Dwight Esnard v. Navigation
Catalyst Systems, Inc.
Claim Number: FA0810001230381
PARTIES
Complainant is Dwight Esnard (“Complainant”), represented by Peter R. Afrasiabi, of Turner Green Afrasiabi & Arledge LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mesagaragedoor.com>, registered with Basic Fusion, Inc.
PANEL
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.
Maninder Singh as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 21, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 24, 2008.
On October 24, 2008, Basic Fusion, Inc. confirmed by e-mail to the
National Arbitration Forum that the <mesagaragedoor.com> domain name is
registered with Basic Fusion, Inc. and
that the Respondent is the current registrant of the name. Basic Fusion,
Inc. has verified that Respondent is bound by the Basic Fusion, 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 October 28, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 17, 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@mesagaragedoor.com by
e-mail.
Respondent’s Response was received in electronic copy on Nov. 17, 2008, however a hard copy was not received prior to the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional
Submission on November 25, 2008 that was not in compliance with Supplemental
Rule 7 because Complainant failed to submit the required fee.
On 3.12.2008, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mr. Maninder Singh as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
Complainant,
Dwight Esnard has inter alia contended that the disputed domain name <mesagaragedoor.com> incorporates Complainant’s MESA GARAGE DOORS mark and its
mesagaragedoors.com mark and merely removes the “s” in doors. MESA GARAGE DOORS
is a denoter of garage doors and garage door products. Of course, the MESA
GARAGE DOORS mark, as a denoter of garage doors and garage door products is
fanciful and arbitrary, bearing no relation to the product and service provided
by Complainant (Complainant is not from Mesa after all). The complainant has
relied upon the decision Pfizer, Inc. v. Y2K Shipping, 70 USPQ.2d 1592,
2004 WL 896952 (E.D.N.Y. 2004) (“Viagra” is a fanciful mark entitled to the
widest degree of protection.”).
·
It has been further contended by Complainant
that for filing complaints for domain name disputes, Complainant is “not
required to own a trademark application to establish rights” in the MESA GARAGE
DOORS mark under Policy 4(a)(i). Complainant has relied upon decisions
of the Forum in Craigslist, Inc. v. Register by Proxy, FA
1087532 (Nat. Arb. Forum October 4, 2007; and of WIPO in 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”). Complainant has also referred to
and relied upon the decision in
·
Complainant owns a California registered service
mark, appended as Exhibit A, and has a pending federal registration, appended as Exhibit B along with the
Complaint.
· The disputed domain name <mesagaragedoor.com> is confusingly similar to Complainant’s “Mesa Garage Doors” mark because it “takes advantage of a typing error (eliminating the “s” after the word “door” to pluralize the word) that users commonly make when searching on the Internet.” In this regard, Complainant has placed reliance upon the decisions in the cases of – (i) Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000); (ii) Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com> (zero in place of letter O) is confusingly similar to Complainant’s mark by exploiting upon likely mistakes by users when entering the URL address); (iii) Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); and (iv) Frontier Airlines, Inc. v. Webmaster (Nat. Arb. Forum April 17, 2007) (finding the respondent’s <frontierairline.com> domain name confusingly similar to the complainant’s registered FRONTIER AIRLINES mark because the complainant’s mark remains the dominant feature).
· Complainant is a garage door company that specializes in the installing, repair and creation of custom garage door products. Complainant’s website, <mesagaragedoors.com>, allows customers to learn about Mesa Garage Door’s products. Respondent uses the <mesagaragedoor.com> domain name to re-direct Internet users who are searching for Complainant’s website to another website that offers links to other websites where consumers can buy garage doors or garage door products of other companies and which purchases occur from other companies, not Complainant, proof of which is appended as Exhibit-C to the Complaint.
· Complainant has further contended that given Respondent’s use of the < mesagaragedoor.com> domain name, Respondent’s use of the domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy Paragraphs 4(c)(i) and (iii). The Complainant has also referred to and relied upon the decisions of the Forum in - (i) Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); (ii) Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using 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 user to a website that offered competing services with those offered by the complainant under its marks); (iii) Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to Policy 4(c)(iii) because respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a competing commercial site); (iv) C & E Fein GmbH & Co. v. Mierendorff, FA 183729 (Nat. Arb. Forum Oct. 1, 2003) (“Relevant law states that no legitimate or bona fide use or interest in the domain name can be found when a respondent, who is selling competing goods and services, is diverting consumers to its own web site by using a complainant's trademark in its domain name.”); (v) Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); (vi) MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); (vii) Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); (viii) Harrah's Las Vegas, Inc. v. Grand Slam Co., FA0205000114339 (Nat. Arb. Forum July 8, 2002).
·
It is also the contention on behalf of Complainant
that Respondent is not known at all as <mesagaragedoor.com>, nor can
Respondent be; and that the Complainant has certainly never authorized or
licensed Respondent to use its MESA GARAGE DOORS mark. Indeed, even the WHOIS
information does not show that Respondent is commonly known by the disputed
domain name. Hence, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy 4(c)(ii). The
Complainant has placed reliance on the decisions in the cases of – (i)
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that
the WHOIS information, and its failure to imply that Respondent is commonly
known by the disputed domain name, is a factor in determining that Policy
4(c)(ii) does not apply); (ii) Ian Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that, without
demonstrable evidence to support the notion that a respondent is commonly known
by a domain name, the notion must be rejected); (iii) Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); (iv) Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question); (v) Harrah's Las Vegas, Inc. v. Grand Slam Co., FA 114339 (Nat.
Arb. Forum July 8, 2002); American Airlines, Inc. v. Registrate
· While placing reliance on Exhibit-C, Complainant has contended that by using its mark in the disputed domain name, the Respondent redirects to its commercial website Internet users who intended to visit Complainant’s <mesagaragedoors.com> but inadvertently omitted the letter ‘s’ from the word “doors.”
· Complainant further contends that the practice of “typosquatting” has been recognized as bad faith registration and unlawful use of a domain name under Policy 4(b)(iv). To substantiate, the Complainant has relied upon the decisions in the cases of (i) EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); and (ii) Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).
· It is further the contention of Complainant that Respondent has used the disputed domain name to resolve to a website that offers goods that compete with those offered by Complainant under its MESA GARAGE DOORS mark; therefore, Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which is evidence of bad faith pursuant to Policy Paragraph 4(b)(iii). Complainant has relied upon the decisions in – (i) S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); (ii) EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); (iii) Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii).
· It is also the contention of Complainant that there can be no doubt that Respondent is engaged in the practice of typosquatting, itself a violation of Policy Paragraph 4(a)(iii). Reliance has been placed by Complainant on decisions in – (i) Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); (ii) AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy 4(b)(iv) where a respondent’s domain name resolved to a website displaying links to third-party websites that offered services similar to a complainant’s services); (iii) Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003): “Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”
· Complainant thereafter contends that the Respondent has registered and used the disputed domain name in bad faith pursuant to Policy Paragraph 4(b)(iv). Respondent has intentionally attempted to attract Internet users to its commercial website that generates revenue by redirecting consumers to competitors of Complainant by creating a likelihood of confusion with Complainant’s mark. Reliance has been placed by Complainant on (i) Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); and (ii) Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
· Complainant also contends that the respondent is apparently engaged in the business of sniping massive domain names for commercial use, as evidenced by its counsel’s letter, annexed with the Complainant as Exhibit-D, which indicates THAT it has defended many UDRP actions by others in myriad circumstances, none of which are related to the GPS business of Navigation Catalyst Systems.
·
Complainant has contended that MESA GARAGE DOORS
is a fanciful and arbitrary nomenclature.
It is neither generic, nor it is descriptive. The said mark is duly
registered as a service mark in
· Complainant has also contended that it is a garage door company that specializes in the installing, repair and creation of custom garage door products. The further contention of the complainant is that the Complainant’s website – <mesagaragedoors.com> allows customers to learn about Mesa Garage Door’s products. On the other hand, it is the contention of the claimant that Respondent is using - <mesagaragedoor.com> to redirect Internet users who are searching for Complainant’s website to another website that offers links to other websites where consumers can buy garage doors or garage door products of other companies and not of Complainant. It has been contended by Complainant that admittedly, through this process Respondent is generating revenue for itself in a manner which is neither bona fide, nor is permissible.
· Respondent has contended that the domain name in question is commonly used phrase in English language upon which Complainant cannot claim any monopoly. Complainant had not presented any evidence for revenue, sales or goodwill generated by Complainant in relation to its business.
· While conscious of the fact that Complainant has not paid the necessary fee towards Additional Submissions, it may however be noticed that Complainant has stated in the Additional Submissions that it does not provide garage doors or garage door products out of Mesa, Arizona but offers its product in Southern California.
· Complainant has further submitted that Respondent has not invested any time, effort or money in the domain name in question except the cost of registration. Respondent does not own any trademark or service mark registration comprising the domain name and is also not using any such mark for any service or product. Respondent is also not using the domain name as a corporate or trade name and Respondent does not get identified with any such mark or name.
· Complainant has further contended that Respondent admittedly uses the domain name in question to divert Internet users to its website for re-routing them to other third-party websites where such user can buy competing products. The distinction of the alphabet ‘s’ does not create any dissimilarity as alleged by Respondent. The claimed online media company of the respondent company does not at all get identified with the disputed domain name. Complainant has contended that under these circumstances it is reasonable inference that Respondent’s purpose of registration and use of the impugned domain name was to create confusion for complaint business, in bad faith and the present case is the case of bad faith registration “per se.”
B. Respondent
· Respondent in his response to the complaint has stated that Complainant has requested transfer of the domain name <mesagaragedoor.com>. Ordering the transfer of a domain name is an extraordinary remedy that should be exercised only in clear cases. Respondent has relied upon the decisions in the cases of – U.S. Postal Serv. v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum March 19, 2001). Furthermore, Respondent relies upon the decision in the case of Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (the ICANN Policy is intended to resolve only a narrow class of abusive registrations).
· Respondent contends that the present case is not a case of an abusive domain name registration.
· Respondent further avers that the law requires Complainant to meet its burden of establishing each of the three elements of ICANN Policy 4(a), namely that :
(i) the domain name is identical or confusingly similar to Complainant’s trademark,
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Respondent further submits that the Complainant’s own evidence and the evidence submitted by Respondent indicate that the Complainant cannot prove any of the three elements, much less all of the elements, as required.
· Respondent prays to the Panel for denial of Complainant’s request to transfer Respondent’s domain name on the following grounds:
(i) The domain name <mesagaragedoor.com> is neither identical nor confusingly similar to Complainant’s alleged trademark and service mark.
(ii) Respondent has rights to and legitimate interests in <mesagaragedoor.com> under the factors in ICANN Policy 4(c).
(iii) Complainant has not demonstrated that Respondent’s conduct falls within any of the factors tending to show bad faith in ICANN Policy 4(b).
(iv) Respondent has, at all times, maintained the domain name in connection with its bona fide business and has maintained genuine contact information for <mesagaragedoor.com>, including its office address and other pertinent information.
·
Respondent contends that the Complainant has
alleged that it owns the service mark MESA GARAGE DOORS and
· It is further the contention of Respondent that the USPTO specifically limited the registration, noting that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘GARAGE DOORS’ APART FROM THE MARK AS SHOWN.” According to Respondent, its domain name is not identical to Complainant’s MESA GARAGE DOORS mark, and consumer confusion is unlikely to happen. Respondent further states that Complainant is attempting to broaden its trademark to capture all uses of these commonly used terms.
· Respondent has argued that under the U.S. federal law, likelihood of consumer confusion is evaluated under the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S. P.Q. 563 (C.C.P.A. 1973), that can be summarized as follows:
(i) similarity of dissimilarity of the marks,
(ii) similarity or dissimilarity in the goods,
(iii) similarity or dissimilarity of trade channels,
(iv) conditions under which and buyers to whom sales are made,
(v) the fame of the prior mark,
(vi) the number and nature of similar marks in use on similar goods,
(vii) the nature and extent of any actual confusion,
(viii) the length of time and conditions of any concurrent use without evidence of actual confusion,
(ix) the variety of goods on which a mark is or is not used,
(x) the market interface between the applicant and the owner of a prior mark,
(xi) the extent to which applicant has a right to exclude others from use of its mark on its goods,
(xii) the extent of potential confusion, and
(xiii) any other established fact probative of the effect of use.
Respondent contends that taking into consideration all the relevant factors it is revealed that there is no likelihood of consumer confusion because – (i) Respondent’s domain name “mesagaragedoor.com” is not identical to Complainant’s MESA GARAGE DOORS mark; (ii) the respective services of Complainant and Respondent are different; (iii) Respondent is an online media company that provides website information to consumers and advertising revenue to its customers as well as Internet directory and search capabilities in numerous different verticals. However, contrary to that, Complainant is a retailer dealing in garage doors. Respondent is stated to have registered the domain name in question more than two years before Complainant has even applied for a trademark or service mark.
· Respondent claims that it has legitimate rights to <mesagaragedoor.com> as the phrase is a commonly used phrase in the English language. It is not descriptive of Complainant’s MESA GARAGE DOORS mark alone.
· According to Respondent, Complainant does not have a monopoly on the combination of “mesa” and “garage doors” and in fact, the Complainant does not even have a registered trademark for the combination of words “Mesa Garage Doors”.
· Respondent contends that Complainant correctly asserts that Respondent’s website promotes services which deliver Internet search services, products, and domain registry solutions, including fully managed and customized domain navigation solutions to registrars, registrants and resellers. Respondent further contends that it is an online media company that provides website information to consumers and advertising revenue to its customers as well as Internet directory and search capabilities in numerous different verticals.
· Respondent’s contends that the fact that Complainant’s business claims to be solely dedicated to garage doors does not grant Complainant a monopoly on the term “mesa garage doors” simply because it covets Respondent’s domain name. Respondent states, that nonetheless, even if our business was not related to domain navigation solutions, the argument that we have no right or interest in a domain name which contains a phrase from the English language like “mesa garage door” and the domain name <mesagaragedoor.com> is nonsensical and an unlawful restriction on commerce.
· The term “mesa garage door” is a common, descriptive phrase in the English language, thus increasing Complainant’s burden to present evidence of its common law rights prior to the filing of its trademark applications. See Advanced Relational Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO Oct. 13, 2003) (finding that the complainant failed to establish rights in the HOME DESIGNER mark because it was “certainly descriptive and probably generic” and the complainant had not shown that the public identified its goods with the mark). Complainant cannot meet this burden.
·
Complainant has presented no evidence of
revenues, sales or goodwill generated by its business and would give rise to
common law rights sufficient to put Respondent on constructive notice of this
dispute. Given that previous Panels have required greater scrutiny to sustain a
complainant’s assertion of common law trademark rights for a less distinctive mark
(i.e. a mark made up of descriptive or generic words), Complainant has failed
to establish such common law rights sufficient to constitute constructive
notice. See Hugo Daniel Barbaca Bejinha
v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum December 28, 2006),
citing
· Further, in order to prevail, Respondent’s domain name would have to be the same as the trademark that the Complainant claims to have rights to. Again Complainant falls short as it does not even have a trademark for “mesa garage door” or <mesagaragedoor.com>. <mesagaragedoor.com> is not a misspelling of the Complainant’s service.
· Moreover, Complainant has conceded legitimate use of the domain name <mesagaragedoor.com> in Respondent’s business as a domain name navigation company. See 3Z Productions v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (legitimate interest in a domain name is shown by website development). Complainant’s unsupported assertion of infringement is simply not enough to overcome the avalanche of evidence that indicates Respondent has established and maintained its domain name in connection with a bona fide business offering.
· Under the ICANN Policy, Complainant has the burden to show both bad faith registration and bad faith use through hard evidence. Policy 4(a)(iii); 4(b). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech Ltd., FA 406512 (Nat. Arb Forum Mar. 9, 2005) (the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii); see also Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”). It can show neither.
· <Mesagaragedoor.com> is a domain name based on a combination of generic words. See e.g., Kid Glove Enterprises, Inc. v. Navigation Catalyst Sys., Inc., FA 944346 (May 2, 2007) (UDRP decision noting that the phrase “hitting the note” is “a common phrase comprised of generic terms” and finding no bad faith where NCS registered the <hittingthenote.com> domain name “based on the dictionary meaning of the phrase “hitting the note” and not to take advantage of Complainant’s mark”); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (The panel denied the transfer request finding that because the respondent was legitimately using the <highlife.com> domain name, a generic phrase, in connection with its search engine, and the respondent was using the domain name for legitimate purposes, and thus did not register and was not using the disputed domain name in bad faith); see also New Pig Corp. v. Dicker FA0611000843597 (Nat. Arb. Forum January 29, 2007) (“The Panel finds that Respondent registered the <pig.com> domain name based on the dictionary meaning of the term “pig” and not to take advantage of Complainant’s generic mark”); see also CNR Music B.V. v. High Performance Networks, Inc., D2005-1116 (WIPO Jan. 23, 2006) (“The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum Jul. 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the Complainant’s TARGET mark is a generic term).
· Complainant insincerely argues that Respondent is merely typosquatting. Nothing could be further from the truth, or reality. To be very clear, Respondent does not own a trade mark, nor domain name which includes Complainant’s proposed federal mark “Mesa Garage Doors.”
·
Complainant also neglected to mention the status
of its mark applications with the USPTO. Throughout its papers Complainant
asserts that it owns a trademark for “Mesa Garage Door.” Its proposed trademark
filed years after Respondent acquired the domain, is for “Mesa Garage Doors”.
Moreover, by way of background, as a
· It is clearly within reason that a website which is related to garage doors may ultimately deliver links to other companies which offer products and services of the Complainant. The search engine system does not work in a vacuum; if there are advertisers bidding on the term “garage door” in a paid search engine system, then those ads, regardless of who those advertisers are, will show up on our page which by nature of our domain name delivers ads which are keyed off the search term “garage door.” (e.g. any person who is bidding on the term “Reach for the Stars” at a search engine provider would show up on a domain <reachforthestars.com> assuming that domain name was used in a search engine capability like <mesagaragedoor.com>).
· Complainant claims that Respondent created the various informational links on our site to disrupt Complainant’s business. This is not the case. These “taglines” are created by advertisers at Overture Search marketing. This tagline could have been created by anyone who was bidding on the term “garage doors” and since our domain name keyword is “garage doors,” any ad taglines which are associated with those key words would show up on our website bid on “keywords,” which can be words or phrases, and can include product model numbers. When a user searches for a particular word or phrase, the list of advertiser links appears in order of the amount bid. Keywords, also referred to as search terms, are the very heart of pay-per-click advertising. The advertiser links are the source of the content which Complainant is referring to, not the content related to Respondent’s actual website. Once again, Complainant’s assertions fail.
· Finally, the domain name is not the same as Complainant’s trademark, nor is it a misspelling of Complainant’s trademark. No consumer believes it is going to Complainant’s business when he/she types <mesagaragedoor.com>, and no consumer is misled that they have arrived at Complainant’s business when he/she goes to <mesagaragedoor.com>. It is, therefore, far from “clear” as argued by Complainant, that Respondent’s domain name registration and use infringes Complainant’s trademark.
· Complainant has failed to show that Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. Respondent owned the domain name years before Complainant used it or filed for any protection of its marks. Respondent has never offered to sell the domain name to anyone and Respondent never intended to sell the domain name because of Respondent’s own rights and legitimate interests in the domain name.
· Furthermore, Respondent registered the domain name without knowledge of Respondent’s alleged rights, thus it could not have purchased the domain name only to resell it to Complainant. See Id Software, Inc. v. Doom Gaming Connections, FA 95002 (Nat. Arb. Forum July 24, 2000) (respondent, registrant of <doom.com>, did not register or use the domain name in bad faith by placing the domain name for sale on the eBay auction website since there was no evidence of any attempt to sell during the first five years of ownership, so there could be no inference that the respondent acquired the name to resell it to the complainant or a competitor). Respondent has owned the domain name since August 2004 and at no time during this time period has Respondent ever communicated with Complainant about this domain name, let alone tried to sell them the domain name.
· Complainant has failed to present any evidence that Respondent registered the domain name primarily to disrupt Complainant’s business. Complainant’s conclusory assertion that Respondent has used the domain in connection with confusingly similar services, namely in connection with the music industry is insufficient to carry this burden. Respondent and Complainant are not direct competitors, nor do they offer identical goods or services. Indeed, Respondent provides search engine and advertising solutions. Thus, it simply does not follow that Respondent registered the domain name to disrupt Complainant’s business.
FINDINGS
The Panel finds that the domain <mesagaragedoor.com> belongs to Complainant as the Complainant is the owner thereof.
Respondent has registered and is using the disputed domain name to point to a website that offers links and products similar to the products/service being sold/provided by Complainant.
Respondent does not have any license or other agreement to use Complainant’s famous mark.
Respondent’s contention that the domain name is neither similar, nor identical to Complainant’s trademark with the difference of ‘S,’ is unsustainable.
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;
(1) the Respondent has no rights or legitimate interests in respect of the domain name; and
(2) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
The Panel has observed
that both the Respondent and Complainant have omitted to follow the laid down
procedure for submitting their Response and Additional Submission, respectively. However,
the Panel having regard to the decision in Shedrick v. Princeton, FA
236575 (Nat. Arb. Forum Apr. 2, 2004), holding that “declaring response
on behalf of the respondent as inadmissible because of formal deficiencies
would be an extreme remedy not consistent with the basic principles of due
process. . ." chooses to consider both documents. That panel also relied upon the observation that although the respondent
in that case had provided no explanation with regards to its failure to timely
send an electronic copy of its response, yet the panel decided to take into
account the response on behalf of the respondent on the premise that the complainant
in that case, suffered no damage from this procedural deficiency. Useful reference can also be made to the
decision of Clear!Blue
Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum May 3,
2007), wherein the panel had decided to consider the respondent’s submission in
that case, even though it was deficient because it provided useful information
to the panel in making its decision.
The Panel finds that Complainant
need not demonstrate its rights in a mark via trademark registration in order
to obtain UDRP standing, so long as Complainant can demonstrate its sufficient
common law rights through secondary meaning under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its
rights in the mark under Policy ¶ 4(a)(i)); see
also Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant has provided evidence it has a valid service mark for the MESA GARAGE DOORS mark with the State of California (Reg. No. 64,251 issued December 3, 2007). The service mark specifies Complainant’s first use of the mark in commerce in 1992. In addition, Complainant provides evidence of a pending trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MESA GARAGE DOORS mark (Serial No. 78,959,725 filed August 24, 2006). Complainant has provided evidence that it began its business of selling garage doors products and services under the MESA GARAGE DOORS mark in 1992. The Panel finds that Complainant’s MESA GARAGE DOORS mark in association with Complainant’s longstanding and continuous use, state trademark registration, and application for trademark status with the USPTO signifies that the mark has acquired secondary meaning. Thus, the Panel finds Complainant has established common law rights in the mark dating back to 1992, pursuant to Policy ¶ 4(a)(i). See 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), see also 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”).
Complainant argues in its Complaint and its Additional Submission that
Respondent’s disputed domain name is
confusingly similar to Complainant’s MESA GARAGE DOORS mark. Respondent’s disputed domain name contains
Complainant’s mark, omits the “s,” and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
the omission of the letter “s” creates a confusing similarity between the mark
and the disputed domain name. See Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive). In
addition, the Panel may find that the addition of a gTLD is irrelevant in
distinguishing a disputed domain name from an established mark. See
Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir.
2000), cert. denied, 530
The Panel finds substance in the contention of Complainant that MESA GARAGE DOORS is a fanciful and arbitrary nomenclature. This nomenclature adopted by the complainant, in my view, is neither generic nor it is descriptive. The complainant has claimed the use of this mark since 1991.
The contention of Respondent that the domain name in question is a commonly used phrase in the English language, upon which Complainant cannot claim any monopoly, cannot be accepted. The Panel finds no merit in the objection by Respondent that Complainant has not presented any evidence for revenue, sales or goodwill generated by Complainant in relation to its business.
The use of the disputed domain name <mesagaragedoor.com> by Respondent is confusingly similar to Complainant’s MESA GARAGE DOORS mark. The Panel finds that the disputed domain name is confusingly similar.
Rights or
Legitimate Interests
Complainant asserts in its Complaint and its Additional Submission that Respondent is not and has never been commonly known by the disputed domain name. Complainant evidences that Respondent’s WHOIS information identifies Respondent as “Navigation Catalyst Systems, Inc.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s <mesagaragedoor.com> domain name resolves to a website displaying links to third-party websites in competition with Complainant. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
Respondent has admitted that it uses the domain name in question to divert Internet users to its website to re-route them to other third-party websites where such user can buy competing products. In my view, the distinction of the letter ‘s’ does not create any dissimilarity as contended by Respondent. The claimed online media company name of Respondent does not at all get identified with the disputed domain name by Internet consumers. Admittedly, through this process Respondent is generating revenue for itself in a manner which is neither bona fide, nor is permissible.
The respondent is not known/identified as <mesagaragedoor.com>. Complainant has not authorized/licenced Respondent to use its mark. Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(c)(ii). The Panel is of the view that in the light of the facts emerging on the record Respondent does not have any rights in the disputed domain name.
I observe that Respondent does not possess legitimate interests in the <mesagaragedoor.com> domain name. Moreover, Respondent has failed to prove facts under ICANN Policy 4(c), to demonstrate its rights or legitimate interests in the domain name for purposes of ICANN Policy 4(a)(ii), and Respondent has failed to satisfy its burden. See ICANN Policy 4(c). Respondent has no legitimate interests and rights in <mesagaragedoor.com> and the transfer, as prayed for by Complainant, in my view, deserves to be allowed.
Registration and
Use in Bad Faith
Complainant argues that
Respondent’s use of the disputed domain name to offer products in direct
competition with Complainant’s business is evidence of bad faith. The Panel finds Respondent’s use of the disputed
domain name is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See
Complainant also argues in its Complaint and its
Additional Submission that Respondent’s disputed domain is confusingly similar
to Complainant’s mark and attracts unknowing Internet users to Respondent’s
website for commercial gain. The Panel finds
this use of the disputed domain name demonstrates Respondent’s attempts to
profit from Complainant’s goodwill associated with its MESA GARAGE DOORS mark
and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent and the complainant were in the same line of business
and the respondent was using a domain name confusingly similar to the
complainant’s FITNESS WAREHOUSE mark to attract Internet users to its
<efitnesswarehouse.com> domain name);
see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
The Panel agrees with the contention of Complainant that under these circumstances it would be reasonable to arrive at a conclusion that Respondent’s purpose of registration and use of the impugned domain name was in bad faith and the present case is the case of bad faith registration “per se.”
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 <mesagaragedoor.com>
domain name be TRANSFERRED from Respondent to the Complainant.