Why did #Mercury Luggage lose the #UDRP for #SewardLuggage .com?

With domain names, time lines matter.

Mercury Luggage Manufacturing Company formed in 1946, and it claimed the year 1968 as the date of first use for the term SEWARD TRUNK.

However, they did not apply for the mark’s registration until 2017, almost 20 years after they acquired Seward Trunk of Petersburg Virginia, and the trademark was eventually registered this past February.

Meanwhile, the domain SewardTrunk.com was registered in 2005. Mercury Luggage filed a UDRP, and as the Complainant in this case, they claimed that the domain’s registration occurred “almost fifty years” since they started using the mark.

Not so fast, said the sole panelist at the National Arbitration Forum, noting that the domain was in fact registered almost 15 years before the mark’s registration:

“Evidence of secondary meaning may include things like sales data, unsolicited consumer responses, and/or uses in advertising.  That is, secondary meaning establishes that Complainant’s mark has had some level of market penetration.  Complainant provides nothing that approximates such evidence and, certainly, no evidence that establishes its secondary meaning that dates prior to the registration of the disputed domain name some 15 years ago.”

Based on these findings, and despite the Respondent’s lack of a response, the panelist ordered the domain SewardTrunk.com to remain with the Respondent.

Full details on this decision follow:

Mercury Luggage Manufacturing Company v. Lisa Katz / Domain Protection LLC

Claim Number: FA1904001838010

PARTIES

Complainant is Mercury Luggage Manufacturing Company (“Complainant”), represented by Richard Rivera, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sewardtrunk.com>, registered with Sea Wasp, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Kenneth L. Port as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 9, 2019; the Forum received payment on April 9, 2019.

On April 9, 2019, Sea Wasp, LLC confirmed by e-mail to the Forum that the <sewardtrunk.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, LLC 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 April 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2019 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@sewardtrunk.com. Also on April 16, 2019, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On May 10, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant operates a trunk and bag manufacturer and retailer under the SEWARD TRUNK mark. Complainant has rights in the SEWARD TRUNK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,405,171, registered Feb. 20, 2018). See Amend. Compl. Ex. 3. Respondent registered the disputed domain name nearly fifty years after Complainant’s first use of the mark. Respondent’s <sewardtrunk.com> domain name is identical to the SEWARD TRUNK mark as it is a complete and exact reproduction of Complainant’s SEWARD TRUNK mark.

Respondent lacks rights or legitimate interests in the <sewardtrunk.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s SEWARD TRUNK mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the <sewardtrunk.com> domain name to resolve to a website that consists of pay-per-click links to purchase products from third parties, including products related to Complainant’s goods such as luggage and furniture.

Respondent registered and is using the <sewardtrunk.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it features competing, pay-per-click links. Finally, Respondent had actual knowledge of Complainant’s rights in the SEWARD TRUNK mark.

B. Respondent

Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on November 15, 2005.

FINDINGS

The Panel finds that Complainant has failed to carry its burden that it had valid trademark rights prior to the registration of the disputed domain name.

DISCUSSION

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The Panel finds that Complainant has failed to carry its burden to establish that it had valid trademark rights prior to the registration of the disputed domain name. As such, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) and the Panel shall not analyze the other two elements of the Policy.

Complainant clearly possesses a valid trademark registration today for the mark SEWARD TRUNK; however, the issue date of this trademark registration is some 15 years after Respondent registered the disputed domain name. In such circumstances, Complainant may still establish valid and enforceable trademark rights under the Policy, but it must do so with clear evidence. Complainant makes several claims that its mark is well-recognized and, as such, apparently claims that it has secondary meaning in its mark. However, Complainant never expressly claims secondary meaning and most significantly, Complainant provides no evidence to support such a claim. Even more significantly, Complainant provides no evidence that its secondary meaning pre-dates the registration of the disputed domain name.

Evidence of secondary meaning may include things like sales data, unsolicited consumer responses, and/or uses in advertising. That is, secondary meaning establishes that Complainant’s mark has had some level of market penetration. Complainant provides nothing that approximates such evidence and, certainly, no evidence that establishes its secondary meaning that dates prior to the registration of the disputed domain name some 15 years ago.

As such, the Panel has no choice but to find that Complainant has failed to carry its burden to establish valid trademark rights that predate the registration of the disputed domain name. The Panel, therefore, denies Complainant’s prayed for relief and will not conduct any other analysis regarding this factor or the other two factors under the Policy case.

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 <sewardtrunk.com> domain name remain with Respondent.

Kenneth L. Port, Panelist

Dated: May 13, 2019

 

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