Therma-Cote, Inc. v. OU Computernik c/o Domain, Admin
Claim Number: FA0904001257229
Complainant is Therma-Cote, Inc. (“Complainant”), represented by Jason D. Rosenberg, of Alston & Bird, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermacoat.com>, registered with Moniker Online Services, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2009.
On April 10, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <thermacoat.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 11, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 21, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on April 24, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National Arbitration Forum on April 27, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On May 1, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
According to the Complainant, it is for-profit corporation which engineers, manufacturers, and distributes scientifically advanced insulating ceramic coating. Development of these products began approximately twenty-five years ago, when the Complainant first offered an insulating ceramic coating product under the THERMA-COTE brand name.
The Complainant states that it has
invested substantial resources advertising its insulating ceramic coating under the THERMA-COTE mark and it is
the registrant of the domain name <www.thermacote.com>. The Complainant owns a
The Complainant alleges that the Respondent OU is an Estonian company controlled by an individual: Gunther Veidenberg. Mr Veidenberg uses this company for various cybersquatting ventures. For example, a Google search of the Respondent indicates that it owns over 3,000 domain names.
According to the Complainant, the website at the disputed domain name is used to provide click-through advertising links to a number of products and services which have no relation to thermal insulation or coating. However, in May 2008, the website also contained links to “Ceramic Coatings.” The Respondent makes money each time an Internet user follows a link from the Domain Name to one of the third-party sites, or when Internet users who follow such links purchase goods or services from these sites.
The Complainant states that the disputed domain name is unquestionably confusingly similar to its THERMA-COTE mark as it incorporates the entire trademark, only changing the spelling of the word “cote” to an obvious alternative spelling, “coat,” and dropping the hyphen. The Complainant cites numerous UDRP cases to support this position.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because the “use of a domain name confusingly similar to a registered trademark to divert Internet users to a commercial website is neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).” See InfoSpace, Inc. v. Smith, FA 245959 (Nat. Arb. Forum May 21, 2004); see also Amazon.com, Inc. v. Applied Bus. Solutions, D2003-0309 (WIPO July 2, 2003). The Respondent registered the disputed domain name after the Complainant had used the mark THERMA-COTE in association with its services for almost two decades. The disputed domain name is confusingly similar to the THERMA-COTE mark and is being used without authorization to attract users to the Respondent’s website, where the Respondent provides links to other third-party websites that offer services that directly compete with the Complainant’s products and services and, in addition, services such as cures for premature ejaculation, mail order brides, dating services for cheating wives, etc. The Complainant cites other UDRP precedents to support its position.
Further, says the Complainant, the Respondent registered and is using the disputed domain name in bad faith, because it has attempted to attract, for commercial gain, Internet users to its and other on-line locations by creating confusion with the Complainant’s mark. Where a respondent registers “Domain Names to use them to attract Internet users to its commercial web site based on confusion with Complainant’s mark,” such “conduct is evidence of bad faith registration and use under Paragraph 4(b)(iv) of the Policy.” Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001). Here, confusion with the THERMA-COTE mark and the disputed domain name is a given – the disputed domain name is an obvious misspelling of the mark and the two are audibly inseparable. By creating such likely confusion, the Respondent has demonstrated its bad faith. The Respondent’s actions are clearly designed to generate profit for itself through affiliate programs by taking advantage of the confusion of Internet users. The Respondent’s actions thus constitute a textbook case of bad faith registration and use under ICANN Policy ¶ 4(b)(iv). The Complainant cites numerous UDRP cases to support this position.
According to the Complainant, the Respondent is a known cybersquatter, three times having been found to have registered and used a domain name in bad faith, particularly to “divert Internet users to other commercial sites by the use of domain names identical or similar to a complainant’s trademark.”
According to the Respondent, the disputed domain name is not confusingly similar to the THERMA-COTE mark. Indeed, the word “cote” means something like a barn, a place for holding domestic animals. On the other hand, “coat” means something you wear when it is raining outside. The word “therma” refers to something warm, something against bad weather conditions. So “thermacoat” is something to wear, something against bad weather conditions, while “therma-cote” means then something like “barn against bad weather conditions.” Further, the US Patent and Trademark office database contains numerous trademarks that contain the word “therma”, for example THERMA-MAX, THERMAPROOF, THERMA-RAY, THERMA-PLUSH and so on.
Further, the Respondent states that it doesn’t see how people can mix up the two words coat and cote. They are spelled totally differently. Also “coat” and “cote” are not simple typos, like maybe “coet”or “cteo” would be with respect to “cote”.
Also, states the Respondent, the Complainant does not own the trademark for THERMACOAT. That mark is owned by a different company since February 2009.
According to the Respondent, it registered the disputed domain name on July 22, 2005, well before the Complainant registered its trademark on October 16, 2007. Further, the Complainant’s rights to the mark, for the purposes of the Policy, do not precede the date of registration. The Respondent cites a UDRP case to support this position.
The Respondent states that it is in the domain name business since 2002. It registers and holds domain names for future development for itself and its clients. It has around 6,000 domain names. Of those 6,000, only three have been transferred as a result of proceedings under the Policy, so it is not correct to state that the Respondent is a cybersquatter.
The Respondent points out that there is nothing illegitimate about
The Respondent maintains that it registered the disputed domain name because of its appeal as a dictionary term or commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant’s trademark in mind. The Respondent cites UDRP cases to support this position.
The Respondent disputes the evidence presented by the Complainant according to which the website at the disputed domain names contains links to “Ceramic Coatings.” According to the Respondent, the page presented by the Complainant was created by the Complainant when it searched for “ceramic coatings” on the Respondent’s website. There are no direct links “Ceramic Coatings” on the Respondent’s website.
The Respondent requests the Panel to find Reverse Domain Name Hijacking.
C. Additional Submissions
In its Additional Submission, the Complainant reiterates that the disputed domain name is confusingly similar to its mark.
Further, it states that no trademark has been registered for the string THERMACOAT. An application has indeed been filed for that mark, but the Complainant has filed an opposition to the mark.
According to the Complainant, it is well-settled under the Policy that registering and holding domain names that incorporate the valuable trademarks of others is not a legitimate business. The Respondent appears to claim that it may have a legitimate interest in the Domain Name because other panels have held that it is appropriate to register and use domain names that consist of general terms, such as “pants” and “chairs.” Any such cases are inapposite, however, because there is no dispute that neither THERMA-COTE nor the confusingly similar THERMACOAT are generic or descriptive terms for anything. As set out in the Complaint, THERMA-COTE is a federally registered trademark for insulating coatings, and bears no resemblance to generic “dictionary words” like “dress” or “webdesign” as cited by the Respondent.
The Complainant states that the Respondent registered the disputed domain name after the Complainant applied for its mark. Indeed, the Respondent admittedly registered the Domain Name less than 2 months after the Complainant filed its federal trademark application. As of that date, the Respondent was on notice of the Complainant’s longstanding rights in the THERMA-COTE mark. Indeed, it strains credulity to suggest that the Respondent registered the disputed domain name, so soon after the Complainant’s application for an almost identical mark, without knowledge of the same.
The Complainant affirms that the web page it presented as evidence was authentic and was a screenshot of the Respondent’s website.
The Complainant denies that it engaged in Reverse Domain Name Hijacking.
In its Additional Submission, the Respondent states that, although it’s native language is not English, even it can see that THERMACOAT and THERMA-COTE are not confusingly similar.
Referring to UDRP cases cited by the Complainant, the Respondent provides the following examples:
Domain Name Trademark
Dukindoughnuts Dunkin’ Donuts
According to the Respondent, it cannot seriously be argued that these three example are comparable. If one reads the examples out loud to oneself, it cannot be said that THERMACOAT and THERMA-COTE sound as similar as READYTABS and REDITABS or DUNKINDOUGHNUTS and DUNKIN’ DONUTS.
The Respondent states that the Complainant filed its opposition to the application to register the mark THERMACOAT one day after it received the Response, and that the said opposition was filed too late and is thus invalid.
According to the Respondent, it is well established under the Policy that placing click-through advertising links on a parked domain is a legitimate business model that is used by hundreds of thousands of people world-wide. It cites UDRP cases to support this position.
The Respondent reiterates its allegation to the effect that the web page presented as evidence by the Complainant does not correctly represent its web site, which never contained direct links to “Ceramic Coatings.”
The Respondent reiterates its request that the Panel find Reverse Domain Name Hijacking.
The Complainant has used the mark THERMA-COTE
in commerce since 1985 and the mark is registered in the
The disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s mark.
The Respondent uses the disputed domain name to operate a website providing click-through advertising to a wide variety of products and services, most of which have no relation to thermal coating or coats. The Respondent derives revenue from that click-through advertising.
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.
The Respondent alleges that the mark THERMACOAT is not owned by the Complainant, but by another company. The Complainant states that it has opposed registration of the mark THERMACOAT. The Respondent disputes the validity of the Complainant’s opposition.
Whether or not a third party owns the mark THERMACOAT (or any other mark) is not relevant for the present proceedings. All that is relevant here is that the Complainant undoubtedly owns the mark TERMA-COTE, and that its rights to that mark date back to 1985, well before the registration of the disputed domain name. Contrary to what the Respondent argues, the Panel holds that the Complainant’s rights to its mark precede its registration of the mark, because the mark was used in commerce since 1985, and the Complainant thus had common law trademark rights since that time.
In any case, the Complainant’s rights date back at least to the date of registration of the trademark, which precedes the date of registration of the disputed domain name. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
According to the Respondent, who is not a native English speaker, it cannot be said that THERMACOAT and THERMA-COTE sound as similar as READYTABS and REDITABS or DUNKINDOUGHNUTS and DUNKIN’ DONUTS.
The Panelist, who is a native speaker of English (or at least of the American version of that language), does find that the pronunciations of “coat” and “cote” are identical. Further, according to <dictionary.reference.com> both “coat” and “cote” are pronounced “koht.” According to < merriam-webster.com/dictionary/> both “coat” and “cote” are pronounced “kōt.”
Thus there can be no doubt that “coat” and “cote” are homonyms. According to Wikipedia, a homophone is a word that is pronounced the same as another word but differs in meaning. The words may be spelled the same, such as rose (flower) and rose (past tense of "rise"), or differently, such as carat, caret, and carrot, or to, two and too.
As the Complainant correctly points out, it is well established precedent under the Policy that a domain name is confusingly similar to a trademark if it is a homonym of the mark.
See Backstreet Prods., Inc. v. Zuccarini, D2001-0654 (WIPO Aug. 24, 2001) (finding BACKSTREETBOYZ.COM confusingly similar to BACKSTREET BOYS); see also Bazarchic SA v. Belize Domain WHOIS Service Lt, D2008-0839 (WIPO Aug. 4, 2008) (finding BAZARCHIC found to be confusingly similarly to BAZAR CHIK); see also Xerox Corp. v. Stonybrook Inv., Ltd, D2001-0380 (WIPO May 22, 2001) (finding the disputed domain name, <zerox.com>, to be confusingly similar to the trademark XEROX, stating “…an average internet user… might accidentally spell it with the letter Z instead of X at the beginning of the word, merely because of the way the Complainant’s trademark is pronounced”); see also Schering Corp. v. NGS Enter., LTD., FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (finding READYTABS.COM to be confusingly similar to REDITABS mark as a phonetic equivalent).
Thus the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s mark.
The Respondent maintains that it registered the disputed domain name because of its appeal as a dictionary term or commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, available at <wipo.int/amc/en/domains/search/overview/index.html>.
Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name "apple" if it uses it for a site for apples but not if the site is aimed at selling computers or pornography).
However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.
It can be argued that the term “thermacoat” is a description of thermal coating products or services. However, this does not help the Respondent, because the Respondent freely admits that the bulk of its website concerns products and services that have nothing to do with thermal coatings, or with coats. Indeed, the Respondent denies that its website ever contained direct references to ceramic coatings.
The disputed domain name is clearly being used to refer to products and services that have no relation to the name itself. Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Whites Cove Corp. v. Lobster City, No. FA 206344 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet traffic to the website of a direct competitor demonstrates neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)”); see also F. Hoffman-La Roche AG v. Spiral Matrix, D2006-0326 (WIPO May 10, 2006) (finding neither right nor legitimate interest in a domain name, nor a bona fide offering of goods or services, where Respondent used a confusingly similar domain name to provide sponsored links and pop-ups to other websites).
As the Complainant rightly says, the evidence shows that the Respondent has created a likelihood of confusion as to Complainant’s affiliation with, or sponsorship of, the disputed domain name and resolving web page due to the presence of click-through advertisements on the resolving web page.
Further, a search in < archive.org> reveals that the disputed domain name was used, prior to its acquisition by the Respondent, to market products and services under the mark THERMACOAT, which products and services directly compete with the Complainant’s products and services.
Thus the Panel finds that the Respondent has intentionally created such a likelihood of confusion for commercial gain, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Sanofi-aventis, A. Nattermann & Cie GmbH v. OU Computernik, No. D2007-0073 (WIPO Mar. 5, 2007) (use of a “trademark to attract Internet user’s to the website to which the domain name resolves and to other websites by hyperlink – which offer goods and services quite unconnected with that trademark” constituted bad faith); see also Credit Industriel et Commercial S.A. v. Spiral Matrix, D2006-0271 (WIPO Apr. 23, 2006) (finding reasonable inference of revenue generated by Spiral Matrix based on diversion of Internet users, by sponsored links, to third party web sites); see also Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin D2002-0635 (WIPO Sep. 6, 2002).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The Respondent’s claim of Reverse Domain Name Hijacking is dismissed.
Accordingly, it is Ordered that the <thermacoat.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 10, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum