Complainant is American Society of Mechanical Engineers of New York, New York, United States of America (“U.S.”), represented by Ballard Spahr, LLP, U.S.
Respondent is Freeport Welding & Fabricating Inc. of Freeport, Texas, U.S., represented by Reed Smith LLP, U.S.
The disputed domain names <asme-fabricating.com>, <asmefabricating.com>, <asme-fabricators.com>, <asme-pressurevessels.com>, <asme-shop.com>, <asme-usa.com>, <asmeusa.com>, <asmevesselfabricating.com> and <asmevesselfabricators.com> (collectively, the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2014. Also on January 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 9, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 29, 2014. The Response was filed with the Center on January 28, 2014. On February 6, 2014, Complainant submitted a supplemental filing, and also on the same day, Respondent submitted an opposition to Complainant’s supplemental filing.
The Center appointed Mark Partridge as the sole panelist in this matter on February 6, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Complainant is the American Society of Mechanical Engineers (“ASME”). Since its founding in 1880, ASME has developed hundreds of technical standards and has developed, distributed and sold publications concerning its standards. ASME has a presence in over 150 countries with more than 130,000 individual members worldwide. As part of its efforts, Complainant provides certification services and certifies groups that are capable of meeting the standards of ASME goods and services.
Complainant has several U.S. registered trademarks in the acronym ASME and graphic iterations of that name, including:
ASME, Reg. No. 1,403,101; registered on July 29, 1986.
ASME, Reg. No. 3,015,964; registered on November 15, 2005.
ASME, Reg. No. 3,015,966; registered on November 15, 2005.
ASME, Reg. No. 4,384,075; registered on August 15, 2013.
ASME, Reg. No. 4,384,076; registered on August 13, 2013.
ASME, Reg. No. 4,388,250; registered on August 13, 2013.
Respondent is Freeport Welding & Fabricating, Inc., an ASME-certified fabricator of pressure vessels, among other services. Respondent has been in business for 56 years and maintains a home webpage at “www.freeweld.com”.
Respondent registered the Domain Name <asme-shop.com> on March 30, 1998, and registered the other Domain Names on February 20, 2008. Prior to the filing of the Complaint, the parties engaged in negotiations regarding the Domain Names. From registration of the Domain Names to the parties’ negotiations, the Domain Names redirected to Respondent’s home webpage, “www.freeweld.com”.
During these negotiations, at Complainant’s request, Respondents “deactivated” the Domain Names through its service provider, DNS Made Easy. When Respondent “deactivated” the Domain Names, they no longer redirected to Respondent’s website, but instead resolved to pages with ASME related links. It appears that the placement of these links was due to the conduct of DNS Made Easy, not Respondent. After negotiations broke down, Complainant filed the present UDRP action.
Complainant argues that the Domain Names are confusingly similar to its ASME marks because none of the additional descriptive terms in each disputed Domain Name provides any distinctive meaning or in any way differentiates them from Complainant’s trademarks.
Complainant next argues Respondent has no rights or legitimate interests in the Domain Names. Particularly, Complainant argues that the Domain Names suggest sponsorship or endorsement by Complainant and that Respondent’s ASME certification is insufficient to vest rights in Respondent.
Finally, Complainant argues that Respondent’s lack of rights or legitimate interests infers registration and use in bad faith. Respondent’s knowledge of Complainant’s ASME mark at the time of registration is per se bad faith, and Respondent’s subsequent diversion of Internet traffic to its website constitutes continued bad faith use.
Respondent’s argument relies heavily on the defense of nominative fair use. Respondent first asserts that the Domain Names are not confusingly similar to Complainant’s mark because ASME is only a small part of each Domain Name and, regardless, that use is a fair use.
Respondent next argues that as a fully certified ASME shop it has a legitimate interest in referring to itself by the ASME certification mark. Respondent’s use is nominative because Respondent cannot readily identify its product without use of the mark, the mark is used only as much as is necessary, and Respondent does not otherwise suggest sponsorship or endorsement by Complainant.
Finally, Respondent states that its registration and use of the Domain Names could not have been in bad faith because nominative use forecloses the possibility of finding bad faith.
The purpose of the UDRP, which has been adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), is incorporated by reference into the Registration Agreement, and sets forth the terms and conditions in connection with a disputes over the registration and use of an Internet domain name. Under paragraph 4(a) of the UDRP, Complainant must show grounds for this administrative proceeding by proving the following:
(i) Respondent’s Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent’s Domain Names have been registered and are being used in bad faith.
Parties have no right to submit supplemental filings, but the Panel has discretion to determine the admissibility of supplement filings under paragraphs 10 and 12 of the Rules. See, e.g., Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889. Such supplemental filings generally “should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission.” The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; see also Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889, Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
To ensure each party’s fair opportunity to present its case, as is required under paragraph 10(b) of the Rules, the Panel has decided to admit Complainant’s supplement filing. Complainant’s supplemental filing presents a rebuttal to Respondent’s nominative fair use claim. Although this may not reach the level of “exceptional circumstances,” it is relevant to this Panel’s understanding and interpretation of the case. On the whole, Complainant’s additional submission does not alter the Panel’s final determination.
Complainant argues that it has exclusive rights in the ASME trademark. Since none of the additional terms used in the Domain Names add distinctive meaning or otherwise differentiate the Domain Names from Complainant’s ASME mark, the Domain Names are confusingly similar.
Respondent argues that its use of Complainant’s ASME mark constitutes only a fraction of each disputed Domain Name and that its use is nominative fair use. Further, Respondent argues that a Panel must analyze the domain name under the Polaroid factors to determine whether it is confusingly similar to a mark. Here, Respondent claims, no such confusion exists.
Complainant has trademark rights in the ASME mark, as demonstrated by numerous registrations, particularly U.S. Reg. No. 1,403,101 for ASME, with a registration date of July 29, 1986. A trademark registration constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147.
“[T]he mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy.” Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; see also Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168.
Here, the disputed Domain Names are composed of the ASME mark and non-distinctive descriptive terms (fabricating, fabricators, pressure vessels, shop, USA, vessel fabricating, and vessel fabricators). Respondent’s addition of descriptive terms does not reduce the confusing similarity of the Domain Names with Complainant’s ASME mark.
Further, the Panel finds Respondent’s argument unconvincing. Even if Complainant’s mark represents only a fraction of the letters used in each of the disputed Domain Names, the ASME mark as a whole is used and represents the dominant element of each disputed Domain Name.
The disputed Domain Names are confusingly similar to Complainant’s registered trademarks. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
Under the second element of paragraph 4(a) of the Policy, Complainant is required to present a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. After Complainant has made a prima facie case, the burden of production shifts to Respondent to present evidence demonstrating rights or legitimate interests in the Domain Names. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
(i) before any notice to you of the dispute, your 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 or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant argues that Respondent’s use of the ASME mark in the Domain Names is an illegitimate attempt to drive Internet traffic to Respondent’s website through the ASME mark. Complainant presents that this diversion of Internet traffic is insufficient to constitute use in connection with a bona fide offering of goods or services. Further, Complainant avers that Respondent is not commonly known by the Domain Names and that Respondent is not making a legitimate noncommercial use of the ASME mark because Respondent suggests endorsement and affiliation beyond mere certification. Importantly, Complainant argues that Respondent’s status as an ASME-certified business does not give Respondent rights or legitimate interests in use of the ASME mark. Based on these arguments, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Names.
Respondent replies that certification by Complainant establishes Respondent’s legitimate interest in nominative use of the ASME mark. Respondent alleges that it has made fair use that does not mislead consumers, and Respondent’s use has been in connection with a bona fide offering of goods and services.
For this analysis, the Panel draws a distinction among the disputed Domain Names and analyzes the <asmeusa.com> and <asme-usa.com> (“USA” Domain Names) separately.
The Panel finds that there is a strong tie between the nominative use of Complainant’s ASME mark and Respondent’s bona fide offering of goods and services. Significantly, Respondent needs to use Complainant’s ASME mark to accurately identify its ASME-certified services in order to make a bona fide offering of goods and services.
To sustain a defense of nominative fair use, Respondent needs to show that (i) its services are not readily identified without use of the mark, (ii) Respondent used only as much of the mark as is reasonably necessary to identify the product, and (iii) Respondent did nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by Complainant. See New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302 (9th Cir. 1992); Nelnet Business Solutions, Inc. d/b/a FACTS Management Co. v. Andrew Goldberger, WIPO Case No. D2013-0764.
Respondent, as any ASME-certified entity, cannot identify its goods and services as “ASME-certified” without use of the ASME mark. Respondent only uses the ASME mark to accurately identify its services as ASME-certified services. Finally, neither Respondent’s website nor the disputed Domain Names suggest any sponsorship beyond the certification which Complainant has already bestowed upon Respondent. It is difficult if not impossible for an ASME-certified entity to market its services without use of the ASME mark. So, Respondent has legitimate interests in identifying its services by using Complainant’s mark.
Through its nominative use of Complainant’s ASME mark, Respondent has made a bona fide offering of goods and service, thereby establishing rights or legitimate interests in the Domain Names.
Respondent is in the business of creating ASME-certified pressure vessels, among other services. Respondent has operated as an ASME-certified business for the last thirty years and has made use of the Domain Names, including <asme-pressurevessels.com>, for six years. Respondent’s use of the Domain Names in connection with a bona fide offering of goods and services was well established prior to notice of this dispute.
The Domain Name <asme-pressurevessels.com> denotes to Internet users that the services offered through that website will be ASME-certified pressure vessels, and they are. The same is true for the other Domain Names and the descriptive goods and services included in them. The affiliation between the parties represented by the ASME mark is justified in light of the real affiliation between the parties. The Panel disagrees with Complainant that Respondent’s use suggests affiliation beyond certification. The point of certification is that Complainant asserts an endorsement of ASME-certified service providers. No other endorsement is presented by Respondent’s use in the Domain Names.
The Panel finds that Respondent’s rights or legitimate interests in the Domain Names arise from the affiliation with Complainant and that Respondent has a legitimate right to identify itself by the ASME mark. Therefore, Complainant has failed to satisfy its burden under the second element, as to the seven Domain Names not including “USA.”
However, the Panel finds that Respondent does not have rights or legitimate interests in the <asmeusa.com> and <asme-usa.com> Domain Names.
Respondent cannot avail itself to the protections of nominative fair use here, because the “USA” Domain Names do not actually identify any services. Rather, they suggest sponsorship or endorsement of Respondent beyond mere certification by Complainant, which makes Respondent’s nominative fair use defense unsustainable.
Whereas the other disputed Domain Names require use of the ASME mark to readily identify Respondent’s services, the “USA” Domain Names do not present Respondent’s services to Internet users. Instead, the “USA” Domain Names suggests the American Society of Mechanical Engineers as a whole. They suggest an official capacity which Respondent does not have. Respondent cannot support its contention that it has made a bona fide offering of goods and services under the “USA” Domain Names.
Further, Respondent has not been commonly known by the “USA” Domain Name. Respondent’s use is not fair use and it is commercial. Thus, Respondent cannot support its rights or legitimate interests within the guidance of paragraph 4(c) of the Policy.
Beyond the factors of the Policy, the Panel finds that Respondent has not asserted any right or legitimate interest in the “USA” Domain Names. These Domain Names misleadingly divert Internet users who will assume Respondent’s affiliation with the entire society Complainant represents. Therefore, Complainant has satisfied its burden under the second element as to the “USA” Domain Names.
Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including,
(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 website 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 website or location or of a product or service on your website or location
Complainant argues that Respondent’s registration with full knowledge of Complainant’s ASME mark is per se bad faith. To Complainant, Respondent’s subsequent use of the disputed Domain Names to divert Internet users to its website constitutes continued bad faith use.
Respondent argues that it did not register and has not used the disputed Domain Names in bad faith. Respondent supports its position on the theory that nominative fair use forecloses the possibility of bad faith. Responding to Complainant’s argument that its knowledge of the ASME mark is per se bad faith, Respondent clarifies that this would be true if it did not have any legitimate interest in the Domain Names. Since it has a legitimate interest, there should be no finding of bad faith.
As with the second element of the Policy, the Panel will address the disputed Domain Names in two groups.
Having failed to satisfy the second element of the Policy, Complainant cannot succeed with regard to the disputed Domain Names not including the term “USA.” Regardless, the Panel finds that even if Complainant had satisfied the second element, it would still fail to show Respondent’s registration and use of the disputed Domain Names in bad faith.
Respondent’s nominative use of Complainant’s ASME mark is instructive of Respondent’s registration and subsequent use of the Domain Names. Respondent registered the Domain Names to properly identify its services as an ASME-certified entity. Respondent had legitimate rights to obtain these Domain Names at the time of registration, so it does not follow that such registration was in bad faith. Since the time of registration, Respondent has continuously made nominative use of the disputed Domain Names to identify its services, by redirecting to Respondent’s main website.
Respondent’s rights or legitimate interests in the Domain Names and proper nominative use of Complainant’s ASME mark precludes the possibility that it registered and used the Domain Names in bad faith. Respondent is not cybersquatting on the Domain Names or trying to pass its goods off as those of Complainant, but simply identifying itself by properly using Complainant’s ASME mark. Therefore, Complainant would fail to satisfy the third element as to the disputed Domain Names not including the term “USA.”
Respondent cannot avail itself to the protections of nominative fair use in the context of the “USA” Domain Names, as detailed above in section 6(c). Where the other Domain Names appropriately identify Respondent’s services, the “USA” Domain Names do not. Instead, they create a likelihood of confusion with Complainant's ASME mark as to Respondent’s affiliation with the American Society of Mechanical Engineers.
Where <asme-pressurevessels.com> properly identifies a particular service that Respondent is ASME-certified to provide, <asmeusa.com> indicates association with the entirety of Complainant’s organization. Respondent does not have that kind of affiliation with Complainant. An Internet user going to <asmeusa.com> would likely expect to find Complainant’s home website, not a regional entity of specific ASME-certified services.
The “USA” Domain Names suggest a website that will provide ASME certification or information related to Complainant’s organization. They do not specifically refer to services that Respondent is certified to and does actually provide. This statement was true when Respondent registered the “USA” Domain Names and continued to be true throughout Respondent’s subsequent use. Because of this, Respondent’s “USA” Domain Names are likely to cause confusion as to the endorsement of affiliation of Complainant and Respondent.
The Panel is satisfied that as to the “USA” Domain Names, Complainant has satisfied its burden of showing registration and use in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <asme-usa.com> and <asmeusa.com> be transferred to Complainant.
With regard to the other disputed domain names, <asme-fabricating.com>, <asmefabricating.com>, <asme-fabricators.com>, <asme-pressurevessels.com>, <asme-shop.com>, <asmevesselfabricating.com>, and <asmevesselfabricators.com>, for the foregoing reasons, the Complaint is denied.
Mark Partridge
Sole Panelist
Date: March 25, 2014