Jake’s Fireworks Inc. of Pittsburgh, Kansas, brought a UDRP against  Vertical Axis Inc on the domain name worldclassfireworks.com a term for which they held a US Trademark

Here are the relevant facts found by the three member panel and the highlights of the decision:

“The Complainant operates a business which distributes and sells fireworks throughout the United States of America under the name “Jake’s Fireworks”.”

The Complainant owns nine distribution centers in Washington, Nebraska, Kansas, Oklahoma, Arkansas, Kentucky, Indiana and South Carolina. The Complainant owns a trademark registration for the mark WORLD-CLASS FIREWORKS & Globe Design, U.S. Trademark Registration No. 2,781,352, registered November 11, 2003.

The Respondent, Vertical Axis, Inc., is in the business of registering and purchasing domain names for the purpose of resale. The Respondent registered the disputed domain name on December 17, 2005.

At the time the Complaint was filed, the domain name <worldclassfireworks.com> reverted to a website that provided links to various businesses including a number of entities selling fireworks.

The Panel finds that the Complainant does have trademark rights in the mark WORLD-CLASS FIREWORKS & Design by virtue of U.S. Trademark Registration No. 2,781,351.

“The Panel further finds that the domain name <worldclassfireworks.com> is confusingly similar to the Complainant’s trademark WORLD-CLASS FIREWORKS”

“The Complainant’s most difficult issue arises from Respondent’s explicit denial that it was aware of the Complainant’s trademark when it acquired the disputed domain name.”

“Respondent flatly denies any knowledge of Complainant’s trademark. This denial is supported by sworn evidence of 2 witnesses, although the precise role of the witnesses in Respondent’s decision-making is not clear. In the absence of inconsistencies in this evidence, or other circumstances which undermine its credibility, the evidence, on the present record, is difficult for Complainant to overcome.”

“Respondent argues that the mark in question is merely a combination of laudatory and descriptive elements which ought to be available for use by others. The Panel accepts that the disputed domain name is in fact comprised of laudatory and descriptive elements, which are by virtue of their descriptive nature attractive to website developers and users. This is a significant factor in Respondent’s favour.”

” Respondent admits that its business model involves the purchase of multiple domain names, which are identified as having useful descriptive elements, including multiple domain names prefixed by the words ”world class”. In the circumstances of this Complaint, it appears that Respondent’s business model was predicated not on an intention to trade on the reputation of Complainant’s brand but on an intentional selection of attractive descriptive terms.”

“The Panel agrees that a brand owner who adopts a clearly descriptive mark must live with the consequences of that choice, which may sometimes include situations where other users cannot be prevented from adopting those same descriptive terms to identify the character or nature of their products.”

“Our review of Complainant’s sales materials (as produced) makes it clear that the primary source identifier used by Complainant is in fact JAKE’S FIREWORKS, with WORLD-CLASS FIREWORKS serving as a secondary brand. This is not helpful to Complainant’s submission that Respondent must have been aware or ought to have been aware of its trademark rights.”

“Respondent openly admits that its associated website contains links to fireworks suppliers, but maintains that this is a logical consequence of the plainly descriptive combination of words that comprise the disputed domain name. In other words, the impugned links are relied on to support Respondent’s argument that the domain name is primarily a description of the category of wares, not of a particular supplier. The Panel does not view the presence of these links on Respondent’s website as a probative indicator of bad faith.”

“The absence of any other indicia of copying by the Respondent in the design, get-up or appearance of its website is also relevant to the failure to establish bad faith.”

“In light of the evidence provided in this proceeding, the Panel finds that the Complainant has failed to establish on the balance of probabilities that Respondent’s conduct amounts to bad faith registration and use of the <worldclassfireworks.com> domain name.”