Deluxe Corporation v. DiSC (Digital Internet Systems Consultants)
Claim Number: FA0202000105212
The Complainant is Deluxe Corporation, Shoreview, MN (“Complainant”) represented by Linda Byrne, of Merchant & Gould P.C. The Respondent is Dan Meriwether DiSC (Digital Internet Systems Consultants), Oakland, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delux.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.
Judge Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 27, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.
On March 5, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <delux.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
At the Respondent’s request, the deadline for filing the Response was extended to April 15, 2002.
A timely Response was received and determined to be complete on April 5, 2002.
Complainant made a timely additional submission entitled Complainant’s Additional Response, which was received April 10, 2002. Respondent submitted a timely additional submission entitled Respondent’s Additional Response, which was received April 15, 2002.
All of the submissions received were considered by the Panel.
On April 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant, Deluxe Corporation (“Deluxe”), owns businesses that provide checks, business forms, labels, self-inking stamps, fraud prevention services, and customer retention programs.
Deluxe has been using the DELUXE name in connection with its printed bank checks and related products since at least 1915.
Deluxe owns several U.S. Federal Trademark Registrations for the mark DELUXE or containing the word DELUXE.
Deluxe operates a website at <deluxe.com>. In addition, a division of Deluxe, called Deluxe Business Forms, operates a website at <deluxeforms.com>.
On September 27, 2001, a Deluxe representative sent an e-mail to the owner of the domain name <delux.com> to investigate whether DiSC would be interested in selling the rights to <delux.com>. Deluxe offered Respondent $2500 in exchange for transfer of the domain name. The Respondent rejected this offer, stating for a reasonable CPC (Cost Per Click) it would redirect the link to <deluxe.com>.
Respondent has admitted that there is a great deal of actual confusion. At least 10,000 e-mails have been misdirected to <delux.com>, when the senders in fact intended to reach the Complainant at <deluxe.com>.
Due to the dissimilarities in industry, DISC being a web development service catering to technology companies, and Deluxe Corp offering goods to consumers and banks, there can be no confusion with the respective relevant purchasing public.
DISC markets its services primarily through word-of-mouth of previous clients and associates. Deluxe Corp markets primarily through check reorder forms inserted into their product as well as online banner ads.
The Complainant uses the case of “over 10,000 email messages” as evidence of actual confusion. These 10,000 emails are comprised of 99% bulk email.
With the arguable exception of when being used in connection with its specific market segment, Deluxe Corp’s mark “DELUXE” does not evoke the instant and extensive recognition such as marks like “COCA-COLA” and “KODAK.” The mark “DELUXE” has not achieved fame. The term deluxe existed in the French language since there was a French language and in English language since 1819; 96 years prior to Deluxe Corp’s first use as its mark.
Well over 3600 legitimate businesses operate with the term “deluxe” in their domain name in connection with a web site, such as, <deluxe.org>, <deluxe.net>, <deluxe.biz>, <deluxe.info>, <deluxebargains.com>, <deluxebakery.com>, <deluxe-beds.com>, <deluxebrands.com>, etc.
For more than 6 years prior to any notice of this dispute, the Respondent has used <delux.com> in connection with a bona fide offering of services.
Throughout all the years of the Complainant’s inactivity, the <delux.com> web site had undergone six plus years of continuous and active evolution to support the needs of DISC and DISC’s clients; a bona fide offering of services.
DISC has been known by its email address at <delux.com> since its first web-based contract immediately after registering the domain in 1995.
Associates and clients of DISC normally access the content of the <delux.com> web site through bookmarked, published or emailed links.
Deluxe Corp did not provide any evidentiary basis to back its claim that DISC has received any form of commercial gain from attracting, intentional or otherwise, Deluxe’s Internet users. Since DISC’s business, as represented by <delux.com>, is a Web consulting service targeted at local San Francisco/Bay Area clients and Deluxe Corporation is a global check producing consumer goods company, there is no benefit to DISC in the accidental diversion.
Since Deluxe Corporation, a printed goods company, and DISC’s web consulting service have nothing in common, Respondent or his consulting business do not benefit from any alleged misappropriation of Deluxe’s goodwill.
DISC did not seek to sell the domain name to Deluxe Corp.; rather, six-plus years after the registration, Deluxe Corp solicited the offer.
In October 2000 the Respondent renewed the registration of <delux.com> with Network Solutions for a five year period.
If DISC were to sell the domain, most of the programming code written for clients and DISC and hosted at the <delux.com> domain would need to be re-written to point to a new domain.
DISC has not prevented Deluxe Corp. from reflecting its mark in a domain name.
The earliest record of a web site at <delux.com> that DISC is able to find was November 2, 1996.
C. Additional Submissions
The date of Deluxe’s first letter to the Respondent is September 27, 2001.
Before September 27. 2001, the <delux.com> site simply stated that it was “down for maintenance”. The site gave no indication of any legitimate use of the <delux.com> domain name or the term DELUX.
Respondent has not used the DELUX term in a legitimate way, such as the name of its business. The testimonials from Respondent’s business associates make no mention of Respondent’s business being known as “DELUX.”
Respondent has no evidence that it has rights or legitimate interest in the <delux.com> domain name.
Deluxe Corp. is using the “DELUXE” mark to promote the sale of goods, primarily checks. DISC uses <delux.com> to promote web design and development services, not goods.
The Respondent allows that there is a similarity between Deluxe Corp.’s mark of “DELUXE”, and DISC’s use of <delux.com>, but that the problem referenced here did not stem from confusion, but rather human error.
Factors such as the care, time and effort exercised by the relevant customer in choosing a vendor, weakness of the “DELUXE” mark, the dissimilar use of the mark, the Respondent’s intended use of the mark, the different marketing channels used, and that DISC does not plan to expand into selling printed goods, all point to the lack of confusion.
Since registering the domain name in 1995, the Respondent has always had a web site that was identified with their services at <delux.com>. The June 1998 update cost DISC approximately $10,000.00.
The general public may be Deluxe Corp’s target consumer, but not DISC’s target client. DISC targets high-tech or tech-savvy clients who are very comfortable with deep links. In the colloquial of the web development and high tech industries, the term, “delux” reads, “how a UNIX guru expresses quality.” The domain name, <delux.com> therefore implies that the owner is familiar with Internet conversations and produces a quality commercial service.
For the reasons stated below, the Panel finds that Complainant has not proven the necessary elements and, therefore, the request for the transfer of the domain name is denied.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that Respondent’s <delux.com> is confusingly similar to Complainant’s DELUXE mark because it is merely a deletion of an “e”, a common misspelling of Complainant’s mark, with the addition of “.com.” See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).
Complainant has proven this element.
Rights or Legitimate Interests
The Panel finds that Respondent has made a bona fide offering of goods under Policy ¶ (c)(i) in respect to the disputed domain name as it has developed over 4,500 separate pages on <delux.com> and has built a customer base familiar with its website location at the disputed domain name. See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development).
The Panel also finds that Respondent is commonly known by the disputed domain name because associates and clients associate Respondent with <delux.com>, and Respondent has had <delux.com> printed on its business cards since 1995. As a result, Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ (c)(ii).
Respondent has proven it has rights or legitimate interest to the domain name and, therefore, Complainant has not proven this element.
Registration and Use in Bad Faith
The Panel finds that Respondent has registered the disputed domain name in connection with a legitimate consulting company for six years and has not attempted to divert Complainant’s customers to Respondent’s web site. Complainant and Respondent are not competitors and do not offer similar services. Respondent has not used the domain name at issue in bad faith under Policy ¶ 4(b)(iv). See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business).
Complainant has not proven this element.
For the reasons stated above, since Complainant has not proven the necessary elements, the relief requested by Complainant is denied.
Judge Karl V. Fink (Ret.), Panelist
Dated: April 30, 2002
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