Azar International Inc. v.
Claim Number: FA0712001122600
Complainant is Azar International Inc. (“Complainant”), represented by Clark
E. Alpert, of Alpert Butler Goldberg Norton & Weiss,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <azardisplay.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2007.
On December 19, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <azardisplay.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 January 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2008 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 January 29, 2008.
On February 4, 2008, Complainant submitted a timely Additional Submission that was determined to be complete.
On February 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that it has been using the trademark “AZAR DISPLAYS” in commerce since 1975 in connection with the sale of displays, point of purchase displays, display racks, display cases for merchandise and holders for signs all made of plastic. Complainant has also operated its website under the domain name <azardisplays.com> since 1998. Complainant filed an application with the U.S. Patent and Trademark Office to register the “AZAR DISPLAYS” trademark on June 20, 2007. That trademark application is pending.
Complainant alleges that the disputed domain name was registered in 2005 and that it is confusingly similar to Claimant’s domain name, <azardisplays.com> in that the disputed domain name is identical to Complainant’s domain name but for the deletion of the letter “s”.
According to Complainant, Respondent is not using the disputed domain name in connection with a legitimate business; to the contrary, the infringing mark is being used to link to a website displaying links to Complainant’s competitors. Respondent is an infamous cyber-squatter and ‘typo-squatter”, having already been found to have improperly used confusingly similar domain names in approximately sixty cases.
Complainant alleges that a common
law trademark is protectable under the Policy upon a showing that the owner has
extensively used the mark in connection with its business. Complainant has used the mark AZAR DISPLAYS
in commerce since 1975 and has utilized the domain name
<azardisplays.com> since 1998 in the promotion of its business. Complainant sells its products nationwide and
internationally, through catalog sales, its website, and through third-party
vendors. As of 2004, the year before
Respondent registered its product, Complainant had 10,000 customers across the
Further, says the Complainant, Respondent has no rights or legitimate interests in the disputed domain name. In this regard, Respondent is not affiliated nor a licensee of Complainant and is not authorized by Complainant to use the AZAR DISPLAYS mark as a domain name or otherwise. Respondent, moreover, is not commonly known by that domain name. Respondent’s website does not market products directly (nor does it make noncommercial “fair use” of the mark) but instead provides links to third parties, many of whom directly compete with Complainant in the sale of display products. Respondent is thus in the ‘business’ of improperly diverting AZAR business, by customers seeking AZAR, to competitors of AZAR. At the top of Respondent’s webpage appears AZARDISPLAY.COM in a large font, giving the appearance that the website is authorized by Complainant. As noted below, Respondent’s use of a confusingly similar domain name, coupled with the links to Complainant’s competitors, reflects an intent to misleadingly divert consumers or tarnish the trademark of Complainant.
According to Complainant, Respondent registered the disputed domain name with actual knowledge of Complainant’s AZAR DISPLAYS mark and the <azardisplays.com> domain name. Respondent’s website, moreover, is deliberately targeted at Complainant’s market and goodwill by hosting advertisements by way of links, at least some of which must have been expected by Respondent to lead to Complainant’s competitors. Such use of a domain name is neither a bona fide offering of goods or services under ICANN Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ICANN Policy ¶ 4(c)(iii).
Complainant alleged that the disputed domain name has been registered and is being used in bad faith. Respondent has been named in forty-one domain dispute decisions located by Complainant in the Forums on-line archives, as well as another twenty-four decisions in the WIPO archives, resulting in the cancellation or transfer of nearly one hundred domain names. These cases include circumstances wherein Respondent misappropriated whole trademarks, though in most cases Respondent ‘typosquatted’ the domain names to be misspellings of another’s mark. Complainant cites numerous UDRP cases involving Respondent.
According to Complainant, this pattern of conduct alone, wherein Respondent is exercising an extensive use of the marks of others for Respondent’s financial gain, is sufficient to show bad faith registration and use in this case. The use of a variant of Complainant’s domain name to operate websites that link to Claimant’s competitors is a disruption to Complainant’s business and thus also constitutes registration and use in bad faith under ICANN Policy ¶ 4(b)(iii).
Respondent alleges that Complainant has not established or substantiated any trademark rights in the trade name “AZAR DISPLAYS” thus the domain name is not identical to or confusingly similar to any mark held by Complainant. Respondent has rights and legitimate interests in domains comprised of generic and/or descriptive terms, not associated with Complainant’s business, and Respondent herein, before notice of this dispute, used the disputed domain name in connection with a bona fide offering of services pursuant to ICANN Policy. Respondent’s registration and use of the subject domain name in connection with Internet searching, locator, and/or targeted advertising services, does not comprise “bad faith,” under ICANN Policy, and Complainant’s attempts to impute such bad faith must fail.
According to Respondent, it is critical to note two things – first, that the disputed domain name consists of two parts – the surname “Azar” and the generic dictionary word “display.” The second item of note, and closely related to the first, is that Complainant possesses only a pending application at the United States Patent & Trademark Office (“USPTO”) which was delayed for some time as the examining attorney at first refused registration as the proposed mark was “primarily merely a surname.”
Respondent states that Complainant does not have any registered trademarks containing its trade name. This is because a trade name is not entitled to the protection afforded a trademark or service mark. Absent a federally registered mark, a complainant must provide evidence that it has common law trademark rights in order to prevail under this element of the Policy—as prior panels have recognized “common law” trademark rights as appropriate for protection under the Policy only if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to complainant’s goods or services.
According to Respondent, Complainant has not provided sufficient evident to show that it has acquired a common law trademark for “AZAR DISPLAYS”. Complainant makes the claim that "Azar" is at the arbitrary and fanciful end of the distinctiveness spectrum and, as a result, sufficiently distinctive as to be protectable. By contrast, the USPTO at first refused registration and as a result of that refusal, Complainant amended its application to a claim of acquired distinctiveness (meaning that the proposed mark’s distinction, if any, came through five years continuous use) which stands in stark contrast to the claim of inherent distinctiveness as made in the Complaint. Having failed to disclose to the Panel the fact that the USPTO failed to find such distinctiveness, the question must be raised as to whether this omission was a mere oversight or, rather, the result of a deliberate fraud committed upon the Forum.
Respondent states that it has used
the disputed domain to provide a web portal which provides users with a search
function as well as ads provided through the Google Adsense program. Complainant was, like all others in the
Respondent alleges that it may fairly use descriptive or generic terms, or acronyms of such, as well as surnames combined with the same as a commercial domain name, regardless of whether they are federally registered. Indeed, common acronyms, surnames, and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis.” The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest. Complainant cites numerous UDRP cases to support these statements.
With respect to the allegation of bad faith registration and use, Respondent cites a UDRP decision finding that that “pay-per-click websites are not in and of themselves unlawful or illegitimate” and that Complainant “has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark.” According to Respondent, the same holds true here: Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s. Nor has there been such a showing here other than mere unsubstantiated allegations of counsel that bad faith registration must exist because bad faith registration must exist.
Respondent cites a UDRP decision stating that unless a trademark is targeted by a domain, pay-per-click revenue does “not constitute evidence of bad faith registration or use.” An inference of targeting may be drawn “from the inherent distinctiveness of the mark in question or from the circumstance that the mark is famous or well-known.” But here there has been no showing of any inherent distinctiveness to Complainant’s trade name, particularly in light of the USPTO’s refusal to find such inherent distinctiveness and, in fact, its requirement that Complainant demonstrate that only through use has the proposed mark gained any such distinctiveness. Having failed to proffer the evidence necessary to establish this to the Panel, there can be no such claim of any targeting since Complainant has no inherently distinctive mark.
Complainant argues that Respondent has been involved in a number of UDRP decisions this year. While it is true that there have been a number of decisions resulting in transfers, Respondent states that a substantial number of those were where Respondent consented to the transfer and did not argue the point. All but two of the Panels did not do any traditional analysis thus there were no findings of any kind, much less bad faith. In addition, Respondent has prevailed in three decisions and prevailed on one domain in a four-domain decision and on one domain in a two-domain decision. Nor did Complainant note that Respondent has prevailed in a jury trial after a previous WIPO Panel ordered transfer (The Southern Company v. Texas International Property Associates, D2007-0773 (WIPO Aug. 24, 2007)) and has reached a settlement on a number of suits brought challenging WIPO decisions such as Fifth Third Bancorp v. Texas International Property Associates, D2007-0537 (WIPO June 29, 2007).
Respondent states that it is the registrant of thousands of domain names, which consist of electronically registered generic words. Registering such terms to which no other party can claim exclusive use is a legitimate business and done in good faith. Merely comparing the number of complaints without considering the broader context is misleading. Respondent did not register the disputed domain name to sell it to Complainant or any other party nor has there been any such allegation by Complainant.
C. Additional Submissions
In its Additional Submission, Complainant states that Respondent, a notorious cybersquatter and “typosquatter,” which has already been found to have improperly used minor variants of established trade or service marks for its financial gain, has challenged the validity of Complainant’s mark, one which has been built up for decades, through significant expenditure of advertising and marketing information, and which is now the subject of a trademark application which is presently approved for publication. Respondent also would have this Forum believe that its registration of the domain <azardisplay.com>, just one letter off of Complainant’s <azardisplays.com> domain and identical to the “AZAR DISPLAYS” mark but for the “.com,” was a mere happenstance arising from Respondents’ registration of simple generic words. Both assertions, respectfully, are without merit.
Complainant reiterates that it has used its mark “AZAR DISPLAYS” in commerce since 1975 and submits evidence to support that statement.
Further, it states that it has overcome an initial objection by the USPTO that the term “Azar” was a surname, and the application for a federal trademark application has since been approved for publication.
Contrary to Respondent’s assertions, Complainant’s discussion of the arbitrary and fanciful nature of the mark was made in good faith. Complainant’s counsel in this proceeding is not related to Complainant’s trademark counsel. The counsel in the present proceedings, having determined the status of the trademark application, was unaware of the exchange of correspondence between the examining attorney and Complainant’s trademark counsel. Respectfully, the USPTO’s treatment of “Azar” as a surname does not diminish the protectability of the “AZAR DISPLAYS” mark; to the contrary, the USPTO itself was satisfied with the supplemental evidence of continuous use to allow the application to be allowed for publication, as noted above.
According to Complainant, common-law rights to a mark can include evidence, inter alia, advertising expenditures, number of customers and trademark applications. Complainant has indeed made a sufficient showing of enforceable rights to “AZAR DISPLAYS” to challenge Respondent’s usurpation of the mark. It cites UDRP cases to that effect.
Complainant alleges that the balance of Respondent’s argument, that it is not attempting a free ride on Complainant’s mark, is especially disingenuous. Respondent’s website does not use just the generic term “display”, but instead usurps Complainant’s mark by using “AZARDISPLAY.COM.” That domain name is displayed on Respondent’s web page in a large font, with the reference “for resources and information on product display and trade show display.” The sole function of Respondent’s website is to ‘typosquat’ Complainant’s mark to promote Complainant’s competitors in the retail display industry.
According to Complainant, the UDRP decisions cited by Respondent do not support its contention that its registration of the disputed domain name was anything other than a targeting of Complainant’s mark. Unlike the cases cited by Respondent, the disputed domain name does not consist of solely generic or dictionary terms, but rather incorporates “Azar,” which serves on other purpose than to attract customers familiar with Complainant’s mark. Respondent cites decisions reflecting the registration of generic terms, but those cases must be distinguished from the present case, where incorporation of the name “Azar” removes any basis for contending that the domain name was merely generic. Complainant cites UDRP cases to support this statement.
Complainant goes on to cite UDRP decisions according to which Respondent’s registration of the disputed domain name does not comport with the acceptable business policy of “large numbers of dictionary words,” which is valid only where “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.” Nor is the disputed domain name the kind of “single, short, common” generic term that could favor Respondent’s allegations.
Complainant alleges that Respondent cannot in good faith contend that it registered the disputed domain name without any knowledge of the existence of Complainant’s “AZAR DISPLAYS” mark and its <azardisplays.com> website. By targeting Complainant’s mark, Registrant is engaging in the very cybersquatting that the ICANN domain name dispute system is designed to remedy.
Further, says the Complainant, Respondent cannot prevail on its argument that it is making a legitimate use of the disputed domain name. Respondent describes its website as being merely a “web portal which provides users with a search function as well as ads provided through the Google Adsense program.” But this Respondent’s arguments to that effect have previously been rejected by UDRP panels. Complainant goes on to cite numerous cases in which panels have ruled against Respondent, some finding that Respondent is exercising an extensive use of the marks of others for financial gain and that this pattern of conduct alone shows bad faith registration and use.
Complainant concludes by alleging that Respondent is an infamous typosquatter, who would have this Forum believe that it serendipitously conceived of the disputed domain name, and that its use of that domain name to link to advertisements of Complainant’s competitors is not in violation of ICANN’s domain name policies. Respondent’s contentions have been rejected by numerous UDRP panels, and similarly must be rejected here.
The Complainant has common law trademark rights in the string AZAR DISPLAYS and has operated a web site at <azardisplays.com> since 1998.
The name “Azar” is relatively rare.
The Respondent registered the contested domain name, which is identical to the Complainant’s mark except for deletion of the last “s,” in 2005.
The Respondent is using the contested domain name to provide a web portal which provides users with a search function as well as ads provided through the Google Adsense program. This portal includes links to competitors of the Complainant.
The Respondent is in the business of registering thousands of domain names which consist of generic words and of using those domain names to generate pay-per-click advertising revenue.
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.
Although Complainant does not own a trademark registration with a federal trademark authority, it is well established that a trademark registration is not necessary to show rights in a mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, 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.”).
rights in the AZAR DISPLAYS mark through continuous use in commerce since 1975,
and provides sufficient evidence to support those assertions. Indeed, Complainant provides evidence to show
that it has been in the business of designing and manufacturing in-stock and
point of purchase displays and retail store fixtures since as early as
1975. It registered the
<azardisplays.com> domain name in 1998 and spent over $360,000 over the
next six years developing its website.
From 2000 to 2007, Complainant has submitted evidence that it had
$80,000 worth of expenditures on various trade shows. In 2004, the year prior to Respondent’s
registration of the disputed domain name, Complainant contends it served more that 10,000 customers
much of the fact that AZAR is a name.
However, it is not a name that is in common use in the
On the basis of the evidence submitted, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i). See 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”).
The disputed domain name is clearly confusingly similar to Complainant’s common law mark. Therefore, the Panel holds that Complainant has satisfied its burden of proving this element of the Policy.
Respondent is using the disputed domain name to operate a website that contains links to various commercial websites that compete with Complainant. As Complainant states (and Respondent does not contest), Respondent is receiving click-through fees for each Internet user directed to a commercial website unrelated to Complainant. Given the confusing similarity in the names, and the fact that, as noted above, the disputed domain name is not composed only of common, generic terms, such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that were a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel holds that Complainant has established its burden of proving this element of the Policy, particularly when considering the discussion below with respect to bad faith registration and use.
provides evidence to the effect that Respondent has been a party to forty-one
proceedings under the UDRP, and all but four of them ended in a cancelled or
transferred registration. Complainant
contends that Respondent has shown a history of preventing trademark owners
from reflecting their marks in domain names.
See ZRT Lab., LLC v.
As Complainant says, Respondent is using the disputed domain name to operate a website that provides links to various websites offering services that compete with Complainant’s business. Respondent is profiting from such use through the collection of referral fees for each redirected Internet user. Such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use 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 EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, as Complainant correctly notes, the design of Respondent’s web site is such that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <azardisplay.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 18, 2008
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