Mid-West Presort Mailing
Services, Inc. d/b/a
Claim Number: FA0710001093927
Complainant is Mid-West Presort Mailing Services, Inc. d/b/a Midwest
Direct (“Complainant”), represented
by James P. Conroy, Esquire of Walter & Haverfield, LLP, 1301 East
Ninth Street, Suite 3500, Cleveland, OH 44114. Respondent is Miller's Presort, Inc. c/o Stephen
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <mwdirect.com>, registered with Domaindiscover.
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2007.
On October 12, 2007, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <mwdirect.com> Domain Name is registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 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 12, 2007.
Complainant submitted a timely Additional Submission that was received and determined to be complete on November 19, 2007.
On November 22, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M, KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant contends that:
1) except for the hyphen, the Domain Name is identical to Complainant’s Service Mark;
2) Respondent is a key competitor of Complainant,
3) Respondent has no reason to use “mwdirect” other than to cause confusion among the public;
4) Respondent is located within thirty (30) miles of Complainant’s business;
5) Complainant’s Service Mark and Domain Name were first used as early as 1999;
6) Respondent’s use of the Domain Name does not have a connection with a bona fide offering of goods or services;
7) Respondent made unfair use of the Domain Name, with intent for commercial gain;
8) Respondent’s sole purpose in using the Domain Name is to mislead customers and divert business from Complainant.
9) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s mark 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.
Respondent contends that:
1) the term “mw-direct” with a hyphen in between “mw” and “direct” is associated with the Complainant;
2) the terminology “mwdirect” is separate and clearly not identical to “mw-direct;”
3) the letter “m” refers to “mail” and “Millers,” “w” refers to “web,” and “direct” an extremely common word in the direct mail industry, specifically for business purposes;
4) the Domain Name was not registered with the purpose of competing with the primary business of Complainant;
5) the Domain Name is attached to goods and services unique to current and future business offerings from Respondent as it relates to web based print-on-demand applications and software;
6) the Domain Name was valid and necessary to future business purposes when registered, was intended for current print-on-demand services, will be used for current business services and not registered to confuse customers or in bad faith;
7) the site was parked until legal advice could be obtained;
8) it should not be considered in direct competition despite being in similar lines of business;
9) the parties do not advertise in the same geographical markets;
10) in abiding by a Cease and Desist order received, Respondent was unable to proceed with development of the Domain Name for its intended purpose of offering specific web-based applications necessary to print-on-demand services;
11) as of Oct. 2, 2007, the Domain Name remained undeveloped for over two months due to legal restrictions;
12) since January 2007 a specific business model has been developed and implemented where the disputed Domain Name is included along with other similar Domain Names for print-on-demand internet solutions introduced for current clientele and contracts in negotiation.
C. Additional Submissions
Complainant further contends that:
1) The “Cease and Desist order” to which Respondent refers is actually a letter from Complainant’s Counsel dated July 16, 2007, in which counsel sets forth his client’s position concerning Respondent’s use of the Domain Name and thereafter makes the following request: “We are writing to ask you to cease and desist your use of the mwdirect Domain Name;”
2) Respondent’s Counsel’s response dated July 23, 2007 was “However, as the cost of litigation exceeds the present value to my client of this Domain Name, Miller’s Presort is in the process of discontinuing its use of the same and rendering this a dormant site. My client anticipate that this will be accomplished on or before July 30, 2007.”
3) Respondent’s decision was entirely voluntary and done in response to Complainants’ cease and desist request of July 16.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Service Mark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name has been registered and is being used 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.
CHRONOLOGY OF RELEVANT EVENTS
1999 First Use by Complainant of MW-DIRECT.COM “Mark”
1/11/99 Domain Name: <mw-direct.com> Registered by Complainant.
1/24/04 Domain Name: <mwdirect.com> Registered by Respondent
Complainant contends it has used the Domain Name <mw-direct.com> as a Service Mark since 1999. As evidence of such use, Complainant submits stationary, two business cards and an invoice (all of which are undated and unaccompanied by any authenticating affidavit or declaration), each of which depicts <mw-direct.com> listed along with Complainant’s telephone number and street address and the prominent Mark “Midwest/Direct” in a stylized form. Whois.com records reflect registration of that hyphenated Domain Name on 01-14-99, so this Panel can conclude that these paper uses post-date the Registration and are uses several years prior to the Registration on 01/24/04 of the non-hyphenated version Domain Name at issue. Further, Respondent has not denied, challenged or submitted evidence to the contrary.
Complainant’s Mark is not registered with any governmental authority. However, a registered trademark is not required for Complainant to establish rights in a mark. See Great Planes Mertomall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also See America Networks, Inc. v. Masood, D2000-1031 (WIPO Apr. 13, 2000) (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). Respondent also admits that the claimed Service Mark is associated with Complainant.
The Panel finds that Complaint has established commercial use sufficient to confer common law rights in the MW-DIRECT.COM mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the mark); see also Nat’l Ass’l of Pof’ Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name establishing common law rights in the MINOR LEAGUE BASEBALL mark).
While Complainant is clearly the Senior “User,” there is a serious question as to whether these “uses” constitute use as a Trademark or Service Mark, that is, serving as a source identifier, thus establishing Trademark Rights in the Domain Name. While the guidelines and rulings of the USPTO and/or T.T.A.B. are not binding herein, they may be instructive. For example, the USPTO Examination Guide No. 2-99 (09/29/99) entitled, “Marks Composed, In Whole or In Part, of Domain Names” provides in part:
II. Use as a Mark
A. Use Application
A mark composed of a Domain Name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens must be presented in a manner what will be perceived by potential purchasers as indicating source an not as merely an informational indication of the Domain Name address used to access web site See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998)
In Eilberg, the Trademark Trial and Appeal Board (Board) held that a term that only serves to identify the applicant’s Domain Name or the location on the Internet where the applicant’s web site appears, and does not separately identify applicant’s services, does not function as a service mark. The applicant’s proposed mark was WWW.EILBERG.COM, and the specimens showed that the mark was used on letterhead and business cards in the following manner:
WILLIAM H. EILBERG
attorney at law
AND COPYRIGHTS WWW.EILBERG.COM
The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for registration did not function as a mark stating that:
[T]he asserted mark, as displayed on applicant’s letterhead, doe not function as a service mark identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant’s Internet Domain Name, by use of which one can access applicant’s Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates that location on the Internet where applicant’s Web site appears. It does not separately identify applicant’s legal services as such. Cf. In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986).
This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or [service marks]. For example, if applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cars ad the name under which applicant was rendering legal services, then that mark may well be registrable.
If this Panel were to accept this authority as persuasive, it would be constrained to find that Complainant has not established by a preponderance of the credible, admissible evidence that Complainant has rights in a mark with which the Domain Name is identical or confusingly similar and Complainant’s Complaint would have to be denied.
However, this Panel respectfully believes that the USPTO’s view in this regard is much too limited and, indeed, entirely archaic. The use of an Internet Domain Name on letterhead, invoices, and business cards certainly serves as an address locator but it also can serve as a source indicator. To say that it does not is to mire trademark law in the past and to ignore the realities of the modern electronic world of communication.
Thus, this Panel finds that these uses are trademark/service mark uses sufficient to establish common law trademark/service mark rights in MW-DIRECT.COM.
The parties are clearly in similar businesses in the same general geographic area. While the Domain Name in question is not identical to Complainant’s mark, one cannot argue with a straight face that it is not confusingly similar thereto. <mwdirect.com> is confusingly similar to MW-DIRECT.COM. The absence of the hyphen is not significant.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <mwdirect.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Miller’s Presort, Inc.” See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant alleges that Respondent is making an unfair use of the disputed domain name with an intent to commercially gain. As evidence, Complainant has submitted a screenshot of a Google search of the <mwdirect.com> domain name which displays a reference to Respondent’s company as the first result. Complainant claims that Respondent is a competitor of Complainant, and is therefore attempting to mislead potential customers for Respondent’s own commercial gain.
Respondent’s claims of legitimate use are not supported by any document or affidavit and are not credible.
The Panel finds that Respondent’s use of the <mwdirect.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Respondent alleges that it has made demonstrable preparations to use the <mwdirect.com> domain name. However, the Panel finds that Respondent has not submitted any evidence indicating such preparations, and therefore rejects Respondent’s argument. The Panel finds that Respondent lacks rights and legitimate interests in the <mwdirect.com> domain name pursuant to Policy ¶ 4(a)(ii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan).
Complainant alleges that Respondent
is using the <mwdirect.com> domain name in a manner that advances Respondent’s
competing business. Complainant claims
that Respondent intends to divert business from Complainant, especially since
Complainant and Respondent conduct business 30 miles away in
Complainant contends that Respondent is using the <mwdirect.com> domain name in order to benefit from a likelihood of confusion for Respondent’s commercial gain. Complainant claims that Respondent’s website that resolves from the disputed domain name may lead ccustomers to be confused as to the source, sponsorship, affiliation, or endorsement of the products or services advertised on the site. Therefore, the Panel finds that Respondent registered and is using the <mwdirect.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also 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).
Respondent’s explanations for its registration and use are not credible and unsupported by any evidence and thus the Panel finds both registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mwdirect.com> Domain Name be TRANSFERRED from Respondent to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: December 4, 2007