clearout.com

1.1 The Complainant is Chemical Products Technologies, LLC, of Catersville, Georgia, United States of America, represented by Todd Deveau, Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta, Georgia, United States of America.

1.2 The Respondent is Christopher Shadbolt, of Mississauga, Ontario, Canada.

2.1 The disputed domain name is <clearout.com> (the "domain name") which is registered with Network Solutions, Inc (the "Registrar").

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2003. On May 16, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On May 20, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2003. No response was filed with the Center.

3.3 The Center appointed Nick Gardner as the sole panelist in this matter on June 20, 2003. 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 the Rules, paragraph 7.

3.4 On July 4, 2003, the Panel requested, pursuant to Rule 12 of the Rules that the Complainant file a further statement within 7 days detailing the nature and extent of its use of the "CLEAROUT" mark between the period April 1, 1999, and November 25, 1999. This request was communicated to the parties on July 7, 2003. The time for the Panel to give its decision was extended to July 18, 2003.

3.5 On July 14, 2003, the Center received by e-mail from the Complainant‘s representatives the requested statement.

4.1 The Complainant manufacturers and sells chemicals for use as herbicides under various trademarks, including under the brand name "CLEAROUT." The Complainant uses and markets its chemicals both inside the United States and internationally.

4.2 The Complainant is the owner of a US Federal Trademark Registration for the CLEAROUT mark (Registration No. 2,575,801). The Complainant applied for this mark on July 14, 1997, and it was registered on June 4, 2002. On July 17, 2002, the Complainant applied for a Canadian Trademark Registration for the same mark.

4.3 The earliest use of the CLEAROUT mark identified by the Complainant was during a meeting with the US Environment for Protection Agency ("EPA") on June 5, 1998, to discuss efforts to obtain approval for the CLEAROUT product. The Complainant formally submitted its application to the EPA to register its herbicide product under the CLEAROUT mark on July 1, 1999. Prior to this application, the Complainant had provided samples of its product labeled under the product name CLEAROUT for testing to Convance Laboratories in Wisconsin and Product Safety Labs of New Jersey.

4.4 The Complainant has been using the CLEAROUT mark in interstate trade since at least June 2001.

4.5 The Respondent registered the domain name on November 25, 1999.

4.6 The Claimant says that it attempted unsuccessfully to contact the Respondent at the address and telephone number listed on the Whois search for the domain name. The Complainant then e-mailed the Respondent offering him $500 in exchange for the domain name. The Respondent called in response to the e-mail and asked for $10,000 for the domain name. The Complainant refused to pay that sum but made further attempts to contact the Respondent via telephone to discuss the matter. None of these calls were returned by the Respondent. This evidence is not challenged in that no Response has been filed.

5.1 The Complainant’s contentions are as set out below.

5.2 The domain name is identical to the Complainant‘s registered "CLEAROUT" Trademark by virtue of the registered US trademark and the Complainant‘s common law trademark rights in that mark. Alternatively, the domain name is confusingly similar to the Complainant‘s CLEAROUT Trademark.

5.3 The Respondent does not have any rights or legitimate interests in the domain name. It has no relationship or affiliation with the Complainant and at no time has the Complainant assigned, licensed or otherwise given the Respondent permission to use its trademark. The Complainant is unaware of the Respondent attempting to obtain any trademark registration for the name CLEAROUT or of the Respondent making any claim to any protectable right in that name. Further, the Respondent did not file an opposition to registration of the CLEAROUT mark in the US nor has it made any attempt to object or oppose the Complainant‘s application in Canada for that mark or otherwise claim any right to the CLEAROUT mark. The Complainant is not aware that the domain name has ever been used by the Respondent in connection with a bona fide offering of goods or services and to the best of the Complainant‘s knowledge the domain name has at all times displayed an "Under Construction" message. The Complainant is not aware of the Respondent in any way doing business under or being known as CLEAROUT or selling any products under that name.

5.4 The Complainant‘s submissions concern registration/use in bad faith as follows:

(i) The Respondent did not oppose the Complainant‘s application for the CLEAROUT mark in the US;

(ii) The Complainant began using the CLEAROUT mark in April 1999, and the Respondent registered the domain name in November 1999;

(iii) Since November 1999, to the best of the Complainant’s knowledge the Respondent has never made any use of the domain name;

(iv) The e-mail correspondence and telephone conversations between the Complainant and the Respondent outlined at paragraph [4.6] above. The Respondent’s demand for $10,000 is an exorbitant amount;

(v) The Respondent registered the domain name when he knew or should have known of the Complainant’s trademark;

(vi) The domain name uses the Complainant’s entire trademark;

(vii) The Respondent has failed to use the domain name for any purpose; and

(viii) The Respondent failed to respond to the Complainant’s initial attempts to make contact.

5.5 These facts taken individually and as a whole demonstrate bad faith registration and use.

5.6 The Respondent has not provided any submissions to the Center.

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint as well as the further statement filed by the Complainant. In the light of this material, the Panel finds as set out below.

6.2 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy.

6.3 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:

(i) the domain name is identical to or confusingly similar to a mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.

6.4 The Complainant has registered rights in the CLEAROUT mark by virtue of its US Trademark Registration. It is clear that this trademark is the same as the domain name, the ".com" suffix being ignored for these purposes.

6.5 The question of the date at which the Complainant had such rights and whether they do or do not predate the filing of the domain name is considered below in relation to the question of bad faith.

6.6 The Panel concludes that the domain name is identical to or confusingly similar to a mark in which, as at the date of the Complaint, the Complainant has rights;

6.7 The Panel takes the view that "clearout" is an ordinary English word (or the combination of two ordinary English words). As such a Complainant faces a much heavier burden in establishing that a Respondent has no legitimate interest (as opposed to cases where the domain name is an invented or fanciful term which corresponds to a trademark of the Complainant).

6.8. Of course there are cases where the use made of ordinary words by a Complainant is such that they acquire distinctiveness. With appropriate evidence it may be possible to show that the level of distinctiveness is such that the words have become associated with a Complainant such that lack of legitimate interest by a party registering a domain name corresponding to such words may at least be inferred. These types of case then depend upon the Respondent’s evidence as to how it came to choose such words as a domain name. In the present case however there is no evidence of any distinctiveness associated with these words at the relevant date.

6.9 The Complainant relies upon the application and subsequent publication for opposition of the pending trademark application occurred in 1997 and 1998 respectively. The Panel does not accept that in relation to the UDRP this is sufficient to deprive the Respondent of any rights or legitimate interests. If, as appears to be suggested, the Complainant wishes to argue that is the position under US trademark law that is a matter for the Complainant to pursue elsewhere.

6.10 The Complainant’s submissions in this regard all appear to depend upon what it says are principles of US trademark law. The Panel declines to apply them to the UDRP.

6.11 The Panel therefore concludes the Respondent did have a legitimate interest in that the Domain Name consists of an ordinary English word (or combination of words).

6.12 The question to be considered in this regard (given that the Domain Name comprises an ordinary English word or words) is whether, and if so to what extent, the Respondent was aware of any prior rights that the Complainant had as at the date he came to apply for the Domain Name. The Panel takes the view that the Complainant has to establish that the Respondent had such knowledge if it is to establish bad faith in this context.

6.13 The short point is that the Complainant has not provided any evidence which suggests that the Respondent knew of the Complainant as at November 25, 1999.

6.14 The Complainant has relied upon its registered US trademark. However, this trademark was not registered until June 4, 2002. It therefore post-dates the Respondent’s registration of the domain name and as such does not of itself establish that the Defendant knew of the Complainant or its activities or products.

6.15 Of course the Complainant may well have made use of the term "CLEAROUT" prior to obtaining its registration. It was not immediately clear to the Panel on reading the Complaint what use the Complainant had made of this mark prior to registration. It was clear that the Complainant had made certain steps in anticipation of such use, including filing the trademark application and taking steps to obtain regulatory consent to launch a herbicidal product. No details were given however of any use that would have been visible to the general public.

6.16 It was to seek clarification of this issue that the panel issued the request referred to at paragraph 3.4 above. This request was directed at the period between April 1999 (when the Complainant says it began use of the CLEAROUT mark) and November 1999 (when the domain name was registered).

6.17 In response to this request the Complainant filed a detailed submission with supporting documents as to the activities it had undertaken since June 1998. It suffices for present purposes to say that this material establishes a clear intent to use a herbicidal product to be called CLEAROUT and to obtain the necessary regulatory consents in this regard. What it does not establish is any actual use of that term in marketing such a product to the public, or indeed any use at all (other than the publication for opposition of the pending trademark application - see below) that would have been visible to anyone other than the Complainant or the regulatory authorities concerned.

6.18 The Panel does not accept the Complaint’s submission that filing of the application for the registered trademark constitutes constructive use for the purposes of the UDRP. Whatever the position may be under US trademark law the Panel takes the view that the Complainant has to establish that, as at the date of the registration of the domain name, its use was such to mean that the registration by the Respondent constituted registration in bad faith. There is no evidence before the Panel of any use that the Respondent would have been aware of or been likely to be aware of. The Complainant has failed to establish this is the case.

6.19 The Panel therefore finds the Complainant has failed to demonstrate that the domain name is identical or confusingly similar to a mark in which, as at the date the domain name was registered, it has rights.

6.20 As far as the Respondent’s offer to sell the domain name for $10,000 is concerned, the evidence establishes that the Complainant approached the Respondent offering to purchase the domain name and that the Respondent replied by asking for a price considerably higher than that offered by the Complainant. On the present facts, and taken in isolation, the Panel finds that the Respondent’s offer to sell the domain name for $10,000 following an initial approach by the Complainant does not indicate bad faith registration or use. Whilst the price might be high, on the evidence before the Panel, the Respondent is the legitimate owner of the domain name and is entitled to seek whatever price he considers appropriate.

6.21 Similarly if the Respondent wishes to keep the domain name as a "holding" name for a site that is "under construction" he is entitled to do so.

6.22 In coming to these conclusions, the Panel is strongly influenced by the lack of any evidence to suggest that the Respondent either was or should have been aware of the Complainant’s use of the CLEAROUT mark as at the date of registration of the domain name. Indeed on the evidence before the Panel it is not even clear how or why the Complainant suggests that the Respondent should have found out about the Complainant’s plans to use the term CLEAROUT. The only information of any relevance which was publicly available at this time was that the Complainant’s pending trademark application which had been published for opposition on August 11, 1998. The suggestion that the Respondent, an individual resident in Canada, was under an obligation to scrutinize published pending US trademark applications and that his failure to do so constitutes "bad faith" is not accepted by the Panel.

7.1 In the light of the above findings, the Panel‘s decision is as set out below.

7.2 The domain name is identical or confusingly similar to a mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

7.3 The Respondent has rights or legitimate interests in respect of the domain name within the meaning of paragraph 4(a)(ii) of the Policy.

7.4 So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to show that domain name was registered and has been used in bad faith.

7.5 The Panel therefore declines to find that the domain name should be transferred or cancelled.

7.6 No further action is required to implement the Panel’s decision.