Federal Cartridge Company v. Madmouse Communications

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Federal Cartridge Company v. Madmouse Communications

Case No. D2001-0756

1. The Parties

Complainant is Federal Cartridge Company, a Minnesota (USA) corporation with

its principal office in Anoka, Minnesota USA, represented by James A. Trigg

of Kilpatrick Stockton L.L.P., Atlanta, Georgia, USA.

Respondent is Madmouse Communications, for which the contact person is Steven Lincoln

residing in Richfield, Minnesota, USA.

2. The Domain Names and Registrar

The domain names at issue are <federalcartridge.net> and <federalcartridge.org>.

They are referred to as the Domain Names. The registrar is BulkRegister.com.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the complaint

on June 7, 2001, (electronic version) and June 8, 2001, (hard copy). The Center

verified that the complaint satisfied the formal requirement of the ICANN Uniform

Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain

Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant

made the required payment to the Center.

On June 11, 2001, the Center transmitted, via email to the Registrar, a request

for registrar verification in connection with this case. On June 12, 2001, the

Registrar transmitted via email to the Center its Verification Response, confirming

that the Respondent is the registrant for all the Domain Names, that the Respondent

is the contact for administrative, billing, and technical matters.

Having verified that the complaint satisfied the formal requirements of the

Policy and the Rules, on June 13, 2001, the Center transmitted to the Respondent

its Notification of Complaint and Commencement of the Administrative Proceeding,

via post/courier and e-mail.

The formal date of the commencement of this administrative proceeding is June 13, 2001.

While Respondent did not submit a response as described in Section 5 of the

Rules, from June 13 through 28, 2001, he sent to the Center a series of approximately

eighteen emails in which he contests certain of Complainant's assertions. The

panel will consider Respondent's email submissions in order to adhere to Section

10 (b) of the Rules.

Complainant requested a single panelist and Respondent did not object. The

Center invited Richard G. Lyon to serve as a panelist. Having received Mr. Lyon's

Statement of Acceptance and Declaration of Impartiality and Independence, on

July 10, 2001, the Center transmitted to the parties a Notification of Appointment

of Administrative Panel and Projected Decision Date of July 24, 2001. The Sole

Panelist finds that the Administrative Panel was properly constituted and appointed

in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction

by virtue of Section 4(a) of the Policy.

4. Factual Background

Complainant is a manufacturer of ammunition and cartridges with annual sales

of $150 million in 2000. It has sold such products with marks that incorporate

the word Federal since 1918, and has been doing business as Federal Cartridge

Company since 1922. Complainant has held federal trademark registrations that

incorporate the word Federal since 1962. In 1996, Complainant registered

<federalcartridge.com> and has used this address as its website since

that date.

Complainant has not licensed Respondent to use its marks or its name.

Respondent registered the Domain Names on May 26, 2001. That same day it notified

Complainant that it registered the Domain Names and that he "plan[ned]

to launch them on the Internet for sale."

The site <federalcartridge.net> does not have any significant content

and currently displays a generic template and the label "Federal Cartridge

Dot Net" (a company name acquired by Respondent subsequently to acquiring

the Domain Names) at the top. At some point Respondent has added a disclaimer

to the effect that the site and his company are not associated with Complainant.

The site <federalcartridge.org> redirects the user to <federalcartridge.net>.

Respondent provides no evidence that the site contained content of any kind

prior to the commencement of this proceeding on June 13, 2001. In his email

correspondence with the Center he has identified several possible future uses:

sale of gunsmithing lessons; display of information on gun safety; a "chat

room open for planned topics"; and, most recently, a "copier technician

website."

5. Parties' Contentions

The parties' contentions may be summarized as follows:

Complainant:

The Domain Names are identical to Complainant's trade name that has been in

use for over seventy-five years, and identical to its principal website except

for the top level domain (TLD). Respondent has no legitimate interest in Domain

Names, is not known by those names, and has not done business under those names

in Minnesota or elsewhere. Respondent was aware of Complainant's marks because

he resides only thirty miles from Complainant's headquarters. Respondent notified

Complainant of his intent to sell the Domain Names on the same day the Domain

Names were registered, evidencing bad faith registration of the Domain Names.

Because of the identity of the Domain Names with Complainant's company name

and website address, Complainant's customers will likely be diverted to Respondent's

business. "The only reasonable explanation of Respondent's decision to

register the [Domain Names]" is sale at a profit, or trading on Complainant's

goodwill.

Respondent:

The Domain Names were registered in an effort to begin a legitimate independent

business. The name <federalcartridge.net> is tied to the business name

"Federal Cartridge Dot Net" that Respondent intends to create and

establish through the Internet. The sites will be used for a business that undertakes

one or more of the possibilities listed above. The business is in the development

stages and is not meant to have any ties to or conflicts with the <federalcartridge.com>

Internet site or business of the Complainant, as illustrated by the disclaimer.

Respondent denies any bad faith.

6. Discussion

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles

the Administrative Panel is to use in determining the dispute:

"A Panel shall 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 directs that the Complainant must prove each of

the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly

similar to a trademark or service in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect to

the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith.

In this case Complainant has clearly proven three of the four required elements.

Only use in bad faith requires more than cursory discussion.

Identity and Confusion

The Complainant has used the trade name "Federal Cartridge" for over

75 years. The Domain Names are identical to Complainant's trade name. They are

certain to cause confusion as to the ownership of the sites. The use of a different

generic TLD is insufficient to differentiate Respondent's site from that of

Complainant's where the name is otherwise identical. Many panels have held that

the addition in the identifying portion of the domain name of a common word

to a registered mark is not sufficient to avoid confusion (Footnote

1). Identity of the site names with only the TLD different provides an even

more compelling case for confusion.

Legitimate Interest

Respondent provides no evidence of any legitimate interest in the Domain Names.

Section 4(c) of the Policy states three nonexclusive alternatives Respondent

may use to prove legitimate interest.

(i) before any notice to [Respondent] of the dispute, [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 and services;

Respondent admits in an email dated June 17, 2001, that the type of business

for which the site will be used is uncertain. It is uncertain still. Respondent

has failed to prove any use or preparation to use the Domain Names prior to

the commencement of the dispute.

(ii) [Respondent] (as an individual, business, or other organization) ha[s]

been commonly known by the domain name, even if [it has] acquired no trademark

or service mark rights;

Respondent's emails demonstrate that he is in fact not commonly known

by the Domain Names and is starting a business with a name almost identical

to that of Complainant.

(iii) [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.

Respondent has provided no evidence of any use of the Domain Names other than

to claim that a page exists for viewing. An examination of <federalcartridge.net>

reveals an over the counter website template which is not functional for any

commercial or noncommercial transactions. The majority of pages on the site

still have the generic text in place. The other site <federalcartridge.org>

redirects the user to the <federalcartridge.net> site.

Despite claiming to have begun development of the business concept in January

2001, (federalcartridge.net/About_Us/about_us.html), Respondent was still unsure

as of his ninth email communication sent to the Center, on June 21, 2001, whether

the site would sell gun related products or be a copier technician website or

something else. Respondent does not deny prior knowledge of Complainant's trade

name and website address, and his proximity to Complainant's long established

place of business is compelling evidence of these facts.

In sum, Respondent has provided no evidence of any legitimate right to the

Domain Names.

Bad Faith

Proof of registration or use in bad faith in this case falls under Section

4(b)(i) and 4(b)(iv) of the Policy.

Registration

The email sent to Complainant on the date the Domain Names were registered,

May 26, 2001, is the strongest evidence of registration in bad faith

under Section 4(b)(i). The statement "I plan to launch them next and

put them on the Internet for sale" is sufficient to constitute an offer

to sell the Domain Names. General offers to sell a domain name, even if a price

is not given, are evidence of bad faith (Footnote

2). The timing of the email offering to sell the domain name on the date

of registration is sufficient evidence of the intent of Respondent when registering

the Domain Names to sell them at a profit. Bad faith in registration has been

established.

Use

Subsequently to his initial email to Complainant, Respondent appears not to

have pursued sale of the Domain Names, and has incorporated the disclaimer on

to his website, purportedly to eliminate any possibility of confusion with Complainant.

There is no allegation or evidence that Complainant's customers have been lost,

confused, or diverted, or its marks diluted. While actual use of the Domain

Names for commercial gunsmithing activities would make diversion certain, and

thus establish use in bad faith, that use has not taken place. (Indeed no use

has taken place.) The panel is faced with a situation in which most – but not

all – of Respondent's professed possibilities of the Domain Names would create

bad faith if implemented, yet no such use has occurred. Complainant has shown

no actual harm from Respondent's actions.

Nevertheless the panel believes that the evidentiary record supports a finding

of use in bad faith, though on grounds somewhat different from those advanced

by Complainant. Respondent acquired the Domain Names with knowledge of Complainant's

company name, longstanding marks, and website address. Respondent admits that

he has no firm plans for use of the Domain Names and has offered no evidence

of preparation for any use. The panel therefore considers Respondent's

conduct analogous to conduct in cases (Footnote

3) in which bad faith was found from holding a domain name that incorporated

another's protected mark without any effort to use that domain name for any

purpose. The panel finds use in bad faith based upon warehousing of the Domain

Names and no showing of any permitted actual use.

7. Decision

For the foregoing reasons, the Administrative Panel orders that the registration

of the Domain Names be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: July 24, 2001

Footnotes:

1. E.g., USOC v. Tri-B-U-N Eco. Project, WIPO

Case No. D2000-0435. (back to text)

2. Vartec Telecom Inc. v. Jim Olenbush, WIPO

Case No. D2000-1092, and Educ. Testing Serv. v. TOEFL, WIPO

Case No. D2000-0044. (back to text)

3. E.g., Telstra Corporation Ltd. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003; ISL Marketing

AG v. Chung, WIPO Case No. D2000-0034;

TV GLOBO Ltda. v. Radio Morena, WIPO

Case No. D2000-0245; Harcourt, Inc. v. Fadnesss, NAF Claim no. FA

0007000095247 (2000); cf. General Electric Co. v. Fordirect.com, Inc.,

WIPO Case No. D2000-0394 n. 6. (back

to text)