National Arbitration Forum

 

DECISION

 

IJSS Inc. v. Fallon O’Brien

Claim Number: FA0804001181243

 

PARTIES

Complainant is IJSS Inc. (“Complainant”), represented by Bennet G. Kelley, of Internet Law Center, California, USA.  Respondent is Fallon O’Brien (“Respondent”), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <inkjetsuperstores.com>, registered with GoDaddy.com, Inc.

 

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2008.

 

On April 25, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <inkjetsuperstores.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 May 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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@inkjetsuperstores.com by e-mail.

 

A timely Response was received and determined to be complete on May 20, 2008.

 

On May 27, 2008, Complainant timely submitted an Additional Submission pursuant to Supplemental Rule 7. Respondent did not reply to Complainant’s Additional Submission.

                                                                                                                          

On May 28, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

In its Complaint, Complainant contends as follows:

 

Complainant has substantial rights in the INKJET SUPERSTORE mark, including a U.S. federal trademark registration.  Complainant’s registration with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i).  Complainant, however, is not required to own a trademark registration to establish rights in the mark under Policy ¶ 4(a)(i).  Complainant has been using the mark continuously since November 2001 – well before Respondent’s registration.  The <inkjetsuperstores.com> domain name contains the Mark in its entirety.  The addition of a single letter does not diminish the capacity of the disputed domain name to confuse Internet users.

 

Respondent is not using the <inkjetsuperstores.com> domain name as a principal, but rather to redirect it to a third party website(s), where products competitive with Complainant’s products are sold.  Such redirection is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Respondent is not authorized to use the mark and is not associated with Complainant in any way.  Further, nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Respondent has registered and is using the <inkjetsuperstores.com> domain name to redirect Internet users to a third party website where products competitive with Complainant’s products are sold.  This constitutes bad faith under Policy ¶ 4(b)(iii) and (iv). Respondent’s actions are part of a pattern of registering confusingly similar domain names to profit from the goodwill of the principal domain.  Respondent currently is offering for sale forty-seven (47) separate domains substantially similar to more well known names.  Such a pattern of behavior constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). In addition, Complainant put Respondent on notice of its interest in the mark and demanded that the mark be transferred, but Respondent smugly refused to do. This is further evidence of Respondent’s bad faith with respect to his use of the mark.

 

B. Respondent

In his Response, Respondent contends the following:

 

When Respondent registered the <inkjetsuperstores.com> domain name through GoDaddy.com in 2004 he was attempting to construct an informational and consumer rating website of various inkjet and laser toner cartridge supplier websites.  Respondent is currently in the final processes of purchasing a company by the name <priceless-inkjet.com> along with its subsidiaries, <mrsinkjet.com>, <premium-inkjet.com>, <abcco.net>, <inkcart.com> and other operating, revenue generating, inkjet/toner cartridge retail websites.  Priceless Inkjet has been in business utilizing the Internet since 1998.  Priceless Inkjet currently has over $20,000,000 in generated sales along with over 700,000 current customers.  Respondent’s intent with the domain <inkjetsuperstores.com> and the subsequent website was and is purely to direct his current and future customers to his Inkjet Superstores.

                                

Respondent has had no knowledge of Complainant or his California company until notified about this proceeding a few weeks ago. 

 

At no time was this domain offered for sale or trade to the complainant. Also, at no time has Respondent generated any revenue from his ownership of the disputed domain name.

 

Complainant does not, nor has he ever owned, the federal trademark for either <inkjetsuperstore.com> or Inkjet Superstore pertaining to the reselling of inkjet and toner cartridges.  He would like us to believe by applying and obtaining said trademark under International Class 2 only, which is “printers ink,” that this affords him universal protection to use it in any type of business he chooses to engage in.  “Printers ink” is ink that is used in bulk and commercial type-set printing which he does not manufacture or sell.  Complainant would have us assume, in his own words “in conjunction with selling laser printer cartridges, inkjet cartridges, copy toners, and other printing supplies goods and/or services,” which is International Class 35.  The USTPO has turned down several companies in the past when they have attempted to obtain similar trademarks in the inkjet/toner cartridge re-selling business honestly, utilizing the correct Class and Code, such as “Cartridge Superstore” and “Your Ink and Toner Superstore.”  The USTPO would not allow the use of these two generic terms and neither should this court. Complainant not only operates out of a small warehouse located in California only (no brick and mortar outside of California).  He neither manufactures, sells nor distributes “Printers Ink.”  He is purely a “middle-man” for various manufacturers of Ink and Toner cartridges.  He manufactures nothing and has no brand other than sometimes putting his label on the product.  Complainant had four years to register the <inkjetsuperstores.com> domain name, and did not obtain the misleading trademark until November 2007.

 

C. Additional Submissions

In its Additional Submission of May 27, 2008, Complainant contends as follows:

 

The Response fails to comply with Rule 5 of the ICANN Rules. Accordingly, Complainant requests that each factual allegation contained in the Complaint be deemed admitted as a result of Respondent’s default.

Respondent contends that he intends to use the domain name to attract, for commercial gain, Internet users to offer products competing with Complainant, that he had no knowledge of Complainant prior to the Complaint; and that Complainant has no trademark rights as it pertains to the sale of inkjet products.  The first contention merely supports Complainant’s contention that Respondent is using the domain in bad faith. Respondent’s claim that he has not earned any income from the domain is not only inconsistent with his stated intentions for use of the domain name but is contradicted by the fact that it redirects to another commercial site.  Respondent’s contention that he had no knowledge of Complainant prior to receipt of the Complaint is directly contradicted by his prior correspondence with Complainant.  Such a claim is laughable for someone who claims to be in this business sector given the extensive media attention received by Complainant.  Respondent’s final contention that his activities do not infringe on Complainant’s trademarks rights is based on his own unique interpretation of trademark law and not on any legal authority.  Moreover, Respondent’s suggestion that the sale of “printers’ ink” is not even remotely related to the sale of inkjet cartridges is contradicted by a simple Google search of “printers’ ink” which results in numerous ads and entries for inkjet products.

 

 

FINDINGS

The Panel finds the domain name at issue to be confusingly similar to Complainant’s mark. The Panel need not make any finding on rights and legitimate interests in the domain name because Complainant failed to prove registration in bad faith. In particular, Complainant failed to prove that Respondent knew or should have known of Complainant’s common law mark at the time of the domain name registration.

 

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.

 

Preliminary Issue

In its Additional Submission, Complainant contends that the Response fails to (i) respond “specifically to the statements and allegations contained in the complaint;” (ii) “[s]pecify a preferred method for communications;” (iii) address Respondent’s acceptance or rejection of a single-member panel; (iv) state that a copy has been transmitted to Complainant; and (v) include the required statement certification “that the information contained in this Response is to the best of Respondent's knowledge complete and accurate . . . and that the assertions in this Response are warranted under these Rules and under applicable law.”  Also, Complainant asserts that Respondent’s allegations are without citation and are not made under oath.

 

Pursuant to Rules ¶ 14(b), “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. (Panel’s emphasis).  This means that, generally, a responding party failing to respond specifically to points made in the complaint risks that its omission be taken as an admission of facts asserted by the other party.  As can be seen below, in the present case Respondent did address and contest important issues contained in the Complaint. Accordingly, under its general powers pursuant to Rules ¶ 10(d), the Panel is not inclined to draw any inferences against Respondent—who is appearing pro se—simply because he failed to comply with some formal requirements.

 

Identical and/or Confusingly Similar

Complainant proved that it owns a U.S. federal trademark registration for INKJET SUPERSTORE (Reg. No. 3,344,249, issued November 27, 2007, filed August 11, 2006). Further, Complainant has marketed and operated its discount ink supply store since November of 2000 or 2001.  UDRP panels routinely accept that in order to determine whether a complainant has rights in a mark under Policy ¶ 4(a)(i), it is immaterial for which class the registration was granted, or in the case of common law marks, in which business sector the mark was used.  Therefore, the Panel finds that Complainant has rights in the INKJET SUPERSTORE trademark.

 

The domain name in dispute consists of the INKJET SUPERSTORE expression, with the addition of a final “S” and the “.com” gTLD.  These minor additions are inapt to distinguish the domain name from the mark.  See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a complainant’s mark).  Accordingly, the Panel finds that the domain name at issue is practically identical or confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

Respondent says that he registered the domain name at issue attempting to construct an informational and consumer rating website about various inkjet and laser toner cartridge supplier websites, suggesting that this is a legitimate interest or right in respect of the domain name.

 

The Panel notes that the INKJET SUPERSTORE expression is composed of the terms “inkjet” and “superstores,” a suitable combination for describing inkjet supply businesses. The Panel also notes that according to the printout of the USTPO certificate for Registration No. 3,344,249, Complainant disclaims the exclusive right to use “INKJET” apart from its shown “INKJET SUPERSTORE” mark. Although none of the websites to which the disputed domain name redirects contain the word “superstore” or “superstores,” this term appears to be common enough to be applicable to many kinds of businesses.[1] At page 29 of the Complaint (Exhibit “E”) Complainant itself submits a printout of an undated article by Adam Bluestein titled “39 Great Business Bargains”, where the term “superstores” is used as a generic term, and in contrast to four online stores—one of them being Complainant itself—as follows:

 

“Deals abound on generic, remanufactured, and even name-brand cartridges. There are numerous online office and ink specialty stores -Inksell.com, 4inkjets, Databazaar.com and InkjetSuperstore.com- that often have better prices than the superstores and printer manufacturers.”

 

Thus, it appears that Respondent’s alleged intent to build an informational and consumer rating website on inkjet supply online stores deserves some credit, and may qualify as a legitimate interest in respect of the domain name.  The fact that Complainant failed to prove that Respondent knew or should have known the existence of Complainant at the time of registering the domain name in dispute—see below—reinforces this impression of the Panel.

 

In light of the Panel finding in the next section, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the domain name.  See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). 

 

Registration and Use in Bad Faith

Complainant began using the INKJET SUPERSTORE mark in commerce on or before November 2001, as declared by Ilan Douek (page 10 of the Complaint), or on November 17, 2000, as declared by Complainant itself before the USTPO when filing the trademark application (Exhibit “A”).

 

The Panel agrees with Complainant that pursuant to Policy ¶ 4(a)(i) its common law rights in the mark are sufficient to prove rights in a mark.  See Uitgerverij Crux v. W. Frederic Isler, D2000-0575 (WIPO Oct. 30, 2000) (The panel said: “A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. Therefore, given that the Complainant has provided evidence to the effect that he has been using the mark CRUX in association with its business for a number of years prior to the Domain Name being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds rights in the marks "CRUX Editions" and "Uitgeverij CRUX".”).

 

Respondent purchased or registered the disputed domain name on November 25, 2004.  Was Respondent aware of Complainant’s business and common law mark INKJET SUPERSTORE on or before the registration date?  Respondent flatly denies this, and states that he has had no knowledge of Complainant or its California company until notified about the present proceeding a few weeks ago.  In this respect, Complainant is right that Respondent was put on notice of the dispute some time before being served with the Complaint.  On March 3, 2008, Complainant sent a cease-and-desist letter to Respondent (Exhibit “K” to the Complaint).  On March 28, 2008, Complainant sent an email to Respondent to discuss the domain name registration.

 

In any case, for a Panel to consider Respondent as a registrant in bad faith, Complainant must prove that Respondent knew or should have known Complainant’s mark by November 25, 2004.

 

Complainant contends that its website, business and mark INKJET SUPERSTORE was known or should have been known to Respondent because the mark is being mentioned in magazine articles and price comparisons on the Internet.  To that effect, Complainant submits the following documents:

 

-         The undated article titled “39 Great Business Bargains,” by Adam Bluestein (see above);

-         An article entitled “Why Does It Cost So Much To Print” by George Jones, posted on Forbes.com on October 12, 2006, where Inkjetsuperstore.com is mentioned in an ink cartridge price comparison (Complaint’s Exhibit “D”);

-         Three undated web pages from Google, Yahoo! and MSN, respectively, showing “Inkjetsuperstore.com” as a search result;

-         An undated search result on About.com (Exhibit “B” to the Complaint);

-         An article entitled “Staples stumbles” by Robert L. Mitchell, published on Computerworld Blogs (http://blogs.computerworld.com), dated March 21, 2008 (Exhibit “C” to the Complaint), mentioning Inkjetsuperstore.com, and

-         An undated web page from Shopzilla showing a store rating for InkjetSuperstore.com, where it is stated that this online store was rated by 25,000 customers since 2005 (Exhibit “F” to the Complaint).            

 

Because these documents are either undated or simply postdate Respondent’s registration of the disputed domain name, the Panel concludes that Complainant failed to prove that Respondent should have known the INKJET SUPERSTORE common law mark on or before his registration of the domain name, i.e. that Respondent registered the disputed domain name in bad faith.

 

Complainant also alleges that Respondent currently is offering for sale forty-seven separate domain names substantially similar to well-known names, which is a pattern of behavior constituting bad faith registration and use pursuant to Policy ¶ 4(b)(ii). However, Complainant failed to prove that any of those 47 domain names corresponds to a mark owned by a third party.  Moreover, most of such domain names consist of generic or common words, and several of them are merely descriptive of items related to the inkjet supply industry.  In particular, there is no evidence that the domain names containing the names of candidates Clinton and Biden actually do correspond to third party marks or other protected identifiers.  Thus, Complainant failed to prove the “pattern of such conduct” element under Policy ¶ 4(b)(ii) (“you have 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.”)

 

In conclusion, Complainant failed to evidence that Respondent registered and is using the disputed domain name in bad faith.

 

DECISION

Since Complainant failed to establish the requisite of bad faith under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Roberto A. Bianchi, Panelist
Dated: June 11, 2008

 

 

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