WIPO Arbitration and Mediation Center

Frank Wagner & Son, v. Cindy Mahan a/k/a Cindy Maham, an individual

The Complainant is Frank Wagner & Son, a corporation organized and existing under the laws of the State of California, with its principal business address at 2041 Elm Court, Ontario, CA 91761. According to Network Solutions, Inc., WHOIS database, the Respondent is Cindy Mahan a/k/a/ Cindy Maham, an individual whose address is 35 Primrose, Laguna Hills, CA 92656.

The domain names at issue are FRANKWAGNERANDSON.COM, FRANKWAGNERANDSONINC.COM, FWANDSON.COM, FWSON.COM and WAGNERACROSSAMERICA.COM (all of which will be referred to as the "Domain Name", unless the context indicates otherwise), which Domain Name is registered with Network Solutions, Inc. (the "Registrar").

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 5, 2000. On April 12, 2000, a Request for Registrar Verification was transmitted to the Registrar. On April 13, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered with the Registrar that the Respondent was the current registrant of the name and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the Policy is applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on April 17, 2000, which shows that the Complaint is in material formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").

No formal deficiencies having been recorded, on April 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of May 7, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses specified in the Registrar’ Whois. In addition, the Complaint was sent by facsimile to the listed fax numbers and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

On April 29, 2000, the WIPO Center received Respondent’s response. On May 12, 2000, the WIPO Center received a request from Complainant to be allowed to supplement its Complaint.

Having received this Panel’s Statement of Acceptance and Declaration of Impartiality and Independence, on May 15, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date indicating May 29, 2000, as the due date for the Panel’s decision. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

Complainant’s request to supplement its Complaint was allowed by the Panel on May 22, 2000, with leave to the Respondent to reply and a new date was set for the Projected Decision Date. Both Parties filed supplemental pleadings and the Projected Decision Date was set for June 20, 2000.

The Panel finds that the following facts appear from the Complaint, documents submitted with the Complaint, the Response and the supplemental filings.

Complainant has been doing business under its name in the steel rule die and punch manufacturing business since 1947. It appears that it has used (i) "FW & Son" as a "logo" at least since the 1980’s in its advertising, letterheads and other public material, and (ii) "Wagner Across America" since 1996 as a slogan on calendars, advertising literature and on its "Display Bus" that travels throughout the United States. Although it alleges that its name, the logo and the slogan are used to identify its goods and services, it has not presented any evidence that they are its trademarks. Indeed no trademark registrations, or even applications for registration, have been supplied to the Panel.

From the Complaint and supplemental filings it appears that Respondent is related to the President of a principal competitor of Complainant and that the Domain Name was registered by or on behalf of Respondent in order to retaliate against the Complainant.

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent has contested each of these allegations of the Complaint.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the 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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."

The Panel has concluded that unfortunately it must reject the Complaint. The Panel is convinced that Complainant has set forth sufficient evidence to support its Complaint on every aspect, save one. It has not alleged evidence sufficient to show that it owns a trade or service mark similar or confusingly similar to the Domain Names. It has alleged a trade name, a logo and a slogan, but it has not provided any evidence that any of these phrases are being used as a trade or service mark, that is, as a name of a particular product or service. Paragraph 4(a) (i) is specific and only refers to trademarks and service marks. The Panel is not sure whether the language of this clause was deliberate or an oversight on the part of its drafters. Under U.S. law, trade name rights are not materially dissimilar from trademark rights. Nevertheless, the Panel feels constrained to follow the literal language of the Paragraph. The remedies, procedures and protections provided by the Policy are very different from that provided at law; it would not be appropriate for the Panel to expand on them.

The Panel takes this step with regret as the Panel does find that the Respondent has both registered and used the Domain Name in clear bad faith. Paragraph 4(b) of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy. It provides:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) 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 web site 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 web site or location or of a product or service on your web site or location."

The Panel believes that there is more than ample evidence to support its conclusion that both Paragraph 4(b)(ii) and Paragraph 4(b)(iii) have been violated, particularly given the similarity between the Domain Names and Complainant’s name, logo and slogan. Respondent has offered no credible explanation for any legitimate interest of it in these phrases.

Under the circumstances, the Panel must deny the Complaint, but, in the interest of justice, this action is taken without prejudice to the Complainant to pursue whatever remedies it may have under applicable law, including, without limitation, if it can demonstrate trademark or service mark use, the Policy.

For the foregoing reasons, the Panel decides that Complainant has not overcome its burden to establish its rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel denies Complainant’s request that the registration of the Domain Names be transferred to the Complainant. As set forth above, this decision is made without prejudice to Complainant.

Thomas D. Halket
Presiding Panelist

Dated: June 14, 2000