Cool Roof Rating Council, Inc. v. CRRC, Inc
Claim Number: FA0709001082270
Complainant is Cool Roof Rating Council, inc. (“Complainant”), represented by David
M. Abrahams, of Webster, Chamberlain & Bean,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crrcinc.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2007.
On September 27, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <crrcinc.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 24, 2007 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.
A timely Response was received and determined to be complete on November 5, 2007.
On November 12, 2007, Complainant submitted a timely additional submission that was accepted and determined to be complete.
On November 14, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
On November 19, 2007, Respondent submitted a timely additional submission that was accepted and determined to be complete.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a non‑profit organization, operated for the following purposes:
· To implement and communicate fair, accurate, and credible radiative energy performance rating systems for roof surfaces.
· To support research into energy related radiative properties of roofing surfaces, including durability of those properties.
· To provide education and objective support to parties interested in understanding and comparing various roofing options.
Complainant is interested in the advancement of “cool
roofs”, i.e. roofs which use materials tending to reflect and emit the sun’s
heat back to the sky as opposed to transferring heat to the building
below. Those buildings with “cool roofs”
are considered more energy efficient in hotter temperatures, as these buildings
require less energy for cooling, thus lowering consumption and cooling
costs. Complainant administers a cool
roof Product Rating Program through which roofing manufacturers have their products tested by CRRC Accredited Independent
Testing Laboratories. The laboratories test solar reflectance and
thermal emittance properties of a given roofing product, and record these
radiative property values in the CRRC Directory. Code bodies, architects, building owners and
specifiers rely upon this rating information to assist with purchasing
decisions related to cool roof products.
Complainant conducts business throughout the
Complainant has registered the following trademarks:
CRRC COOL ROOF RATING COUNCIL® and Design U.S. Reg. No. 2,961,803 for “association services, namely promoting the interests of individuals, entities and agencies interested in the advancement of energy efficient roofing products,” in International Class 35 and “testing, analysis and rating of the reflective qualities and thermal properties of roofing products,” in International Class 42 (Exhibit 2);
CRRC COOL ROOF RATING COUNCIL® and Design U.S. Reg. No. 2,961,804 for “indicating membership in an organization of individuals, entities and agencies interested in energy efficient roofing products,” in International Class 200 (Exhibit 3);
CRRC U.S. Appl. Ser. No. 77/258308 for “association services, namely promoting the interests individuals, entities and agencies interested in the advancement of energy efficient roofing products,” in International Class 35 and “testing, analysis and rating of the reflective qualities and thermal properties of roofing products,” in International Class 42 (Exhibit 4);
Respondent CRRC, Inc. is in the business of selling
cool roofing products for a profit.
Respondent uses the <crrcinc.com>
domain name for its web site, in which it bills itself as the “leading resource
for application of ‘Cool Roof’ materials in the
Complainant contends that the domain name complained of wholly incorporates Complainant’s CRRC mark. Respondent’s mere addition of the generic entity indicator “INC” does very little to vary the impression of the dominant feature of the URL, i.e. “CRRC.” Complainant’s registered trade name is “Cool Roof Rating Council, Inc.” Those searching for Complainant on the Internet could reasonably enter the domain name <crrcinc.com> in trying to access Complainant’s web site for information on cool roofs and rated cool roof products. The <crrcinc.com> domain name is being used in connection with a web site in which cool roof products are promoted and sold – the same types of products of which Complainant promotes the use and provides ratings.
Complainant further contends that
Respondent is not making a legitimate noncommercial or fair use of the <crrcinc.com> domain name. As alluded to above, Respondent is using the <crrcinc.com> domain name as more
than a mere domain name, but as an indicator of source aimed at misleadingly
diverting consumers to its web site.
Since 1998, Complainant has been promoting the cool roof industry and
educating the public about cool roof products and their environmental benefits
as well as rating the qualities of cool roof products. The cool roof industry is a relatively small
community and Respondent and its principals knew or should have known of
Complainant, its CRRC marks and its activities (along with knowledge of
Complainants’ trademark registrations).
The logo Respondent used in its mailing campaign supports the fact
Respondent and its principals knew of Complainant and its activities – the
similarities between the logos are too numerous to be mere coincidence. Respondent uses the CRRC mark on its web site
to promote and sell cool roof products.
Complainant is an independent and non-biased
organization acting for the collective good of the entire cool roof industry,
governmental entities and the public.
Complainant provides independent ratings of roofing products made by
many manufacturers so that consumers of cool roofing products can made educated decisions as to the purchase and use of these
products. Respondent is using the <crrcinc.com> and the “
Respondent cannot be said to have a legitimate interest in the <crrcinc.com> domain name as its only purpose is to direct traffic that should be going to Complainant’s site to Respondent’s web site so that Respondent can promote and sell its preferred product line. Respondent’s intent is solely for commercial gain, to create a likelihood of confusion and to deceive. Respondent does not have any legitimate right in and to the trademarks “CRRC” or “CRRC, INC.” It has not registered these marks in the United States Patent and Trademark Office, nor made any attempt, to Complainant’s belief and knowledge, to register these marks in any other regulatory body responsible for the registration of intellectual property.
finally contends that Respondent is showing bad faith in the registration of
the <crrcinc.com> domain name
because it was registered to “intentionally attempt to attract, for
commercial gain, Internet users to [Respondent’s] web site and other on-line
locations, by creating a likelihood of confusion with the Complainant’s mark[s]
as to the source, sponsorship, affiliation, or endorsement of [Respondent’s]
web site or location or of a product or service on [Respondent’s] web site or
location.” Uniform Policy ¶ 4(b)(iv). As mentioned
above, upon typing in the URL <crrcinc.com>,
the user is directed to the Respondent’s web site entitled “
In its Response Respondent basically contends the following:
1. Respondent’s domain name, <crrcinc.com> is not identical or confusingly similar to any mark in which Complainant has rights because, Complainant’s two Registered Trademarks and its recent pending Application are invalid because all three claimed marks are mischaracterized and mutually exclusive.
2. Complainant and Respondent do not, and cannot, compete with each other because Complainant is forbidden by law to sell any goods or services in the cool roofing industry.
3. Respondent’s use of its trade name CRRC, Inc. and website <crrcinc.com> occurred prior to Complainant’s use of “CRRC,” apart from its heavily stylized logo or attempted registration of the “CRRC” mark by Complainant. The “CRRC” mark is already the subject of another’s valid USPTO Registration.
4. There is no likelihood of confusion because: Complainant’s use of its claimed marks are descriptive and inherently weak; the acronym “CRRC” is used by hundreds of entities both in and out of the cool roofing industry; there is no actual confusion; Complainant speaks to a very sophisticated audience; Complainant and Respondent do not compete; Complainant never uses “CRRC” apart from its Logo; any consumer impression of Complainant’s claimed mark is inextricably tied to its Logo; Complainant’s web address is very dissimilar; anyone is allowed to use Complainant’s claimed marks; and Complainant is required by law to allow any qualifying product to carry its claimed mark.
5. Respondent has legitimate rights and interests in “CRRC” predating this dispute. Respondent is a bonafide wholesaler of cool roofing products. Respondent has cooperated with all of Complainant’s unreasonable demands. Respondent did not register “crrcinc” in bad faith and is not using “crrcinc” in bad faith.
In its Reply to the Response Complainant points out, that this proceeding is not the appropriate forum to adjudicate whether Complainant has forfeited any rights to its federally registered trademarks, pending trademark applications and common law rights. In this regard Complainant further points outs that the mandate of the Uniform Dispute Resolution Policy is very specific and defines the scope of review of abusive registration claims very precisely in Paragraph 4(a). In that specific mandate, the Panel has to consider whether:
(i) [the domain name owner’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [the domain name owner has] no rights or legitimate interests in respect of the domain name; and
(iii) [the domain name owner’s] domain name has been registered and is being used in bad faith.
After rebutting extensively Respondent’s allegations in its Response Complainant concludes that it “called out” Respondent for its use of identical trademarks to market goods and services to the same universe of consumers in the cool roof industry - a relatively small and insular community of companies and roofing professionals. The similarities as between the marks are too similar to be mere coincidence and give rise to the inference that Respondent was using (in the case of the logo) and is currently using (in the case of the CRRC word mark) confusingly similar marks in an effort to confuse consumers as to source, sponsorship and affiliation for the sole purpose of illegitimate commercial gain. Respondent is using the <crrcinc.com> domain name for a similar purpose. Respondent’s continued use of the <crrcinc.com> domain name will only allow its illegitimate activities to perpetuate. Accordingly, Complainant respectfully requests that this Panel rule in favor of the transfer the <crrcinc.com> domain name to the Complainant.
Respondent’s Additional Submission
Respondent stated in his Additional Submission amongst other the following:
“Importantly, it is undisputed here that Respondent is not passing off goods or services; Respondent is not cybersquatting; Respondent is not engaged in the business of buying and selling domain names; Respondent is not preventing Complainant from reflecting its name in domain names; and Respondent is not disrupting Complainant’s business. Complainant’s only possible basis to show that, Respondent does not have any legitimate right to use the domain name and that Respondent registered and is using the domain name in “bad faith,” must be supported by specific findings that Respondent intentionally created a likelihood of confusion with Complainant’s claimed mark, for the express purpose of diverting internet users to Respondent’s website for commercial gain. Accordingly, this panel must also decide the validity of Complainant’s claimed marks and that Respondent acted in bad faith in using an acronym for Respondent’s legitimate, descriptive and commonly known trade name which predated the dispute before this Panel.
A central theme to Complainant’s Reply is that it wants to have it both ways. Simply put, Complainant wants to be in the business of certifying cool roofing products and the laboratories that do the testing, but not be subject to the undisputed rule that Complainant cannot use the same mark for “collective membership.”
Complainant does not provide any goods or services. In fact, Complainant is prohibited from doing so by U.S. Trademark Law, the very law it relies on in attempting to establish rights in its claimed marks. Further, it appears that Complainant deliberately misclassified its U.S. Trademark registrations for the purpose of evading the statutory restrictions on the use of “certification” marks, all to the direct detriment and confusion of consumers. Complainant’s admitted registrations as “collective membership” and “service” marks is evidence of Complainant filing registrations with the USPTO that mischaracterize the claimed marks.
There can be no dispute that Complainant is in the business of the “certification” of roofing products. “A certification mark is a special creature created for a purpose uniquely different from that of an ordinary trademark or service mark.” 3 McCarthy § 19.91 (4th Ed.2005). A certification mark is a mark used by someone other than its owner to signify that a product or service has a certain characteristic. Complainant also claims rights to use its claimed marks to identify “collective membership.” Therefore, because a mark cannot function both as a collective mark and as a certification mark and because such characterizations are mutually exclusive, Complainant’s claimed marks are invalid. Thus, Complainant’s usage of the claimed marks for both purposes could give rise to the inference that the claimed marks were designed to mislead consumers for the apparent benefit of its “Charter Members,” and Complainant’s complaint here is, therefore, in bad faith.
Complainant’s argument that its classification as a “service mark” is valid is unavailing. An examination of the Underwriters Laboratories Registration, attached as Exhibit “G” to Respondent’s Opposition, is instructive. Note how the Underwriters’ mark is classified as a “Certification” mark.
Complainant’s argument that the examining attorney would have recognized the certification issue by looking at the submitted specimens is unsound. Complainant has provided specific evidence, beyond any doubt, establishing that it is in the “certification” business; however, Complainant failed to provide any direct information to the USPTO that Complainant was in the “certification” business. Complainant’s characterization to the USPTO that it is in the “testing, analysis and rating the reflective qualities and thermal properties of roofing products” is misleading at best, and is evidence that Complainant’s complaint here is in bad faith.
While Complainant claims that it is not a “certification” mark because it does not set a minimum standard for what is “cool” in relation to roofing products, it does, without dispute, set a minimum standard for what it considers to be adequate testing. Complainant’s Laboratory Accreditation Label clearly certifies that the roofing product was tested by laboratories accredited by Complainant.
Complainant’s Laboratory Accreditation Label is unquestionably a certification that the testing of any products bearing Complainant’s claimed marks were done by laboratories that met Complainant’s “standards in relation to [the] quality” of the laboratory. United States TMEP §1306.01. Complainant’s argument that it does not set the standard for what is “cool,” but just sets the standard for how “coolness” is measured, is a distinction worthy of a fine lawyer, but a distinction, nonetheless, without meaning. The Lanham Act defines: (1) a “certification” mark as “any word, name, symbol, or device or any combination thereof . . . used by a person other than its owner . . . to certify . . . quality, accuracy, or other characteristics of such person's goods or services . . . .” 15 U.S.C. § 1127 (emphasis added).
The mere fact that Complainant has filed an application to register “CRRC” with the U.S. Patent and Trademark Office does not establish that Complainant has service mark rights therein until the application matures into a registration. J. L. Wilson Co., Inc. v. Ultraviolet Res. Int’l, Claim No. FA 97148 (Nat. Arb. Forum June 18, 2001).
Complainant’s attempts to distinguish Aspen Grove, Inc. v. Aspen
Grove, D2001-0798 (WIPO Oct. 17, 2001) and Spencer Douglass MGA v.
Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001) are
unavailing. Complainant mistakenly
asserted in its Reply that Aspen Grove was about an “intent to use”
application. However that was not the
case. The case actually said,
“Complainant's claim concerning its so-called trademark is, at best, ambiguous.
On the one hand, Complainant claims a
Complainant’s attempt to distinguish Spencer Douglass MGA is also unavailing as the decision to transfer in that proceeding arose out of the factual findings that the Respondent there engaged in a pattern of cyber squatting; an issue not found here. Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001)
Additionally, “collective” marks were unknown at common law and came
into existence only as a federal statutory construct. Therefore, common law rights in “collective”
marks do not survive in the absence of federal registrations. See Huber
Complainant’s best argument, that it does not impermissibly use its claimed marks for both “certification” and “collective membership”, is that the Labels/ “Logos” it uses to identify “certification” and “membership” are not the same because the logos have different distinct elements that set them apart. Exactly, if Complainant has any rights to its claimed marks, the rights are tied to its Labels/Logos and not to the CRRC acronym. If the CRRC acronym was the mark itself, as opposed to the distinctive Labels/Logos, then the Complainant would be impermissibly using the identical marks for both “collective membership” and “certification,” thereby invalidating Complainant’s claimed marks. Accordingly, if Complainant’s argument that it’s Labels/Logos are distinct from one another is accepted, then Complainant has no claim to the claimed mark “CRRC” separate and apart from its Labels/Logos.
One way or the other, Complainant’s Complaint here requires that it have it both ways for it to succeed. However, Complainant cannot simultaneously argue that the us of “CRRC” is so “dominant” in the marks embodied by its Labels/Logos that the true mark is “CRRC” by itself, and also argue that, Complainant’s simultaneous use of Labels/Logos for “collective membership” and “certification” would not be identical. Complainant’s entire case hinges on both of these mutually exclusive realities co-existing at the same time. However, such a reality cannot exist as matter of law, because, “collective” marks and “certification” marks are mutually exclusive. See Midwest Plastic Fabricators, Inc. v. Underwriters Labs., Inc., 906 F.2d 1568, 1571 (Fed. Cir. 1990)
Disputes centering on contractual questions are outside the scope of
the Policy. Discover
“Complainant’s [sic] counts amongst its membership any person or entity interested in roofing field including suppliers, distributors, consultants, non-profit groups, government agencies, educational institutions, air quality boards, code bodies, energy service companies and roofing contractors.”
As Complainant allows that “any person or entity interested in roofing field” may use its membership mark, how can Complainant argue that use of the mark could lead to confusion as to the source or sponsorship of any goods? Use of the claimed mark “CRRC” is open to use by “any person or entity interested in roofing field.” Why would any person be confused as to origin or sponsorship when the claimed mark “CRRC” is allowed to be used by “anyone?”
Assuming, arguendo, that Complainant is only in the “testing, analysis and rating the reflective qualities and thermal properties of roofing products,” then there can be no confusion because Respondent merely sells roofing products and does not offer any services for “testing, analysis and rating” of roofing products. No one would ever seek out Respondent to perform “testing, analysis and rating” of roofing products or be diverted away from Complainant for this.
Complainant’s argument that its claimed mark “CRRC” is not descriptive and weak because there is no evidence “that ‘CRRC’ is generally understood as representing the words ‘Cool Roof Rating Council,’” is unpersuasive. It is undisputed that the acronym “CRRC” is in fact used by Complainant as an acronym for “Cool Roof Rating Council” and is always used by Complainant before the public in conjunction with the tradename “Cool Roof Rating Council.” The trade name “Cool Roof Rating Council” is in and of itself weak and descriptive. If the claimed mark “CRRC” is not understood to refer to the “Cool Roof Rating Council,” then there can be no confusion, as no one would relate “CRRC” to Complainant.
Complainant argues on page 8 of its Reply that, “Complainant has also been using the mark CRRC independently of the logos for close to ten years.” However, Complainant conveniently fails to offer any evidence demonstrating this claim. Interestingly, Complainant never bothered to register the claimed mark for those ten years, but rather registered Labels/Logos instead. Complainant only decided to file for application of its claimed mark “CRRC” after the dispute herein arose. An application that has not yet been published for opposition. Lastly, the Exhibits before this Panel demonstrate that Complainant’s claim mark is always used in the form of its distinct Labels/Logos.
Complainant’s argument that “anyone” cannot use its logos is contravened by undisputed facts and Complainant’s own admissions. Complainant very clearly states on page 6 of its Reply that, “any person or entity interested in roofing field” can be a member. Thus, “any person or entity interested in roofing field” can be a member, and therefore, the claimed mark does not represent the origin of anything. Complainant also argues that the use of its claimed marks are license agreements and usage guidelines. Complainant has not offered any evidence, argued, or even suggested that Respondent sells any products that are not rated by the Cool Roof Rating Council, or that Respondent is not a wholly- owned subsidiary of a Cool Roof Rating Council Member.
Importantly, Complainant’s usage guidelines are limited to the use of Complainant’s “Logos.” A quick read of Complainant’s Exhibit “6" is instructive here. First, Complainant’s usage guidelines do not mention anything about domain names. Second, there is no specific exclusion for the use of “CRRC” or any other claimed mark in Complainant’s usage guidelines. Contract disputes as to the usage of marks is beyond the scope if ICANN Policy.
Complainant does not dispute that Respondent is engaged in the bona fide offering of goods and services, but rather argues that Respondent is doing so under an infringing mark. However, for this argument to work, Complainant must have a valid claim to the mark “CRRC” separate and apart from its Logo. As discussed more fully above, U.S. Trademark Law, the law relied on by Complainant to argue it has rights, prohibits Complainant’s usage of the mark and renders any claim to such mark invalid. Further, Complainant’s use of its claimed marks and registrations have been via its distinct Labels/Logos, and not for the claimed mark “CRRC.”
Importantly, Complainant ignores Respondent’s argument that Complainant and Respondent do not market the same goods or services to anyone. Accordingly, Complainant concedes this point. Complainant merely argues that both Complainant and Respondent market to the same universe of roofing professionals. There is no confusion. No roofing professional could reasonably believe that Respondent is the “CRRC Cool Roofing Rating Council” and that Respondent offers the same or similar goods or services. Likewise, no one could confuse Complainant with Respondent because Complainant does not, and is prohibited from, selling any roofing products or services of any kind.
Here, Complainant’s conflicting use of its claimed mark “CRRC,” a mark that is merely descriptive and is used by hundreds of others, is unlikely to confuse and is not seriously protected or used by Complainant, precludes any finding against Respondent. As Complainant has failed to establish all three elements required under the ICANN Policy, Respondent respectfully requests that the Panel deny Complainant’s requested relief.”
The Panel finds that:
1. The Domain Name <crrcinc.com> is confusingly similar to the Complainant’s marks;
2. The Respondent has not established any right or legitimate interest in the Domain Name <crrcinc.com>; and
3. The Respondent has registered and is using the Domain Name <crrcinc.com > in bad faith.
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.
Complainant asserts rights in the CRRC COOL ROOF RATING COUNCIL mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,961,803 issued June 14, 2005). The Panel finds that Complainant’s trademark registration in the CRRC COOL ROOF RATING COUNCIL mark sufficiently establishes Complainant’s rights under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant contends that Respondent’s <crrcinc.com> domain name is confusingly similar to Complainant’s CRRC COOL ROOF RATING COUNCIL mark. Complainant contends that Respondent’s domain name contains the dominant feature of Complainant’s mark, CRRC, eliminates the terms “cool,” “roof,” “rating,” and “council” and adds the letters “i,” “n,” and “c.” The Panel further finds that the Respondent’s domain name retains the dominant feature of Complainant’s mark and that the additions of the letters “i,” “n,” and “c” as well as the generic top-level domain “.com” fail to sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the complainant; the respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, or endorsement of the respondent’s website); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Moreover, the Panel finds that Complainant has rights in the CRRC mark. Complainant has filed a trademark application with the USPTO for the CRRC mark (Ser. No. 77/258,308 filed August 17, 2007) in which Complainant contends that it first began using the mark in June of 1998. Complainant is a non-profit organization created to advance the use of “cool roofs” in building. Complainant rates cool roof materials and products for use by consumers, architects, engineers, and builders and licenses manufacturers to affix the CRRC mark to products passing Complainant’s standards for “cool roof” products. Complainant has submitted advertising and promotional materials used in commerce since as early as 1998. The Panel finds that Complainant has sufficiently established secondary meaning in the CRRC mark, giving rise to a finding of common law rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
In this regard the Panel further finds that Respondent’s <crrcinc.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s entire CRRC mark and simply adds the letters “i,” “n,” and “c,” a common abbreviation for the term “incorporated.” The Panel is of the view that such additions are insufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is
using the <crrcinc.com> domain name to operate
a website that promotes and sells cool roof products and materials in the
Moreover, Complainant contends that Respondent is not commonly known by the <crrcinc.com> domain name nor authorized to use Complainant’s marks or any derivation thereof. The Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that Respondent is using the <crrcinc.com> domain name to operate a website that offers cool roof products and materials for use by consumers. Since the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark, the Panel further infers from Respondent’s use that it is trying to capitalize on this confusion for Respondent’s own commercial gain. Such a finding leads to the conclusion that Respondent registered and used the <crrcinc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crrcinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: November 27, 2007
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