Systems Paving Inc. v.
Claim Number: FA0804001174400
Complainant is Systems Paving, Inc. (“Complainant”), represented by Gregory
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <systemspavers.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2008.
On April 2, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <systemspavers.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 April 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 30, 2008.
On May 5, 2008, Complainant submitted an Additional Submission that was determined to be timely.
On May 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
The Response is fulsome and replete with references to previous decisions under the Policy. Nonetheless, Respondent’s denial of confusing similarity of domain name with trademark, its claim to legitimate interests in the domain name, and its assertion of good faith use of the domain name, all share the single premise – that the domain name is a generic expression free from monopoly by Complainant. The only other noteworthy claim is that the Complaint fails because Respondent had no knowledge of Complainant or its trademark at the time of registration of the domain name and so its registration could not have been made in bad faith.
The detail of the Response is found in the Discussion which follows.
C. Additional Submissions
Complainant’s Additional Submissions are considered where necessary in the Discussion which follows.
1. Respondent is a “domainer.”
2. Respondent registered the disputed domain name on February 4, 2005.
3. The website corresponding with the disputed domain name carries links to numerous commercial websites having no connection with Complainant.
WHOIS information shows that Respondent is established in the
5. Complainant has not in any way authorized Respondent to use its trademark or any variation thereon.
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.
As a threshold matter, Complainant must have rights in a trademark. Complainant is the proprietor of United States
Trademark Registration No. 2,032,512 for SYSTEMS PAVING. Accordingly, Complainant has established its
rights. Complainant also asserts common law trademark
rights through public use since 1994. It
claims to be the market leader in the
Respondent pointed to the endorsement on Registration No. 2,032,512 which states that “no claim is made to the exclusive right to use ‘PAVING’ apart from the mark as shown.” Disclaimers of that kind are a commonplace feature of the trademark registration systems of many countries (see for example, U.S. Federal, Lanham (Trademark) Act (15 U.S.C.), Art. 1056 ). A statement of that kind has the effect of giving no rights in the word disclaimed. It does not mean that the trademark as a whole lacks distinctiveness. In any event, Policy ¶ 4(a)(i) is concerned with whether the disputed domain name is identical or confusingly similar to Complainant’s trademark; the issue of the potentially generic nature of the domain name might be significant under Policy ¶¶ 4(a)(ii) or (iii), but has been held an irrelevant consideration under the first limb of the Policy.
The gTLD, “.com,” can be ignored for the purpose of comparison of the disputed domain name with the trademark. The question is whether “systems pavers” is confusingly similar to “systems paving.” The Panel gives no weight to Respondent’s argument that there would be no confusion because “systems pavers” is purely descriptive. Removed from the context of Complainant’s trademark, it is a virtually senseless expression. The Panel regards it as a colorable imitation of the trademark.
The Panel finds the domain name confusingly similar to a trademark in which Complainant has rights.
The Panel finds that the circumstances described in the Complaint are sufficient to constitute a prima facie showing by Complainant of Respondent’s absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to Respondent to show that it does have a right or legitimate interest in the domain name.
Policy ¶ 4(c) states 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 rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your 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
(iii) you are making a legitimate noncommercial 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.
Respondent does not satisfy any of those criteria. It is not known by the domain name and has no permission of any kind to use the trademark. As discussed, the domain name is not shown to be generic and so there is no sustainable fair use argument. The website corresponding to the disputed domain name is clearly of a commercial character. Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors’ websites is not 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).
Respondent relied on the case of Admiral Insurance Services Ltd. v. Dicker, D2005-0241 (WIPO June 4, 2005) where it was said that “[T]he Panel considers that the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy.” It and the other cases like it pointed to by Respondent have no application to the facts of this case. The disputed domain name is not generic and it is confusingly similar to a trademark in which Complainant has rights. This Panel is not aware of any prior decision under the Policy which favors Respondent in those circumstances.
The Panel accordingly finds that there are no circumstances supporting Respondent’s claim to rights or a legitimate interest in the domain name and so finds that Complainant has established the second element under the Policy.
Respondent maintains that there is no evidence that Respondent had knowledge of Complainant when the disputed domain name was registered and that for this reason alone the Compliant must fail. The Response includes the following argument:
is no evidence in the Complaint that
The Policy does not require proof of registration in bad faith. If it did, the Policy would be largely unworkable. Instead, the Panel must make a decision based on the civil standard of the balance of probabilities, taking into account all the evidence.
Complainant shows that Respondent has been involved in a number of UDRP disputes and contends that Respondent has a pattern of registering domain names that infringe others’ trademarks. Respondent submits that those matters are not relevant to the complaint before this Panel. The Panel does not need to reach a decision on that issue since the remaining evidence is conclusive.
Both parties are located in the
Even if the Panel was wrong in that decision, Complainant alleges that Respondent’s conduct falls under Policy ¶ 4(b)(iv) which states that:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about Policy ¶ 4(b) is that all four bad faith examples there described are cases of both registration and use in bad faith. Accordingly, if the use of the domain name by Respondent falls under Policy ¶ 4(b)(iv), it follows that the registration was also make in bad faith.
Complainant alleges that Respondent is using the domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The evidence before the Panel supports that claim.
Respondent states that “[A] complainant must proffer evidence that demonstrates that respondent has specifically intended to confuse consumers seeking out complainant” under Policy ¶ 4(b)(iv). That statement is incorrect. It is enough if confusion is the actual consequence of a respondent’s usage, subjective intention left to one side.
The Panel has already found a likelihood of confusion between the domain name and Complainants’ trademark and has already found a commercial purpose. The Panel finds bad faith use and satisfaction of Policy ¶ 4(b)(iv) requirements. The Panel adds that even if the website content was provided by a third party parking company, that still attaches bad faith use under the Policy to Respondent.
Complainant has satisfied the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED and accordingly, it is Ordered that the <systemspavers.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 21, 2008
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 The Response states : “Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words, such as <coolwritings.com>, <topairguns.com>, <indianloves.com>, <dailychampion.com>, <mastermasonstore.com>, and <juicymiami.com> in English, or <aeropuertosdelmundo.com>, <espanol2.com>, and <puertoricorecetas.com> in Spanish, typos of such generic terms as <bankratae.com>, <violns.com>, <topdownlod.com> and <georgeousredhead.com> as well as proper names such as <georgeiscool.com>, <adriansucks.com>, <nataliesucks.com>, and <joe4real.com>.”
 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under
 See 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 Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established). Paragraph 4(a)(i) does not require a complainant to have a trademark
registration for a mark in order to establish rights in it. See also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that complainant’s trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
 §1056. Disclaimer of unregistrable matter
(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(b) No disclaimer, including those made under subsection (e) of section 7 of this Act [15 USC 1057(e)], shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
 See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because complainant had received a trademark registration for its VANCE mark, respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
 See Rollerblade, Inc. v. McCrady, D2000‑0429 (WIPO June 28, 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top‑level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top‑level domains are a required element of every domain name.”);
 See, for example, Am.Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding that the respondent’s domain name, <americanonline.com>, is
confusingly similar to complainant’s
 See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 23, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
 See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because respondent used the names to divert Internet users to a website that offered services that competed with those offered by complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because respondent used the domain name to take advantage of complainant's mark by diverting Internet users to a competing commercial site); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see also Deutsche Telekom AG v. SKK, D2003-0744 (WIPO Nov. 17, 2003).
 For example, in Landmark Group v. Digimedia L.P., FA
285459 (Nat. Arb. Forum
Aug. 6, 2
 See It
Takes 2 v. C.,J., FA 384923 (Nat. Arb.
Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on
the part of Respondent of Complainant, its mark or its services at the time
Respondent acquired the domain name, the Panel finds Complainant has failed to
establish registration in bad faith."); see also
 See Am Airlines, Inc. v.
 A respondent’s subjective intention is irrelevant under this part of the Policy: see Paule Ka v. Korenek, D2003-0453 (WIPO July 24, 2003), where the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:
“… how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
 See St. Farm Mutual
“… the Respondent routinely enters newly registered domain names into a “pay-per-click” scheme. On the available evidence, the Panel found that the Respondent either passively condoned or was indifferent to the material posted to its domains by another party. The very intention of that other party is to drive traffic through the websites. It would appear from the evidence that one strategy to do so maybe to use a third party trademark which is similar to the domain name. The Panel believes that registrations made as part of such a scheme are made and used in bad faith for the purposes of this Policy if it is held that the domain name in point is confusingly similar to a mark in which a third-party complainant has rights.”
See also MASAI S.A. v. Colman, D2007-0509 (WIPO July 19, 2007) (finding that respondent’s registration and use of the disputed domain name to host a parked website constituted bad faith because “[t]he use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy … This is regardless of the fact that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website.”); see also See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).