Voss Signs, LLC. v.
Claim Number: FA0711001114705
PARTIES
Complainant is Voss Signs, LLC. (“Complainant”), represented by Philip
I. Frankel, of Bond, Schoeneck &
King, PLLC,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <vossigns.com>, registered with Compana, LLC.
PANEL
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2007.
On December 5, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <vossigns.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 December
13,
A timely Response was received and determined to be complete on January 2, 2008.
An Additional Submission was received from Complainant on January 7, 2008 and an Objection and Reply from Respondent on January 14, 2008. Both were deemed to have been received in a timely manner according to The Forum’s Supplemental Rule #7.
On
January 8, 2008, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
· Voss Signs, LLC is the owner of, and uses in commerce, the mark “VOSS SIGNS;”
· Complainant also owns and uses in commerce a mark as a design that depicts a stylized V between the words Voss and Signs;
·
These marks have been in continuous use since
1988. The marks have been continuously
used in conjunction with the manufacture and sale of sock and custom-printed
signs for long-term outdoor use. Complainant spends between $100,000 and
$150,000 annually on advertisements in various media, including the Internet,
catalogs, television and nationally distributed magazines. Business is carried out throughout the
· These marks are common law trademarks;
· These marks are inherently distinctive with respect to signs. For the consumers in the stock and custom-printed signmarkets, these marks designate Voss Signs, LLC as the source of goods associated with the marks;
· Complainant owns and operates the website at <vosssigns.com> for commercial sales;
· The disputed domain name <vossigns.com> is confusingly similar to Complainant’s common law trademarks;
·
Respondent has no rights or legitimate interests
in respect of <vossigns.com>;
· Respondent has registered <vossigns.com> in bad faith and is being used in bad faith.
B. Respondent
· Complainant has no registered trademark and has failed to show that a common law right to the mark it is claiming existed at the time of the registration of the disputed domain name;
· Disputed domain name <vossigns.com> is composed of two parts: the commonly used acronym “VOS” and the generic dictionary word “signs.” It is not the result of a typographical error;
· Respondent has rights and a legitimate interest in respect of the domain name. Respondent has used <vossigns.com> to provide a web portal which provides users with a search function as well as advertisements provided through the Google Adsense program and that Complainant has not been targeted by use of this domain;
· Respondent did not register the domain name in bad faith and is not using it in bad faith.
C. Additional Submissions
Complainant[i]
· A mark does not need to be registered at the USPTO to be afforded protection under ICANN Rules and Respondent fails to address the evidence Complainant has provided as to common law rights;
· Disputed domain name is not a single and completely generic term and Respondent fails to explain what the purported “vos” acronym stands for or its use as part of the disputed domain name;
· Respondent’s assertion of “no knowledge of Complainant’s business” at time of registration is not the same as having “no knowledge of the VOSS SIGNS marks;
· Respondent had knowledge of the marks at registration and was done with the purpose of redirecting Internet traffic to Respondent’s website by creating confusion with Complainant’s marks;
· Respondent has a pattern of illegitimate cybersquatting and typosquatting and Respondent has admitted that it has been party to a number of decisions resulting in transfer, giving the Respondent a track record which is further proof of its bad faith;
· Complainant provides new exhibits H and I which are print-outs of Google searches, firstly showing results for “vos signs” and secondly, following the prompt “Did you mean: voss signs?”. The latter exhibit was totally illegible, appearing to be a corrupted document with totally incomprehensible text.
Respondent
· Respondent objects to the filing of Complainant’s additional submission;
· Rule 7 of The Forum’s Supplemental Rules is an improper modification of the UDRP Rules for the reason that under Rule #12 UDRP additional submissions are on request of the Panel whereas Rule #7 allows for such submissions without a request;
· In relation to acronym “vos,” Respondent asserts that Exhibit C speaks for itself.
· Respondent has never heard of Complainant prior to the registration of the disputed domain name and Complainant has provided no proof that Respondent was, or should have been, aware of Complainant at the time the Respondent registered the disputed domain name.
FINDINGS
Ø Complainant Voss Signs LLC is a private company which manufactures and sells stock and custom-printed signs for long-term outdoor use under the VOSS SIGN marks since 1988;
Ø In January 2002, Complainant registered its domain name <vosssigns.com> and operates the website for commercial sales;
Ø Complainant has common law rights in the marks;
Ø
Respondent Texas International Property
Associates is a
Ø The domain name is confusingly similar to the Complainant’s trademark;
Ø Respondent is a party to numerous UDRP proceedings having appeared as Respondent in 54 concluded Forum cases and 34 concluded WIPO cases as at date of this decision.
Ø Distinct from its name, and with no evidence to the contrary, it is found that Respondent is in the business of registering as domain names what the Respondent claims to be generic or descriptive terms in order to create websites that generate advertisement revenues based on the amount of Internet traffic that is directed to them, that is pay-per-click portals by which Respondent receives remuneration for links to third-party sites. In this case, those third party sites are competitor sites.
Ø Respondent has failed to establish the connection between the individual words “vos” and “signs” and has given no reason for their connection in a composite domain name.
Ø Respondent has neither rights nor legitimate interest in respect of the domain name.
Ø The domain name was registered in bad faith.
Ø The domain is being used in bad faith.
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.
There are two parts to the first element under Policy ¶ 4(a)(i). Firstly, the Complainant must have rights in a trademark or service mark. Secondly, the domain name registered by the Respondent must be identical or confusingly similar to that trademark or service mark. Thus, for relief to be granted the Complainant must establish that it has rights in a trademark or service mark.
Complainant does not assert any rights by virtue of registration, rather Complainant asserts that they have common law rights in the word mark “VOSS SIGNS” and in a design mark which features a stylized “V” between the words “voss” and “signs.” Complainant claims that they have operated their business since 1988 and the website <vosssigns.com> since January 2002 when the domain name was registered. The mark was first used in advertising for the manufacture of signs by certain individuals who traded under their surname VOSS. The business, including the marks, was bought from those individuals by Complainant Voss Signs LLC in 1998. In support of this, Complainant has provided examples of the design mark (Exhibit B) and an affidavit prepared by President of Voss Signs LLC (Exhibit C). Exhibit C itself is supported by various exhibits which include the Asset Purchase Agreement, the cover of Voss Signs 2007 Catalogue, domain registration information for <vosssigns.com> from Domain Tools which includes a thumbnail of Complainant’s website (also Exhibit E), examples of a sign manufactured/printed by Complainant and copy of the company’s packing slip.
Registration is not the only permissible source of trademark or service mark rights under the UDRP. According to McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000), the ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark 'in which the complainant has rights' means that ownership of a registered mark is not required - unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy; see also MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").
Panels interpreting the UDRP have consistently held that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks. See Cedar Trade Assocs., Inc., v. Ricks, FA 93633 (Nat. Arb. Forum Feb. 25, 2000); see also Bennett Coleman & Co. Ltd. v. Lafwani, D2000-0014 (WIPO Mar. 11, 2000) ("it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks.").
Many of the cases in which common law trademark rights are asserted have involved personal names that have, through use and publicity, acquired the distinctiveness necessary to become trademarks or service marks: see Bibbero Systems, Inc. v. Tseu & Assoc., FA 94416 (finding common law rights in the mark BIBBERO as the complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the complainant is commonly known).
Just as in the above cited cases, Complainant may enjoy common law trademark rights in VOSS SIGNS if that name has acquired a "secondary meaning." Secondary meaning means that although a name (whether a personal name or a product or service name) or a design is not a registered mark, the public has come to associate that name or design with a particular person or company or goods or services. Secondary meaning is defined as "the consuming public's understanding that the mark, when used in context, refers not to what the descriptive word ordinarily describes, but to the particular business that the mark is meant to identify." Secondary meaning therefore refers to the manner in which a consumer identifies a specific business or a business' reputation by a particular trademark. By secondary meaning, one is referring to the capacity of a mark in the relevant consumer marketplace to identify and distinguish a particular business or source.
In the case at
hand, Complainant, in order to prove their common law rights, has provided the
evidence detailed above. As stated in Gerber Prods.
UDRP cases are not governed by the same rules of evidence that govern court proceedings. Instead, it is the Panel’s obligation to draw reasonable inferences from the materials presented, and accord them such weight as the Panel deems appropriate. While affidavit evidence is preferred, and is often considerably more credible and persuasive than unsworn evidence, the presence of an affidavit to authenticate a document is not a threshold requirement for the admissibility of the document in a proceeding under the Policy.
In this case, the Panel has no reason to question the authenticity of Exhibit B and the affidavit is made under oath and penalty of perjury. Moreover, Respondent does not articulate any outright claim that the Exhibits were forged or are otherwise unreliable.
All of the above is sufficient to demonstrate the mark's secondary meaning and thereby establish Complainant's enforceable rights in the mark VOSS SIGNS. Complainant has provided evidence so as to distinguish the services of Complainant from those of others. It was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 17, 2002), “although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption.”
For purposes of the Policy, Complainant has rights in the trademark VOSS SIGNS pursuant to Policy ¶ 4(a)(i).
The disputed domain
name is confusingly similar to Complainant’s mark. The disputed domain name <vossigns.com> differs from the mark by only one letter, and
is phonetically identical to the mark. See YAHOO! Inc. v. Murray, D2000-1013
(WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is
confusingly similar to the Complainant’
Based on the foregoing, the Panel finds Respondent’s <vossigns.com> domain name to be confusingly similar to Complainant’s VOSS SIGNS trademark under Policy ¶ 4(a)(i).
Complainant has the responsibility of demonstrating a prima facie case that Respondent has no rights or legitimate interests in the <vossigns.com> domain name under Policy ¶ 4(a)(ii). Once Complainant meets that requirement, the burden of proof shifts to Respondent to show that it has rights or legitimate interests with respect to the disputed domain name.
Policy ¶ 4(c) sets forth the manner in which a Respondent may establish rights to and legitimate interests in a domain name. It provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Policy ¶ 4(a)(ii):
(i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable 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; or
(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making 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 or service mark at issue.
Complainant rebuts each of these elements and has satisfied its burden by providing prima facie evidence against the particular claims Respondent could make under Policy ¶ 4(c)(i)-(iii); therefore the burden has shifted to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted that the respondent has no rights or legitimate interests in respect of 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.").
Respondent does not attempt to establish that it is making a non-commercial use of the domain name; in fact, Respondent admits that it is making a commercial use of the domain name.
Furthermore, Respondent does not attempt to argue that Respondent has been commonly known by the domain name.
The only circumstance asserted by Respondent on which Respondent may have rights or legitimate interest to the domain name is that set out in Paragraph 4(c)(i), whereby, before any notice to Respondent of the dispute, there was use by the Respondent of the domain name in connection with a bona fide offering of goods or services.
Respondent does not
explain what its business as Texas International Property Associates is. Instead Respondent argues that it does use the
domain name in connection with a bona
fide offering of services. This bona fide offering of services consists
of a web portal which provides users with a search function as well as
advertisements provided through the Google Adsense program. Purportedly, the links are provided pursuant
to Google’s terms and are triggered by search requests entered by computer
users over which Respondent has no control. Respondent states that the fact
that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest. Respondent
states that the disputed domain name was registered and used because it
believed that no person or entity had exclusive rights to the use of the
acronym VOS in the
Respondent to
support its arguments relies on The Landmark
Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) citing
that the respondent “registered ‘large numbers of dictionary words …. and
generate[d] revenue by providing pay-per-click advertising links related to the
generic nature of each site’s domain name.’”
The panel held that, “as long as the domain names have been registered
because of their attraction as dictionary words, and
not because of their value as trademarks, this business model is permitted
under the Policy.” The Landmark Group case cites Gen.
Mach. Prods.
Respondent contends that a legitimate interest can be proved by the fact that advertising revenues may be generated by Respondent’s activity and that Respondent, by combining a generic phrase with search keywords, is providing advertisers with “targeted customer traffic.” Unfortunately in the present case Respondent has not provided persuasive evidence.
In §9 of the Response, Respondent seeks to demonstrate its rights or legitimate interest to the disputed domain name. Reference is made to Exhibit E. However Exhibit E is a blank page except for the text “popup management,” “http://vossigns.com/top.php?d=vossigns.com,” “1 of 1! And “1/2/2008 2:13 PM.” This has not been rectified, no affidavit has been provided and no additional Exhibits were submitted in the Respondent’s Objection and Reply and therefore the Panel is forced to find that Respondent has provided no evidence of his use of the domain name or a name corresponding to the name in connection with a bona fide offering of goods or services. Complainant, on the other hand, has provided a print-out of the website that appears at the disputed domain name as part of the Affidavit as Exhibit 7 (also Exhibit F) which shows links to competitor third-party sites as well as a who-is record for the disputed domain name from Domain Tools as Exhibit D. Respondent has not challenged these exhibits and accordingly the interpretation that Complainant makes of the evidence presented is compelling.
Furthermore, despite relying on the aforestated arguments as regards registration of generic or descriptive words, Respondent fails to apply those arguments to the present case where the domain name <vossigns.com> is formed purportedly of an acronym (“VOS”) and a generic word (“SIGNS”). Respondent provides, as Exhibit C, a list of 15 meanings for the acronym VOS: however Respondent fails to inform Panel which meaning applies in this case. Respondent overlooks the need to establish a connection between the two and how the meaning of the acronym “VOS” in this particular case is connected to the generic word “signs.” No explanation therefore is given as to how Respondent took these two words and put them together as a domain name. Respondent has been unable to explain its alleged business model in this particular case. In the Gen. Mach. Prods. Co. v. Prime Domains case cited above, the Panel found that Respondent had demonstrated that the term "craftwork" was in widespread use in a descriptive sense. Respondent Texas International Property Associates has not demonstrated that the term “vos signs” (or the specific meaning of “vos” together with the word “signs) is in widespread use in a descriptive sense.
For these reasons, Respondent has not discharged its burden of proof and therefore the Panel finds that Respondent does not have rights or legitimate interests in respect of the domain name.
Under Paragraph 4(a)(iii), it is necessary for the Complainant to show that the domain name both was registered and is being used in bad faith.
Policy ¶ 4(b) provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith for purposes of Policy ¶ 4(a)(iii). These include:
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
This list is not an exhaustive representation of bad faith conduct and numerous other examples of bad faith behavior have been articulated by previous panel decisions. The Panel may look at the "totality of circumstances" in determining if Respondent's conduct reaches the threshold of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").
In light of the discussion of rights and legitimate interest pursuant to Policy ¶ 4(a)(ii) above, it has been decided that Respondent has failed to establish a meaning for the alleged acronym “vos” and a connection between “vos” and “signs.” Furthermore, on consideration that the similarity of the domain names, which bar a letter “s,” are identical and the website resolving from the disputed domain name contains sponsored links to sign manufacturing and printing, the totality of the circumstances allows the Panel to draw the conclusion that Respondent had constructive knowledge of Complainant’s marks on registering the domain name. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Evidence presented reveals that the domain name at issue resolves to a page displaying a series of links of competing third-parties engaged in the same business as Complainant. This evidence suggests the Respondent is using the domain name at issue in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Furthermore, it has been established that Respondent is engaged in a pattern of conduct whereby the Respondent registers domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, which is evidence of bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(ii).
The Panel finds therefore that Respondent registered and is using the domain name at issue in bad faith pursuant to Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vossigns.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton,
Panelist
Dated: January 22, 2008
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National Arbitration Forum
[i] Although Complainant’s “Additional Submission” was timely under The Forum’s Supplemental Rule 7, pursuant to my authority under Rule 12, Panel declines to consider the arguments set forth therein, all of which could have been and, therefore, should have been, advanced in Complainant’s Amended Complaint. Supplemental or additional submissions, generally, are accepted only in the rare cases where new evidence is discovered that was not reasonably available to a party at the time of its initial submission. See generally INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan 9, 2006); Intermap Techs. Corp. v. Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum Dec. 12, 2003); Alain-Martin Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).