Domain name – Domain name dispute resolution policy – Domain hijacking – U.S. Trademark – Design elements – Legitimate interest – Bad faith registration – Bad faith use – Fanciful names – Arbitrary names – Famous marks – Secondary meaning – Descriptive marks – Generic marks.

Complainant was owner of two United States trademark registrations.  Respondent registered the domain name, craftwork.com.  Complainant alleged that Respondent had no legitimate interest in the domain name and is using it in bad faith.

HELD, Name Not Transferred to Complainant.

There can be no question that the domain name CRAFTWORK.COM is identical to the trademark CRAFTWORK in which the Complainant, General Machines, has rights.  Given that design elements cannot be captured in a domain name, the design elements of General Machines' registered marks are irrelevant.

General Machines' trademark is not fanciful or arbitrary, and General Machines has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate craftwork.com only with General Machines.  As Prime Domains has demonstrated, the term "craftwork" is in widespread use in a descriptive sense.  Therefore, the Respondent has rebutted the Complainant’s arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com.

That the Respondent, Prime Domains, has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate.  Prime Domains did not seek to sell the domain name to General Machines; rather, General Machines solicited the offer to sell using an anonymous agent.  These facts do not indicate any bad faith on the part of Respondent. 

The decision of the Panel was unanimous.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Carney, Davis III and Bernstein, Panelists: -

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three person arbitration panel was requested; this panel consists of The Honorable Marilyn W. Carney, Chairman, Arlington, VA; G. Gervaise Davis, III, Esq., Davis and Schroeder, P.C., Monterey, CA; and David H. Bernstein, Debevoise & Plimpton, New York, NY. Each panelist has confirmed to the National Arbitration Forum that she or he has no known conflicts of interest. All three panelists actively drafted, revised and commented on this decision.

For the reasons explained below, the panel has reached the unanimous conclusion that the domain name should not be transferred to the Complainant.

THE DOMAIN NAME
This dispute concerns the domain name craftwork.com. The registrar for this domain name is Network Solutions, Inc.

THE PARTIES
The Complainant is General Machine Products Company, Inc., 3111 Old Lincoln Highway, Trevose, PA 19053 ("General Machine" or Complainant). According to the Complaint, General Machine operates a varied business and has been using the CRAFTWORK trademark to identify a wide range of products used in the utility construction field since 1989.

Respondent Prime Domains ("Prime Domains"), P.O. Box 9911, Washington, DC 20016, registered the craftwork.com domain name with Network Solutions on November 4, 1998. Prime Domains alleges that it is in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and developing Web sites using those domain names for clients.

FACTUAL BACKGROUND
Each party is represented by counsel, and has submitted its position to the Panel along with documentary evidence in support of its position. Based on those submissions and the Panel's independent searches of the U.S. Patent and Trademark Office ("USPTO") website (because both parties are U.S. residents) and Network Solution's Whois database, the Panel has found the following facts:

General Machine is the owner of two United States trademark registrations for stylized versions of the mark CRAFTWORK that were issued in 1990 (Reg. Nos. 1,603,447 and 1,603,281). General Machine uses its CRAFTWORK trademark in connection with hand tools in the construction industry. Other marks that contain the word "craftwork" include CRAFTWORK SOLUTIONS for computer services (registered in the USPTO in April 1997 to Craftwork Solutions, Inc.) and CRAFTWORK for furniture (pending application before the USPTO, filed by Vanguard Furniture Co., with a claimed date of first use of October 1976). 

Prime Domains (which is now known by the name Telepathy, Inc.) has registered or otherwise acquired hundreds of domain names. Most of the domain names registered to Prime Domains (at least, most of those disclosed in the record) appear to be common dictionary terms or generic words such as computer-supply.com, catastrophic.com, food-store.com, geometry.com, necessary.com, wheel.com, confuse.com and shavingcream.com. General Machine has not submitted any evidence showing that Prime Domains has registered domain names that constitute third parties' distinctive trademarks. As part of its business model, Prime Domains registered the domain name craftwork.com in November 1998.

In early June 1999, General Machine learned that Prime Domains had registered the domain name craftwork.com. An agent for General Machine then contacted Prime Domains to inquire about purchasing the domain name craftwork.com on behalf of an undisclosed buyer. In response to the agent's inquiry, Prime Domains sent the agent pricing and leasing information for the domain name. Prime Domains offered to lease the domain name to General Machine for $300-500 a month depending on the length of the lease, or to sell the domain name to General Machine for $25,000 if purchased by June 15, 1999 or $30,000 if purchased after June 15, 1999.
On June 15, 1999, General Machine's attorney sent Prime Domains a cease and desist letter that claimed Prime Domains had no legitimate interest in the domain name craftwork.com and that its registration and offer to sell the domain name craftwork.com violated General Machine's exclusive rights in its CRAFTWORK trademark. Prime Domains' attorney responded on June 22, 1999 claiming that it had been unaware of any parties' trademark rights in CRAFTWORK and was entitled to its registration of the domain name craftwork.com as long as it did not use the domain name for goods and services confusingly similar to General Machine's goods and services.

PARTIES' ALLEGATIONS
General Machines filed this proceeding on January 17, 2000 with the National Arbitration Forum. As grounds for its Complaint, General Machines alleges that Prime Domains has no legitimate interest in the domain name and is using it in bad faith in an effort to extort money from General Machines. General Machines alleges that Prime Domains registered this domain name for the sole purpose of selling or leasing it at a price in excess of the $70 InterNIC registration fee Prime Domains paid for the domain name.

In its Response, Prime Domains alleges that General Machine is attempting to take this domain name through reverse domain hijacking simply because it owns a trademark of a stylized version of this name. Prime Domains alleges that the word "craftwork" has widespread use in a descriptive or generic sense (such as in connection with handicrafts, which is why it registered the domain name) and is used extensively by third parties. In that connection, Prime Domain has cited hundreds of businesses that use CRAFTWORK as, or as part of, their corporate name. Prime Domains disputes General Machine's argument that it registered and used the domain name in bad faith, noting that it did not target General Machine in registering the domain name and did not initiate contact with General Machine.

DISCUSSION
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:

(1) 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; 

(2) that the respondent has no legitimate interests in respect of the
domain name; and

(3) the domain name has been registered and used in bad faith.

There can be no question that the domain name craftwork.com is identical to the trademark CRAFTWORK in which General Machines has rights. Given that design elements cannot be captured in a domain name, the design elements of General Machines' registered marks are irrelevant for purposes of this analysis. General Machines therefore has satisfied part one of the test. 

General Machines has not proven, however, that Prime Domains has no legitimate interests in respect of the domain name craftwork.com. General Machines' trademark is not fanciful or arbitrary, and General Machines has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate craftwork.com only with General Machines. As Prime Domains has demonstrated, the term "craftwork" is in widespread use in a descriptive sense. The Panel finds therefore that Prime Domains has rebutted General Machines' arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com. As a result, Prime Domains does have a legitimate interest in the domain name. That Prime Domains has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate.

Nor has General Machine shown that Prime Domains acted in bad faith. The affidavit of Prime Domains' president states that Prime Domains was not aware of General Machines' (or any other party's) trademark rights at the time it registered the domain name craftwork.com. Prime Domains chose to register this domain name because, like its other domain name registrations, it was descriptive of a service that could be offered under that domain name. Prime Domains did not seek to sell the domain name to General Machines; rather, General Machines solicited the offer to sell using an anonymous agent. These facts do not indicate any bad faith on the part of Prime Domains.

DECISION
It is the unanimous decision of this Panel that the craftwork.com domain name should not be transferred to the Complainant.
Marilyn Carney,  Arbitrator