The UDRP filed against the domain GrainGauge.com wasn’t going anywhere, as the GRAIN GAUGE mark of the Complainant’s is double disclaimed.
In other words, both GRAIN and GAUGE had to be disclaimed per the Respondent’s statement:
Respondent, Web Master / LevALERT, Inc. (“Respondent”) contends Complainant filed an application to register a design mark that included the term “grain gauge” together with a drawing of a gauge (similar to a speedometer or tachometer). The examiner rejected the application. While Complainant disclaimed “gauge” as part of its application, the examiner found “grain” must also be disclaimed.
The Complainant appears to have filed the UDRP relying on a weak trademark and upset that the Respondent uses the domain in direct competition as makers of “grain gauge” equipment.
The sole panelist at the Forum (NAF) noted:
Since Complainant has failed to establish trademark rights to the words “Grain Gauge” sufficient to meet the first element of the Policy, the Panel need not address the remaining required elements of the Policy.
Final decision: Deny the transfer of the domain GrainGauge.com to the Complainant.
Note: The Respondent owns GrainGauge.com as well as the plural, GrainGauges.com and properly displays informational content on them with a link to their Amazon store.
The domain transfer was denied.
IntelliFarms Northern Division, Inc. v. Web Master / LevALERT, Inc
Claim Number: FA2402002085625
PARTIES
Complainant is IntelliFarms Northern Division, Inc. (“Complainant”), represented by Michael Gale-Butto of Winthrop & Weinstine, P.A., Minnesota, USA. Respondent is Web Master / LevALERT, Inc (“Respondent”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are graingauge.com and graingauge.net, registered with Amazon Registrar, Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 26, 2024; Forum received payment on February 26, 2024.
On March 5, 2024, Amazon Registrar, Inc. confirmed by e-mail to Forum that the graingauge.com and graingauge.net domain names are registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@graingauge.com and postmaster@graingauge.net. Also on March 11, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 28, 2024.
On April 1, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
IntelliFarms Northern Division, Inc. (“IFND” or “Complainant”) claims to be the exclusive owner of the GRAIN GAUGE and design trademark, based on its Design Mark for GRAIN GAUGE, and design for “Level gauges”, claiming a date of first use in commerce of at least as early as February 1, 2013. See Certificate of Registration for GRAIN GAUGE Design Mark, Reg. No 4,416,015. Further, on September 15, 2023, IFND filed an application for the GRAIN GAUGE word mark with the United States Patent and Trademark Office (“USPTO”). That application has not been acted on by the USPTO.
IFND claims to be the owner of prior common law trademark rights to the distinctive GRAIN GAUGE mark, based on claimed substantially exclusive and continuous use of the GRAIN GAUGE mark for over a decade. Specifically, IFND, together with its predecessor in interest, has made continuous and substantially exclusive use of the GRAIN GAUGE mark since as early as February 1, 2013. Over the last decade, IFND has provided agricultural products and services to thousands of individual farmers, commercial farms, and other businesses enterprises.
IFND’s predecessor in interest, Custom Manufacturing CO., LLC (“CMC”), first began using GRAIN GAUGE in February 2013 and in connection with the manufacture, marketing, and sale of bin level indicators and related services. At the end of 2018, IFND purchased all of CMC’s assets, including, but not limited to the following: (1) CMC’s inventory of Grain Gauge bin level indicators; (2) all websites and domain names then owned by CMC (including graingauge.com); and (3) CMC’s intellectual property. As part the sale of CMC’s assets, CMC assigned to IFND all rights, title, and interest in the GRAIN GAUGE design mark and all goodwill associated therein.
Since 2013, the GRAIN GAUGE mark has been continuously used by CMC and IFND in commerce, including on IFND’s products, on packaging, in promotional and marketing material, and online. From 2012 to late 2020, CMC and then IFND owned and used the graingauge.com domain, among other websites, to promote and sell products using the GRAIN GAUGE mark. As discussed further below, IFND’s registration of graingauge.com inadvertently lapsed in or around September 2020 due to employee turnover.
IFND and CMC have collectively spent approximately $25,000 on advertising, marketing, and promotional efforts related to IFND’s products and services under the GRAIN GAUGE mark, received media coverage, including from online publications such as the Farm & Ranch Guide, Kenmare News, Farm Forum, and the Prairie Star, among other publications and websites. Since 2013, CMC and IFND have sold over 50,000 GRAIN GAUGE bin level indicators throughout the United States and elsewhere. As a direct result of IFND’s significant investment of time and money, IFND claims it has established itself as a nationwide (and international) distributor of bin level indicator products and an industry leader in respect to the same.
On November 13, 2012, IFND’s predecessor applied to register the GRAIN GAUGE design mark in connection with “level gauge[s].” (See Annex B.) The U.S. Patent and Trademark Office (“USPTO”) issued a Certificate of Registration No. 4,416,015 on October 8, 2013. An assignment of the GRAIN GAUGE mark to IFND was duly recorded with the USPTO. Additionally, on September 15, 2023, IFND filed an application for the GRAIN GAUGE word mark with the United States Patent and Trademark Office (“USPTO”).
As part of the prosecution of the GRAIN GAUGE design mark, CMC disclaimed the words “GRAIN” and “GAUGE.” IFND’s registration of the graingauge.com domain inadvertently lapsed in or around September 2020.
Complainant contends Respondent LevALERT has been a direct competitor of IFND for years. The LevALERT Bin Level Indicator (the “LevALERT product”) and the GRAIN GAUGE level indicator have been directly competing products for nearly a decade.
From November 2022 through early February 2023, LevALERT and IFND were engaged in discussions regarding potential partnership, which were unsuccessful.
Respondent registered graingauge.com on or about February 8, 2023. After registering graingauge.com, LevALERT setup a URL redirect to reroute all traffic meant for that domain to a website on which LevALERT advertises and sells its own, competing products.
Once the URL redirect was in place, LevALERT began using “grain gauge” on its own website, and the following sentence was added: “Our grain gauge is the original and most trusted in the industry.”
Complainant contends the Domains are identical to the GRAIN GAUGE mark in which IFND has prior rights. The lack of a space between “grain” and “gauge” and the addition of the generic top-level domains (gTLD) “.com” and “.net” are considered insignificant and irrelevant to the determination of similarity.
Complainant contends there is no evidence that Respondent is commonly known by the name GRAIN GAUGE. To the extent Respondent is LevALERT or an agent acting on LevALERT’s behalf, LevALERT has no rights or legitimate interests in the Domains. Respondent has not used the Domain Names for a bona fide offering of goods or services. Rather, Respondent initially setup and maintained redirects for both Domains that routed internet traffic from the Domains directly to LevALERT’s own website.
Complainant contends the Domains were registered and are being used in bad faith. Respondent is using the GRAIN GAUGE mark as the disputed domain name for commercial gain and on the resolving webpage, such as to attract those customers looking for IFND’s products and direct them instead to LevALERT’s products and the purchase of the same through a link to an Amazon listing. Respondent is therefore trading on IFND’s GRAIN GAUGE mark.
LevALERT stated it would accept $4,000 in exchange for the Domains. Then, in direct response to IFND’s counter offer to cover purchase and registration costs, LevAlert represented that its “costs” associated with the Domains exceeded $25,000. LevALERT’s demands are alleged to be evidence of bad faith.
B. Respondent
Respondent, Web Master / LevALERT, Inc. (“Respondent”) contends Complainant filed an application to register a design mark that included the term “grain gauge” together with a drawing of a gauge (similar to a speedometer or tachometer). The examiner rejected the application. While Complainant disclaimed “gauge” as part of its application, the examiner found “grain” must also be disclaimed.
Complainant filed the disclaimer, stating:
Disclaimer
No claim is made to the exclusive right to use GRAIN GAUGE apart from the mark as shown.
LevALERT denies Complainant’s contentions and contends Complainant does not have rights in the term “grain gauge.” Complainant used the term “grain gauge” as a noun for years before it attempted to take the Domain Name from LevALERT.
Based on Complainant’s failure to properly identify use in the marketplace and to show Complainant’s use was not exclusive, LevALERT filed a Letter of Protest with the United States Trademark Office, informing the Office of the industry use.
LevALERT uses the Domain Names in connection with its grain gauge business. LevALERT designed a website at graingauge.com to teach farmers what a grain gauge is and how it operates. LevALERT also includes a link on the website for farmers to purchase a LevALERT brand grain gauge.
LevALERT claims it did not purchase the Domain Names in bad faith. It had a legitimate right to use the generic term “grain gauge” to describe its products, which are grain gauges. Complainant, knowing the generic use of the term in the industry by multiple parties, has no right to the exclusive use of a generic term.
FINDINGS
Complainant, having failed to establish trademark rights to the words in the domain at issue, has failed to establish all elements of the Policy.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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.”
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.
Identical and/or Confusingly Similar
Complainant must establish that it has trademark rights to the disputed domain name. OpenBots, Inc. v. Luciano Coelho, FA1999065 (Forum July 13, 2022) (holding supplemental registration for OPENBOTS term failed to establish evidence of distinctiveness to support trademark rights). Non-distinctive terms, words, or devices are not exclusive to a single party and are available to the “free use of the public.” Fabricators & Manufacturers Assn, Int’l v. Domain Admin., FA1728625 (Forum June 1, 2017) (holding Complainant had no right to exclude respondent from owning fabricator.com despite trademark registration for THE FABRICATOR); B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Forum June 5, 2001) (holding that the complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS). Domain names comprised of descriptive or generic terms, which are not generally considered in determining confusing similarity, cannot satisfy the confusing similarity requirements per Policy ¶ 4(a)(i). Microtech Knives, Inc. v. qiang ge, FA2065672 (Forum Nov. 1, 2023) (holding domain name “discountknife.net” not confusingly similar to any protectable trademark).
Complainant’s trademark registration disclaimed the words from its application to get a registration on the design. Complainant’s rights are based on trademark registration number 4,416,015. That registration is a design mark that is composed of the term “grain gauge” and design.
Complainant was refused registration of the mark as displayed until Complainant agreed to disclaim the entirety of the term “grain gauge” from the mark.
In addition to failing to establish a trademark registration to the words at issue, Complainant failed to establish sufficient common law rights to the mark, via secondary meaning or otherwise, to the words at issue. See General Motors LLC v Josh Oliver, FA 1976673 (Forum Jan. 12, 2022) (holding that common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor); TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013) (stating “where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness”). Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint. See T.W. Clark Construction, LLC v. Willa Kinn, D2019-1216 (WIPO Aug. 21, 2019) (“conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”); Broadband Voice, LLC v. Nilay N. Patel FA 1582384 (Forum Nov. 12, 2014) (“…Although Complainant offers evidence of the variety which might be used to persuade a panel that Complainant has common law rights in the BROADBANDVOICE mark, such mark is clearly highly descriptive. Where a claimed trademark is descriptive, the burden on a UDRP complainant to show that its mark has acquired secondary meaning is great.”).
Complainant has failed to set forth proof sufficient to establish sufficient trademark rights in “grain gauge”. Complainant’s own prior use includes “grain gauge” as a noun that is a category of products used to measure grain levels in a grain bin. Complainant claims to have spent $25,000 in advertising but does not provide factual or legal support sufficient to establish necessary trademark rights. Thus, Complainant cannot establish the requisite confusing similarity requirements per Policy ¶ 4(a)(i).
Complainant has failed to establish a trademark registration to the words “Grain Gauge” and has failed to submit proof sufficient to establish common law rights to those words. As such, Complainant has failed to establish one of the required elements under the Policy.
Rights or Legitimate Interests
Since Complainant has failed to establish trademark rights to the words “Grain Gauge” sufficient to meet the first element of the Policy, the Panel need not address the remaining required elements of the Policy.
Registration and Use in Bad Faith
Since Complainant has failed to establish trademark rights to the words “Grain Gauge” sufficient to meet the first element of the Policy, the Panel need not address the remaining required elements of the Policy.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the graingauge.com and graingauge.net domain names REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: April 15, 2024
