactor.com> Yes, they are for sale in response to the

email." Complainant alleges that this was the first correspondence between

the parties and thus not a reply (Complaint Paragraph 15; Complaint Exhibit

D).

4.8 On January 14, 2000, Complainant’s counsel sent an e-mail to Respondent

Evans in which they demanded the transfer of the domain names. The text of this

e-mail is as follows (Complaint Paragraph 18; Complaint Exhibit E).

"This firm represents Astro-Med, Inc. This e-mail is in response to your December 17, 1999, e-mail to Astro-Med proposing to sell to the company the domain names grasstelefactor.com and grass-telefactor.com.

As you know, Astro-Med, Inc. owns the GRASS and TELEFACTOR trademarks. Your actions in registering the above domain names for the purpose of selling them to Astro-Med and/or preventing Astro-Med from registering these domain names are in bad faith and illegal. You have no rights or legitimate interest in these domain names. Moreover, they are confusingly similar to Astro-Med’s trademarks.

To avoid legal action, Astro-Med, Inc. demands that you immediately agree to assign these domain name registrations to the company at no cost to Astro-Med, and that these assignments be accomplished by January 20, 2000. Otherwise, Astro-Med will vigorously pursue all of its rights, including its damages resulting from your patently illegal conduct."

4.9 Respondent Evans thereafter offered to sell the domain names for US $2,000.

The text of the e-mail from Respondent Evans to Complainant dated January 14,

2000 is as follows: "In an effort to conclude this matter quickly, we will

accept $2,000 for both domain names." (Complaint Paragraph 19; Exhibit

F)

4.10 When notified of the commencement of this proceeding, Respondent Evans

sent an e-mail to WIPO dated February 18, 2000 which read as follows: "I

do not own these domain names, they do not direct to my website, so I don’t

know why you are sending me this e-mail. Thank you."

4.11 Respondent has sent two e-mail communications to WIPO after the March

8, 2000 deadline for responding to the Complaint. In the first e-mail, dated

March 9, 2000, the Respondent merely indicates "I do dispute this. I have

sent a dispute." In a subsequent e-mail, dated March 14, 2000, the Respondent

replies to the Notification of Respondent Default. The text of this e-mail is

as follows:

"I received your letter stating I was in default regarding the domain

names under the case number D2000-0072.

I absolutely do dispute the Plaintiff’s claim that they are entitled to this domain name. I do not know how to file an official dispute, as I was never provided information to properly file my answer to this complaint.

I own this domain name, it is not a trademark issue, and it was registered for my son Gilbarco with no knowledge known of the company making a claim.

Further, there is fraudulent documentation created by the Plaintiff in this matter that I did not convey to them, although they have made claims to the contrary.

Please allow this e-mail to act as my answer to their dispute."

5. Parties’ Contentions

A. Complainant

5.1 Respondent’s registration of the domain names prevents Complainant from

reflecting its valid and subsisting trademarks in corresponding domain names

(Complaint Paragraph 16).

5.2 Respondent has no legitimate interest in the domain names, which are formed

by the combination of two arbitrary trademarks owned by Astro-Med (Complaint

Paragraph 17).

5.3 Accordingly, Astro-Med requested that Respondent transfer the domain names

to Astro-Med because they are confusingly similar to Astro-Med’s trademark rights

in and to GRASS and TELEFACTOR, and Respondent does not use the marks in connection

with an ongoing business (Complaint Paragraph 18).

5.4 Respondent’s actions amount to the bad faith registration and use of the

domain names, including, but not limited to, their: (1) registration of the

domain names upon learning of the Telefactor acquisition and the formation of

the Grass-Telefactor Group; (2) extortive demands to sell the domain names to

Astro-Med in excess of Respondent’s out-of-pocket costs directly related to

the domain names; (3) reservation of the domain names to prevent their legitimate

registration and use by Astro-Med; and (4) the creation of a likelihood of confusion

with Complainant’s marks as to source of sponsorship to the extent they have

or will use the domain names (Complaint Paragraph 20).

B. Respondent

5.5 Before discussing the issues raised in the Respondent’s e-mail communications

dated March 9 and 14, 2000, the Panel must decide whether to consider these

communications timely responses to the Complaint or inappropriate communications

which are beyond the deadline provided under the Rules. The general powers of

the Panel are set forth in Rule 10, which has the discretion to consider all

the evidence submitted and what weight to provide to the particular evidence.

As was stated in the Panel Decision on Case D2000-0009,

Talk City, Inc. v. Michael Robertson, dated February 29, 2000: "Before

reaching the merits, the Panel must decide whether to consider Respondent’s

February 16, 2000 e-mail and February 28, 2000 Request, both of which were sent

after the deadline for response, and what weight to accord them. Under the Rules,

this determination is solely within the discretion of the Panel. Rule10(a),

(d). See also WIPO Notification of Complaint and Commencement of Administrative

Proceeding ("Notification of Commencement") paragraph 6 ("The

Administrative Panel will not be required to consider a late-filed Response,

but will have the discretion to decide whether to do so.").

5.6 The Panel decides that the February 18, 2000 e-mail from Respondent disclaiming

ownership in the domain names should be considered in evidence. The best reading

of the meaning of the e-mail is that Respondent Evans indicates that he does

not "own" the domain names since he is the administrative contact

and Merry Christmas Everyone! is the registrant. However, this reading is implausible

in view of his earlier offer to sell the domain names to Complainant, clearly

an assertion of ownership.

5.7 The Panel decides that the Respondent is in default and that the two e-mails

sent after the deadline set forth in the Rules should be disregarded. However,

despite the Panel’s ruling that the Respondent is in default, the late filed

communications do not submit any new evidence for consideration other than a

general denial to the allegations set forth in the Complaint.

6. Discussion and Findings

6.1 Complainant must prove each of the following three elements set forth in

the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i)

the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate

interests in respect of the domain name; and (iii) the domain name has been

registered and is being used in bad faith. The Panel will now look at each one

of the elements to determine if Complainant has met its burden of proof.

6.2 Complainant has asserted rights in the trademarks GRASS, TELEFACTOR and

GRASS-TELEFACTOR respectively. The trademark GRASS was registered in 1963 in

the United States Patent and Trademark Office under Registration No. 760640

for electroencephalographs and related neurophysiology equipment in the name

of Grass Instruments Company, Complainant’s predecessor in interest. In 1994

Complainant acquired the Grass Instruments Company, which currently designs,

markets and sells GRASS products throughout the world. Separately, Telefactor

Corporation, which was founded in 1972, has sold TELEFACTOR products in the

neurophysiology electronic instrumentation and software fields. There is no

evidence in the record that TELEFACTOR is a registered trademark. Moreover,

after Complainant acquired the assets and business of Telefactor Corporation

on December 15, 1999, a new business was created, namely Grass-Telefactor Instruments

Group. The Panel issued a Rule 12 request to Complainant on March 20, 2000 concerning

additional documents proving the ownership of the GRASS, TELEFACTOR, and GRASS-TELEFACTOR

trademarks. Complainant promptly forwarded such documents to the Panel and they

were received into the record. Such evidence not only provided proof of ownership

of the GRASS and TELEFACTOR trademarks, but of the newly formed GRASS-TELEFACTOR

trademark as well. The Panel finds that the domain names "grasstelefactor.com"

and "grass-telefactor.com" are confusingly similar to the trademarks

GRASS and TELEFACTOR and identical to the trademark GRASS-TELEFACTOR. Since

the Complainant owns subsidiaries which own the trademarks in issue, as well

as uses the trademarks themselves, the Panel finds that the Complainant has

the requisite rights to object pursuant to Policy 4(a)(i).

6.3 There is no proof in the record of rights or legitimate interests of Respondent

pursuant to Policy 4(c). Accordingly, the panel finds that Complainant has met

its burden of proof concerning Policy 4(a)(ii).

6.4 The last element in the proceeding is bad faith. Policy 4(b)(i) states

"circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name" shall be evidence of the registration and use

of a domain name in bad faith. In this proceeding, the records indicate that

Respondent offered to sell both domain names for $2,000, an amount in excess

of any documented out-of-pocket costs directly related to the domain names,

thus clearly indicating evidence of registration and use of domain names in

bad faith pursuant to such Policy 4(b)(i). Accordingly, the Panel finds that

Respondents registered and are using the domain names in bad faith pursuant

to Policy 4(a)(iii).

7. Decision

7.1 The Panel decides that the domain names "grasstelefactor.com"

and "grass-telefactor.com" are identical or confusingly similar to

the trademarks of Complainant, that respondent has no rights or legitimate interests

in such domain names, and that the domain names in issue have been registered

and are being used in bad faith.

7.2 The Panel hereby orders that the registrations of the domain names "grasstelefactor.com"

and "grass-telefactor.com" be transferred to Complainant.

Clark W. Lackert

Presiding Panelist

Date: March 27, 2000