National Arbitration Forum

 

DECISION

 

Systems Paving Inc. v. Texas International Property Associates - NA NA

Claim Number: FA0804001174400

 

PARTIES

 

Complainant is Systems Paving, Inc. (“Complainant”), represented by Gregory J. Sater, California, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <systemspavers.com>, registered with Compana, LLC.

 

PANEL

 

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.

 

PROCEDURAL HISTORY

 

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 postmaster@systemspavers.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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. 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.

 

B. Respondent

 

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.

 

 

FINDINGS

 

1.      Respondent is a “domainer.”[1]

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.

4.      Respondent WHOIS information shows that Respondent is established in the United States.

5.      Complainant has not in any way authorized Respondent to use its trademark or any variation thereon.

 

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.

 

Identical and/or Confusingly Similar

 

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.[2]  Complainant also asserts common law trademark rights through public use since 1994.  It claims to be the market leader in the United States for the installation of interlocking paving stone driveways, patios, walkways and pool decks.  Complainant’s 2007 revenue exceeded US$76,000,000 and its advertising spend that same year was over US$6,000,000.  Its website, <systemspaving.com>, receives 2000 hits per week.  For reasons which follow, the Panel also finds that Complainant has common law rights in the trademark SYSTEMS PAVING.[3]

 

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[4] ).  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.[5]

 

The gTLD, “.com,” can be ignored for the purpose of comparison of the disputed domain name with the trademark.[6]  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.[7]

 

The Panel finds the domain name confusingly similar to a trademark in which Complainant has rights.

 

Rights or Legitimate Interests

 

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.^[8]

 

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

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; 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).[9]

 

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[10] 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.

 

Registration and Use in Bad Faith

 

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.[11]  The Response includes the following argument:

 

“There is no evidence in the Complaint that Respondent in Texas had any knowledge of Complainant in California.  In fact, the Complaint merely notes that it registered its domain first and that therefore the only conclusion must be bad faith registration.  The Policy requires proof, not mere assumptions of counsel that bad faith registration must exist because bad faith registration must exist.”

 

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[12] 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 United States.  Their physical separation is not an important factor in the Panel’s decision.  By February 2005, Complainant’s business under the trademark had been active for over ten years.  Its common law rights to the trademark garnered through use and reputation are proven.  The meaning of the words “systems pavers” is not directly intuitive.  Respondent derives revenue from the use of the domain name under a “pay-per-click” program.  On those facts, the weight of the evidence is that Respondent registered the disputed domain name in bad faith in the knowledge of Complainant’s trademark and business.

 

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.[13]

 

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.[14]

 

Complainant has satisfied the third and final aspect of the Policy.

 

DECISION

 

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