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August 17, 2010 / Nate Harris

Fender Musical Instruments Corporation v. Christopher Ruth

Summary of Fender Musical Instruments Corporation v. Christopher Ruth
(NAF Claim No. FA1007001333857
)
Filed July 7, 2010; Decided August 9, 2010 (Panelist: James A. Carmody, Esq.)

Domain Name: <fendercustomshop.com>

fendercustomshop.com

screenshot of fendercustomshop.com

The Parties

Complainant Fender Musical Instruments Corporation is a world-famous maker of musical instruments, amplifiers, and accessories. [I myself own a circa 1982 Japanese Fender Jazzmaster.] Fender owns several trademark registrations with the USPTO dating to at least 1966.

Respondent Christopher Ruth of New London, CT,  registered <fendercustomshop.com> on November 26, 2003. The domain points to a click-through site. Mr. Ruth did not respond to the complaint.

Discussion

The Panel notes that, in light of Mr. Ruth’s failure to respond, it will decide the proceeding based on the complaint and “such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.” Furthermore, “[t]he Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”

The Panel then walks through the three Paragraph 4(a) factors.

Identical or Confusingly Similar

The Panel finds that Fender’s trademark registrations sufficiently proved Fender’s rights in the FENDER mark, and that “addition of generic words with an obvious relationship to a complainant’s business [along with the gTLD “.com”] renders a disputed domain name confusingly similar to a complainant’s mark[.]”

Thus, Mr. Ruth’s <fendercustomshop.com> is confusingly similar to Fender’s mark.

Rights or legitimate interest

To prevail, Fender must make a prima facie showing that Mr. Ruth lacks rights and legitimate interests in the domain name. It failed to do so. As the Panel notes:

Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.

Thus, Fender fails to satisfy the second 4(a) factor.

Registered and Used in Bad Faith

Because Fender failed to satisfy the second factor, the Panel doesn’t bother to analyze  the third factor.

Decision

The panel denies the complaint without prejudice. Furthermore, it orders that “the <fendercustomshop.com> domain name REMAIN with Respondent.”


Commentary

It’s strange that Fender went to the trouble to prove its rights in the FENDER mark, but didn’t think to submit a single screen shot of <fendercustomshop.com>. The domain resolves to a click-through webpage that links to sites selling Fender’s gear, which Fender could have used to demonstrate both bad faith and a lack of rights or legitimate interest in the domain name. In short, it wouldn’t have taken much more for Fender to win. Though The Panel may visit the respondent’s website to determine the Respondent’s rights or legitimate interest, it apparently will only do so if the Complainant has gone to the trouble of making out a prima facie case first. See Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas (Claim No. FA0512000610713).

I’m curious why Mr. Carmody dismissed this complaint without prejudice. He’s done so before. See Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft (Claim No. FA1005001324718). Wouldn’t a dismissal with prejudice encourage complainants to show more diligence than Fender showed here?

I also found it interesting that the Panel ordered that the domain remain with Mr. Ruth. That’s different than denying the complaint. If the parties were to agree to a sale/transfer of the disputed domain from Mr. Ruth to Fender, that would technically violate the Panel’s order. Could that violation be evidence of bad faith that could be used against Mr. Ruth’s 13 other domain names (according to WHOIS)?

Epilogue

8/15/2010: Unsurprisingly, <fendercustomshop.com> still points to a click-through website.

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