Domain name - Trademark - Prior knowledge - Identical - Confusingly similar - Non-legitimate use - Bad faith registration - Bad faith use

Complainant was registered owner of trademark, FIREFOAM, and used it continuously since 1985.  Respondent registered the domain name, firefoam.com long after Complainant’s adoption of the mark.  Complainant alleged that its registered mark and Respondent’s registered name are identical, and that Respondent registered and used the domain name in bad faith since it had no legitimate interests associated with it.

Held, Name Transferred to Complainant

Complainant must establish bad faith registration, bad faith use, and that the Respondent had no legitimate interests in the domain name at issue.

For more than thirty-five years, Complainant had used the trademark FIREFOAM.  This trademark has become famous worldwide and has become associated with Complainant.  It is clear that Respondent’s registered name, firefoam.com is substantially identical and confusingly similar to the mark of Complainant.  Respondent clearly had knowledge of Complainant’s prior adoption, usage and registration of Complainant’s well-known mark.  This demonstrates bad faith registration.

Respondent has no legitimate rights to the name.  It was not making fair use of the domain name since it was clearly seeking commercial gain by misleadingly diverting users to its own web sites.  Respondent’s primary purpose for registering the domain name was to divert business from the Complainant.  This shows that Respondent had no legitimate interests to the name, and that it used the name in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Cases referred to

Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th, 1999) 184 F.3d 1107, 1111.
Brookfield, 174 F.3d at 1059.
Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)).
Sleekcraft, 559 F.2d at 354.

Perluss, Panelist: -

DECISION
Forum File No. FA0002000093709
The above-entitled matter came on regularly for an administrative hearing on March 17, 2000, before the undersigned, on the Complaint of Fire-Trol Holdings, L.L.C., hereinafter "Complainant," against Fire Foam Products Development, hereinafter "Respondent."
Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: firefoam.com
Domain Name Registrar: Network Solutions
Domain Name Registrant: Fire Foam Products Development
Date of Domain Name Registration: May 5, 1998
Date Complaint Filed: February 4, 2000
 

Date of Commencement of
Administrative Proceedings in
Accordance with Rule 2(a)[1] and
Rule 4(c): February 11, 2000
Due Date for a Response: March 6, 2000

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

Respondent had registered the domain names in issue with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Uniform Domain Name Dispute Resolution Policy.

Respondent did submit a purported Response to The Forum within twenty [20] days as required by Rule 5(a), but the Response did not comply with the requirements of either Rule 5(b)(i) or Rule 5(b)(viii).
 

FINDINGS OF FACT
1. For more than thirty-five [35] years, Complainant has manufactured and sold chemicals for extinguishing fires. Since the 1960's, these products have been, and are, distributed worldwide primarily to national and regional government firefighting agencies.

2. In 1985, Complainant adopted and thereafter continuously used the trademark FIREFOAM in connection with the sale of concentrate compositions containing both foaming and wetting agents for extinguishing fires. Dilution of the concentrate compositions and application through aspirating nozzles causes the formation of a very thick wet foam which is deposited on vegetation and structures to extinguish a fire or prevent its ignition. The FIREFOAM fire extinguishing products are also dropped from aircraft, in which case the foam forms autogenously. Since 1985, FIREFOAM products have been sold worldwide primarily to, and used by, national and regional government firefighting agencies.

3. Prior to Respondent's registration of the domain name here in issue, on May 17, 1994, Complainant registered the FIREFOAM trademark with the United States Patent and Trademark Office, Registration No. 1,836,462. A Canadian registration has been sought by virtue of Canadian sales since 1987, and the application is pending.

4. Complainant's FIREFOAM trademark has become famous and widely publicized. Substantial sums have been spent by Complainant in promotion. As a result, the name and mark of Complainant have become associated with products of high quality and customer satisfaction.

5. On May 5, 1998, long after Complainant's adoption and first use of its mark FIREFOAM, and four years after its mark was registered in the United States Patent and Trademark Office, Respondent registered "firefoam.com" through Network Solutions. Respondent, thus, clearly had knowledge of Complainant's prior adoption, usage and registration of Complainant's well-known mark.

6. The domain name is nearly identical to and confusingly similar to Complainant's mark.

7. Respondent has registered and used "firefoam.com" in bad faith for the purpose of capitalizing on Complainant's well-known mark.

8. Respondent has no rights or legitimate interest in the domain name but, to the contrary, Respondent is creating confusion and has used the domain name to divert and usurp Complainant's customers.

9. Respondent in its purported Response indicates it is now using the domain name as an "alias," and that it will abandon the domain name when it is required to be renewed.

10. Complainant's prayer for relief seeks that the domain name be cancelled or transferred from Respondent to Complainant.
 

CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1. The domain name registered with Network Solutions by Respondent on May 5, 1998, is substantially identical and confusingly similar to Complainant's mark.

2. Respondent is not making a legitimate noncommercial or fair use of the domain name, for it clearly was seeking commercial gain by misleadingly diverting users to its own web sites.

3. Respondent has registered the domain name primarily for the purpose of diverting the business of Complainant.

4. Respondent has acted in violation of Complainant's prior trademark rights of which it clearly had knowledge.

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th, 1999) 184 F.3d 1107, 1111, it was said:

However, ISS became aware of the ëEPIX' trademark when it applied for its own registration of ëEPIX.' Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354. [Emphasis in original.]

Here, it is concluded that far beyond the presumptions, Respondent acted in bad faith and with the intent to deceive.
 

DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
IT IS DIRECTED THAT THE DOMAIN NAME "firefoam.com" REGISTERED BY RESPONDENT Fire Foam Products Development BE TRANSFERRED TO COMPLAINANT Fire-Trol Holdings, L.L.C. [1]Any reference to "Rule" or Rules" are to the Internet Corporation for Assigned Names and Numbers [ICANN's] Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.