Creative Software Specialists, LLC v. Printers Plus
Claim Number: FA0903001251542
Complainant is Creative Software Specialists, LLC (“Complainant”), represented by J.
Laevin Weiner, of Frank Haron Weiner and Navarro,
Michigan, USA. Respondent is Printers
Plus (“Respondent”), represented by Rick Barnett, of Printers Plus,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <printersplus.com>, registered with Godaddy.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2009.
On March 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <printersplus.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 March 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 6, 2009 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 Response was received electronically on April 9, 2009, but the Response was not received in hard copy and was not timely, and so it was determined to be deficient under ICANN Rule #5.
Complainant’s Additional Submission was received on April 15, 2009 and found to comply with Supplemental Rule 7.
On April 15, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On April 23, 2009, the dispute provider received Complainant’s Second Additional Submission.
On April 27, 2009, the dispute provider received Respondent’s Second Additional Submission, which the Panel has chosen not to consider in the rendering of its Decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant Creative Software is
the current owner of
Creative Software currently
maintains a website advertising its goods at printers-plus.com. Respondent most recently registered the
domain name <printersplus.com> in 2007 by renewing its
registration with GoDaddy.com, Inc. The domain name <printersplus.com>
is identical to PRINTER’S PLUS, Complainant’s registered mark and is
confusingly similar to it. The public in
Respondent does not have any rights
in the PRINTER’S PLUS trademark.
Respondent has no rights or legitimate interests in respect of the
domain name. Respondent does not own a trademark
registration for Printer’s Plus, PRINTER’S PLUS, PrintersPlus or any
substantially similar variation of the names Printer’s and Plus. Respondent is not a licensee of
Complainant nor is it otherwise authorized by Complainant to use any similar
marks. Respondent is not an individual,
business, or other organization, commonly known by the name printersplus.com or
by Printers Plus. The name Printers Plus does not appear to be registered as
the business name of any business in
Respondent was, or should have been, aware of the PRINTER’S PLUS trademark when it registered and renewed the registration of <printersplus.com>. The federal trademark registration of PRINTER’S PLUS provided Respondent with constructive notice. Furthermore, the United States Patent and Trademark Office’s database is easily accessible and searchable by all parties. Respondent’s registration of <printersplus.com> thus breached paragraph 10 of the GoDaddy Domain Name Registration Agreement, in which Respondent represented and warranted that it had “no knowledge of it [the domain name] infringing upon or conflicting with the legal rights of a third party or a third party's registration trademark, or trade name.”
Respondent’s bad faith registration is also shown by the steps that Respondent has taken to ensure that its true identity cannot be determined and communication with it cannot effectively be made. Respondent last updated its information with GoDaddy.com in December of 2007 and, upon information and belief, at that time provided incorrect information to GoDaddy.com or failed to correct information on record with GoDaddy.com. Respondent has also failed to honor its obligation to GoDaddy to update its address, phone number and/or fax number. On April 11, 2008, the U.S. Post Office was unable to deliver mail to the post office box listed in the Whois database.
Complainant’s attorneys sent a cease and desist letter to firstname.lastname@example.org. Mr. Barnett responded to this cease and desist letter by claiming that he had rights to use the <printersplus.com> domain name and that Complainant should check the records of the U.S. Patent and Trademark Office to confirm Mr. Barnett’s rights to the domain name <printersplus.com>. Although Mr. Barnett claims that he has the right to use <printersplus.com>, Mr. Barnett has failed to provide any information about the basis of that right to Complainant’s attorneys.
Prior to any notice to Respondent of this dispute, Complainant was unable to find any evidence that Respondent had or was using the domain name <printersplus.com> in connection with a bona fide offering of goods or services. Respondent is not currently using the domain name <printersplus.com> in connection with a bona fide offering of goods or services. Respondent is not currently using the <printersplus.com> domain name as an active website. Respondent has parked the domain name <printersplus.com> with GoDaddy.com which in and of itself is evidence of bad faith. The webpage reached when <printersplus.com> is entered into a browser contains sponsored (paid) link-style advertisements for a variety of products and services. Parking a domain name is evidence of registration and use in bad faith. The use of these so-called sponsored links makes it apparent that Respondent is not making a legitimate noncommercial or fair use of the domain name.
The use of these so-called sponsored links makes it difficult for customers and potential customers to find Creative Software’s website and increases the confusing similarity between <printersplus.com> and the PRINTER’S PLUS registered mark. There is no evidence that Respondent was ever engaged in a legitimate business under the name of printersplus.
Respondent contends as follows:
Rick Barnett is the agent for de facto respondent and owner of the domain name <printersplus.com>.
Respondent categorically disputes the material allegations contained in the Complaint.
Respondent through Barnett founded a retail operation in 1982 that focused primarily on the sales, service and support of computer printers, accessories and supplies. In October 30, 1986 Barnett filed for federal registration of the service mark Printers Plus. That application was published for opposition and service mark protection was ultimately granted on Jan 12, 1988. Barnett registered a stylized logotype and that application was approved on March 15, 1988.
Printers Plus operated as many as seven walk-in retail locations in the
Printers Plus ceased retail operations in 1995 and focused on providing on-site IT support services. That outbound technical support and service operation continues today and operates under my direction still using the name Printers Plus.
Barnett registered the domain name <printersplus.com> with Network Solutions in December 1986 (this date was later corrected to be December 1996). There has been peaceful co-existence for nearly a dozen years without the hint of conflict until this action. The domain printersplusinc.com, who actually sells printer hardware, emerged about the same time.
Respondent has been using the <printersplus.com> domain on a continuing daily basis since its implementation. Whereas the public face of the website is not developed, there is a steady flow of electronic mail that represents a lifeline in communicating with a broad range of desirable (and undesirable) correspondents. This email system is essential for keeping in touch with clients, potential clients and a large complement of other contacts developed since the domain was first registered in 1996. Entities with email accounts at the <printersplus.com> domain receive over 150 legitimate emails daily.
Respondent does not collect or traffic in domain names. Respondent has not sought to sell the domain in question. Respondent has done nothing to give the impression it is allied or associated in any way with neither Complainant nor competitors of Complainant.
Respondent contends that the Complaint was brought in bad faith and requests a finding of Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant in its first Additional Submission contends as follows:
Complainant objects to the late filing of the Response by Respondent who failed to follow any of the requirements set forth in the Supplemental Rules for a timely extension of time including first conferring with Complainant and timely requesting such an extension.
Respondent has failed to provide evidence sufficient to rebut Complainant’s prima facie case. The email correspondences presented have no evidentiary value since neither one is in the form of a declaration or affidavit. Respondent’s “evidence” is based almost solely on his own statements.
Respondent has failed to rebut Complainant’s evidence showing that <printersplus.com> is identical and/or confusing similar to Complainant’s Printer’s Plus trademark. Respondent has admitted that the <printersplus.com> domain name is strikingly similar to the domain name printers-plus.com.
Respondent’s use of <printersplus.com> has impacted Complainant’s business causing a likelihood of initial interest confusion resulting from the nature of the web pages associated with parked domain names.
When a user accesses the <printersplus.com> website, the user is actually accessing a webpage associated with GoDaddy.com that displays advertisements for various products and services. There is a substantial risk that some of the products will be software products for the printing industry.
Displaying advertisements for such products in association with <printersplus.com> creates a likelihood of confusion with Complainant’s PRINTER’S PLUS trademark which has been federally registered for use on or in connection with “pre-recorded computer programs for use in the printing industry as an accounting system.”
Parking of a domain name is not a bona fide offering of goods and services.
Respondent cannot rely on any federal trademark rights as a basis for having legitimate rights to use <printersplus.com>. Those rights were abandoned when Printers Plus Corporation ceased its retail operations. Because of this abandonment and because Respondent began offering on-site IT services, Respondent could not tack its use of Printers Plus onto Printers Plus Corporation’s use of the Abandoned Trademarks and thus lost the priority date associated with the Abandoned Trademarks. Accordingly, Respondent had to establish new rights to use Printers Plus.
Respondent’s failed to establish a
chain of title. Respondent claims that
the registrant of the Abandoned Trademarks was the business he formed. The registrations for the Abandoned
Trademarks identify this business as Printers Plus Corporation. Respondent has not established any chain of
title that transferred the rights of Printers Plus Corporation to
Respondent. Respondent has not even
presented evidence that Printers
Plus Corporation existed as a
Complainant has discovered that an
entity called “Printers Plus, Inc.,” with a business address at
Respondent has not presented any evidence that
Respondent is commonly known as Printers Plus, that it was known as Printers
Plus at the time Respondent registered the <printersplus.com> domain
name, or that it was known as Printers Plus prior to April 10, 2008, the date
on which Complainant sent Respondent a cease and desist letter. Complainant, through its attorneys, has not
been able to find any evidence that Respondent conducts a business known as
Printers Plus or that Respondent did so in 1996. Respondent has provided a business address in
Other than Respondent’s own statements that he has continuously used <printersplus.com> for email purposes, Respondent has not provided any evidence, dated prior to dispute, regarding use of the domain name for email purposes other than as the email address provided to GoDaddy.com for contact purposes. Such use is not sufficient to create a legitimate business use of the <printersplus.com>. It is merely a use intended to “reserve” the domain name. There is no indication whatsoever that the <printersplus.com> domain name was used for email purposes on, prior to, or soon after the date on which Respondent admitted that he registered <printersplus.com> with GoDaddy.
Respondent has failed to deny or rebut Complainant’s evidence that Respondent provided incorrect registration information to GoDaddy.com when the domain name was registered. The provision of such incorrect information is evidence of bad faith.
Respondent has not presented any
evidence to establish that Respondent was using the name Printers Plus to
identify his business at the time that Respondent registered <printersplus.com>
in 1996. Respondent admitted that he
knew of Complainant’s trademark rights at the time he registered the domain
name in 1996. Respondent had knowledge
of an office action in which the U.S. Patent and Trademark Office cited Complainant’s
mark as being similar to the mark sought to be registered by Printers Plus
Corporation, the company Respondent claims he owned. Respondent’s registration of
<printersplus.com> was thus made with knowledge of Complainant’s
trademark rights. Registration of a
domain name identical or almost identical to Complainant’s trademark is an
indication of bad faith. See Alpine Banks of
Despite Respondent’s allegation that his IT business continues today under Printers Plus, there is no evidence that Respondent was using that name in 1996 when he registered <printersplus.com>. Respondent registered <printersplus.com> with GoDaddy in 1996, long after Printers Plus, Inc. or Printers Plus Corporation ceased retail operations in 1995 and abandoned its Printers Plus trademarks. Respondent cannot rely on any federal trademark rights as a grounds for a good faith registration of <printersplus.com> because those rights had been abandoned when Printers Plus Corporation ceased offering the goods and services specified in the registrations for the Abandoned Trademarks.
Respondent has not presented any evidence showing that an entity named Printers Plus Corporation ever existed. Respondent cannot base any rights to use <printersplus.com> on the Abandoned Trademarks nor on his having been in business as Printers Plus Corporation.
Several facts establish Complainant’s good faith belief that Respondent did not have any legitimate rights to use the <printersplus.com> domain name and that the registration for the name was initially made in bad faith and was renewed in bad faith. Because Complainant had a good faith belief, Respondent has not met any of the requirements for establishing a case of reverse domain name hijacking
Respondent in its Additional Submission contends as follows:
Respondent did not have knowledge "for nearly two decades" of the similarity between the two marks.
The action of the
The layout and content of the 'parked' GoDaddy page serves as an explicit indication that a web user has not reached the web home of a company that markets print shop accounting software. Since moving our domain to GoDaddy in 2006, Respondent have never received any type of remuneration for allowing GoDaddy to occupy our vacant space as they see fit, furthermore, our daily volume of email traffic passing thru this domain belies the suggestion that our domain is idle or is being treated passively, as would be typical for a 'parked' page that could be considered to show bad faith.
The first reference to a page being indexed by archive.org is in Nov of 1998. Due to specific coding in the web page design, it instructed web page gathering robots to exclude this site from any web indexing. This was done for competitive reasons and because prices for printer hardware fluctuate significantly.
GoDaddy did not enter the domain registration space until 1997.
The Respondent’s papers should be corrected to show that Respondent’s original registration with Network Solutions took place in 1996, not 1985 as incorrectly stated in a footnote, or 1986 as the Response.
The bankruptcy trustee had no issues with Respondent using the name Printers Plus.
At the time the domain was registered in 1996, Printers Plus, Inc. had ceased to exist.
Respondent’s PayPal Account shows Printers Plus as being an account holder since 2000. There are also in existence advertisements from Washington Post and Yellow Pages and One book publications dating from 1996 using the name Printers Plus, that, due to the passage of time, are not readily available.
When first registered in 1996 the domain name represented the name under which Respondent was conducting business.
In the dozen years since that time there has been ample opportunity for anyone to question the legitimacy the registration.
The domain was registered with Network Solutions and transferred to GoDaddy. At the time of the last renewal in 2007, all the contact information on the application was correct. The attorney for complainant was able to correspond with me at the listed email addresses and the phone number was an active number for contacting Printers Plus.
Complainant in its second Additional Submission contends as follows:
Respondent has largely operated Respondent’s IT Business out of the eye of the public. The domain name <printersplus.com> has been parked with GoDaddy.com. As Respondent admitted in Respondent’s Reply, there was no content associated with the <printersplus.com> domain name during 1995 through 2005. Respondent has not presented any evidence that Respondent’s IT Business is commonly known or publicly known as Printers Plus. Respondent’s parking of <printersplus.com> with GoDaddy.com is not a use that is in connection with a bona fide offering of goods and services. Respondent provided false information to GoDaddy.com when Respondent renewed the registration for <printersplus.com> and Respondent has failed to correct such incorrect information. More importantly, when Complainant asked Respondent to provide an explanation of what rights Respondent had to use <printersplus.com>, Respondent failed to do so. Taken together, these actions and the lack of a public face associated with Respondent’s Printers Plus business indicate that Respondent is not and has not ever used <printersplus.com> in connection with Respondent’s IT Business or other bona fide business.
Complainant has rights in the trademark PRINTER’S PLUS.
The Complainant’s mark is identical to the at-issue domain name.
Respondent registered the at-issue domain name in 1996.
Respondent has been commonly known as PRINTERS PLUS.
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.
Respondent has provided a Response that was deficient because a hard copy of the Response was not received before the Response deadline. In such cases a panel may decide whether or not to consider Respondent’s submission or consider the amount of weight to give to the Response because it is not in compliance with ICANN Rule 5. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). In the instant case, the Panel chooses to consider the Response. There has been no showing that Respondent’s failure to file and serve a hard copy of the Response upon the Complainant prejudices the Complainant nor has the Panel been substantially inconvenienced by what amounts to a minor ministerial transgression of the Rules. see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
The Panel finds that Complainant has established rights in the PRINTER’S PLUS mark pursuant to Policy ¶ 4(a)(i). Complainant’s predecessor-in-interest’s registration of the mark with the United States Patent and Trademark Office demonstrates such rights. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also 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.”).
Furthermore, Respondent’s <printersplus.com> domain name is identical to Complainant’s PRINTER’S PLUS mark pursuant to Policy ¶ 4(a)(i). Omitting the apostrophe and adding the generic top-level domain “.com,” the at-issue domain name contains Complainant’s entire trademark. The omission of an aprostophe fails to distinguish the domain name from Complainant’s registered trademark. See Loreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Indeed, the apostrophe as well as other special characters used for punctuation and otherwise, are invalid characters and cannot exist in a domain name. Furthermore, the addition of a gTLD (here “.com”) is generally irrelevant under Policy ¶ 4(a)(i) and is irrelevant in this case. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel also notes that the Respondent does not oppose the Complainant’s position regarding Complainant’s rights in the at-issue domain name or the similarity between the domain name and the Complainant’s mark.
Given the foregoing, pursuant to Policy ¶ 4(a)(i) the at-issue domain name is identical to Complainant’s mark.
Complainant must first make out a prima facie case showing under paragraph 4(a)(ii) of the Policy that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden of production then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complainant contends that it did not authorize Respondent to use the <printersplus.com> domain name. Complainant further contends that Respondent has no trademark rights in the domain name and is not commonly known as PRINTER’S PLUS. Complainant also asserts that Respondent has no legitimate business use for the domain name. Therefore, Complainant has satisfied its light burden.
Paragraph 4(c)(ii) of the Policy commands that a finding that a respondent “[has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights” in the domain name “shall demonstrate Respondent rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).” Emphasis added. Respondent contends that it has been commonly known as PRINTERS PLUS, having carried on a business under that name since 1982. Respondent provides evidence of advertisements throughout that period that promoted Respondent’s business using the name PRINTERS PLUS. Respondent undeniably uses the at-issue domain name for email correspondence. Even Complainant acknowledges a relationship between Respondent and a corporation called Printers Plus, Inc. although Complainant argues that in light of its particular findings the relationship should be disregarded because the corporation’s validity may have predated the domain name’s registration. Complainant further argues that although perhaps once having trademark rights in a mark corresponding to the domain name, Respondent had no such rights at the time of registration and thereafter. However, the plain language of the Policy 4(c)ii does not mandate legal validity nor require the Respondent be “commonly known” at a time contemporaneous with the at-issues domain name’s registration. Nowhere does the Policy creates a requirement that a respondent must not only be known by the at-issue domain name, but must also have active trademark rights in a mark corresponding to the domain name in order to demonstrate its rights or interests in respect of the domain name.
Given the foregoing, the Panel finds, after weighing all the evidence presented on point, that Respondent has been commonly known by the <printersplus.com> domain name pursuant to Policy ¶ 4(c)(ii) and therefore must conclude that Complainant has not carried its burden proof under paragraph 4(a)(ii). See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Because Complainant fails to show that Respondent lacks rights or interest in respect of the domain name, further analysis concerning bad faith registration and use may be dispensed with. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent requests a finding that the Complainant has engaged in reverse domain name hijacking. Even though the Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking against Complainant. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001).
To show reverse domain name hijacking Respondent needs to show that the “Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” see Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). This Respondent does not and cannot do since Complainant demonstrates that the at-issue domain name is confusingly similar to its trademark; makes out a prima facie showing that Respondent has no rights or interest in the at-issue domain name; and presents evidence, albeit not compelling evidence, that the at-issue domain name’s registration and use was in “bad faith”. Therefore, Complainant’s presentation and the circumstances in this case does not rise to anywhere near the extraordinary level that is required for a finding of reverse domain name hijacking. Accordingly, the Panel makes no such a finding.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: April 29, 2009
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