Deluxe Corporation v. DiSC (Digital
Internet Systems Consultants)
Claim Number: FA0202000105212
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@delux.com 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.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
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>.
B.
Respondent
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.
FINDINGS
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.
DISCUSSION
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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