National Arbitration Forum

DECISION

Printingforless.com, Inc. v. Reno Printing for Less

Claim Number: FA1007001336600

PARTIES

Complainant is Printingforless.com, Inc. (“Complainant”), represented by Patchen M. Haggerty, of Dorsey & Whitney LLP, Washington, USA. Respondent is Reno Printing for Less (“Respondent”), Nevada, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <renoprintingforless.com>, registered with Everyones Internet, Ltd. d/b/a Resellone.net.

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.

Timothy D. O’Leary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2010.

On July 23, 2010, Everyones Internet, Ltd. d/b/a Resellone.net confirmed by e-mail to the National Arbitration Forum that the <renoprintingforless.com> domain name is registered with Everyones Internet, Ltd. d/b/a Resellone.net and that the Respondent is the current registrant of the name. Everyones Internet, Ltd. d/b/a Resellone.net has verified that Respondent is bound by the Everyones Internet, Ltd. d/b/a Resellone.net 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 July 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@renoprintingforless.com. Also on July 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A Response was received and determined to be complete on August 19, 2010; however, the Response was received after the deadline to file a Response and therefore is not in compliance with ICANN Supplemental Rule 5a.

On August 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

I. Complainant’s Contentions

A. Identical or Confusingly Similar

The trademarks on which the Complaint is based are as follows:

PRINTINGFORLESS.COM – 3145572 – 09/19/2006

PRINTINGFORLESS – 3022197 – 11/29/2005

PRINTINGFORLESS – 3488404 – 08/19/2008

PRINTINGFORLESS.COM

AMERICA’S PRINT SHOP – 3447847 – 06/17/2008

PRINTFORLESS - 3273021 – 07/31/2007

PRINTFORLESS - 3679659 – 09/08/2009

The PRINTINGFORLESS and PRINTINGFORLESS.COM Marks have been used in connection with commercial printing services since at least 1999 and 2000, respectively, and both still currently used for commercial printing services. Complainant places the Marks on its web site, postcards, letterhead, and other advertising collateral.

Respondent’s Domain Name <RENOPRINTINGFORLESS.COM> wholly incorporates and is confusingly similar to the mark in which the complainant has rights.

The disputed <renoprintingforless.com> domain name is confusingly similar to Complainant’s PRINTINGFORLESS and PRINTINGFORLESS.COM registered trademarks. The domain name fully incorporates the marks while merely adding the geographic term “reno” (and the “.com” generic top-level domain for the PRINTINGFORLESS mark). The addition of a geographic descriptor and a generic top-level domain do not distinguish the <renoprintingforless.com> domain name from Complainant’s PRINTINGFORLESS and PRINTINGFORLESS.COM marks.

B. Rights of Legitimate Interests

The Respondent should be considered as having no Rights or Legitimate Interests in the domain name that is the subject of the Complaint.

Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Due to its extensive use and promotion in connection with commercial printing services for more than 10 years, the marks PRINTINGFORLESS.COM and PRINTINGFORLESS have become associated exclusively with Complainant as its trademarks. Complainant did not authorize Respondent to use the at-issue Domain Name and Respondent is neither affiliated with, nor commonly known as, PrintingforLess or PrintingforLess.com. Therefore, Respondent had no reason to choose this name except to create an impression of an association with or to trade off of the goodwill of the Complainant.

Complainant’s registration for the PRINTINGFOR LESS.COM trademark on September 19, 2006 and Principal Register registration for the PRINTINGFORLESS trademark on August 19, 2008 pre-date Respondent’s registration of the Domain Name on September 22, 2009. Complainant’s Principal Register trademark registrations evidence Complainant’s exclusive rights in the Marks in connection with the services covered by the registrations, and Respondent is not a licensee or subsidiary of Complainant. Respondent has never been authorized to use any of Complainant’s Marks. Further, nothing in the record suggests that Respondent was commonly known by the <renoprintingforless.com> domain name prior to Complaintant’s first use of the Marks.

Respondent’s only connection with the PRINTINGFORLESS.COM Mark has been registration and use of the disputed Domain Name, which does not demonstrate Respondent’s rights under Paragraph 4(a)(ii) of the Policy.

Respondent has not used the disputed Domain Name in connection with a bona fide offering of goods or services. Instead, upon information and belief, Respondent is offering a competitive online commercial printing service in the same space as Complainant. Such use of the PRINTINGFORLESS.COM trademark is commercial and competitive and, as such, does not constitute fair use. Rather, such use infringes upon Complainant’s trademark rights, as discussed in further detail below, and is not a legitimate use of the Domain Name under the Policy.

Respondent is clearly attempting to capitalize on using the Complainant’s Mark as its Domain Name, presumably to gain revenue from Internet users searching for Petitioner’s Printingforless.com site. In fact, Respondent is using the Domain Name for commercial gain to misleadingly divert consumers to its web site. The Domain Name is identical and confusingly similar to Complainant’s PRINTINGFORLESS.COM trademark and domain name, and Respondent capitalizes on that confusing similarity to re-route to its web site commercial Internet traffic likely destined for Complainant’s web site, which is improper and illegal.

C. Registration and Use in Bad Faith

The Domain name should be considered as having been registered in bad faith.

Respondent has registered the Domain Name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s Marks. Prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding is particularly apt where the complainant’s trademark is well-known, as is the case with Complainant’s trademark.

The evidence shows that Respondent registered the Domain Name with the specific intent to cause consumer confusion and to “free ride” on the vast goodwill associated with Complainant’s trademark. Upon information and belief, Respondent registered the Domain Name with full knowledge that it is identical or confusingly similar to Complainant’s trademark in order to re-route to Respondent’s web site commercial Internet traffic likely destined for Complainant’s competitive printingforless.com web site. Therefore, Respondent registered the Domain Name in bad faith.

Not only has Respondent registered the Domain Name in bad faith, it is also using the Domain Name in bad faith to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other online location by creating a likelihood of confusion with the Complainant’s PRINTINGFORLESS.COM mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location. Such conduct is direct evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).

Upon information and belief, Respondent uses the Domain Name in connection with identical services to those of Complainant: an online commercial printing service. Complainant submits that this is the primary reason Respondent registered and uses the Domain Name – to exploit the vast goodwill associated with Complainant’s well-known PRINTINGFORLESS.COM trademark and the Internet traffic intended for Complainant’s web site.

Given the renown of the PRINTINGFORLESS.COM mark in the commercial printing industry, Respondent could not have registered the Domain Name at issue without knowledge of Complainant’s rights in the mark (even a rudimentary Internet search of “printingforless.com” would have led Respondent to Complainant’s web site with the notices of trademark rights), and no use of the Domain Name by Respondent can constitute a bona fide business or commercial use.

II. Respondent’s Contentions

A. Identical or Confusingly Similar

Obviously the name RenoPrintingForLess.com shows we target the local Reno printing market. We do printing here in Reno, hence “RenoPrinting”. We offer discounting printing, hence “forLess”. The general public would read this as “Reno Printing” and then “for less” as a qualifier, as intended. Even our logo emphasizes this. The Google search results show that Reno, Nevada is our target market. The trademarked name “Printing for Less” is weak under trademark law in that it uses one generic term, “printing”, and one descriptive phrase, “for less”, which means there is little legal protection of their trademark because they poorly chose to use a generic term combined with a descriptive term. There are currently 136 domains which contain the phrase “printing for less”, which further supports that this phrase is within the public domain of usage. I requested from Printing For Less a list of which of those 136 domains they owned, but they chose not to provide that information. They claimed earlier that our logo looked like there, but that’s absurd. They based this on the fact that we also used CMYK colors, which most printing companies do, and that we incorporated graphics that look like sheets of paper, which many printing companies do. The logos are very different. The complaintant does not have rights to the “RenoPrinting” part of the name which is the core focus of the name. If anything, the company that owns RenoPrinting.com would have more of a claim than the complaintant does.

B. Rights of Legitimate Interests

We clearly have legitimate interests because we’re operating a Reno printing business which competes on a price basis. This is part of our business strategy as we also operate a graphic design business (Moxie Design Studio) and a website development business (Exyst). The strategy is for customers to find our printing website, then to cross sell them to design and website services. Our graphic design and website development businesses focus on the local Reno market, not a national market. 99% of our customers are here in Reno.

C. Registration and Use in Bad Faith

There’s certainly no bad faith, it’s just the city name combined with using generic terms to describe what we offer, nothing more. We see this as RENOPRINTINGforless.com, with the focus on offering printing in the Reno area. We did specifically want the terms “Reno” and “printing” together for SEO purposes. If we had acted in bad faith we would have tried to optimize the site with the phrase “printing for less”, which we did not do anywhere; we always optimized for “reno” and “printing”. In order for it to be bad faith, we would have to not be running a printing company here in the Reno area either.

Preliminary Issue: Deficient Response

Respondent’s Response was received in electronic copy after the Response deadline, and no hard copy was received prior to the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.

The Panel, in its discretion, chooses to accept and consider this Response. 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).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

FINDINGS

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

I find the issues on this element in favor of Complainant.

Complainant asserts rights in the PRINTINGFORLESS.COM and related marks by virtue of its multiple trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”):

Mark Reg. No. Date Issued

PRINTINGFORLESS 3,022,197 November 29, 2005;

PRINTINGFORLESS.COM 3,145,572 September 19, 2006;

PRINTFORLESS 3,273,021 July 31, 2007;

PRINTINGFORLESS 3,488,404 August 19, 2008; and

PRINTFORLESS 3,679,659 September 8, 2009.

The Panel finds that these USPTO trademark registrations are sufficient evidence to show Complainant’s rights in the PRINTINGFORLESS.COM mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).

Complainant argues that Respondent’s <renoprintingforless.com> domain name is confusingly similar to Complainant’s PRINTINGFORLESS.COM mark because the disputed domain name consists of Complainant’s entire mark combined only with the geographic term “Reno.” The Panel finds that the simple addition of a geographic term to Complainant’s mark is inadequate to prevent confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

I find the issues on this element in favor of Complainant.

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

Complainant alleges that it did not authorize Respondent to use Complainant’s mark in the <renoprintingforless.com> domain name and that Respondent is not affiliated with Complainant. Complainant also argues that Respondent is not commonly known by “Printingforless” or “Printingforless.com.” The WHOIS information for the disputed domain name lists the registrant as “Reno Printing for Less.” Despite the fact that the WHOIS information appears to indicate that Respondent is commonly known by the disputed domain name, without other supporting evidence the Panel finds that Respondent is not commonly known by the disputed domain name and does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

Complainant argues that Respondent is not using the <renoprintingforless.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant contends that Respondent is using the disputed domain name comprised of Complainant’s mark to misleadingly divert Complainant’s customers to Respondent’s own website where it offers competing online commercial printing services. The Panel finds that using a domain name which appropriates Complainant’s mark to divert Internet users to Respondent’s own competing website is not consistent with Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

I find the issues on this element in favor of Complainant.

Complainant asserts that Respondent’s website resolving from the <renoprintingforless.com> domain name competes with Complainant by offering similar online commercial printing services. Complainant argues that Respondent’s promotion of competitive services under Complainant’s mark disrupts Complainant’s business. The Panel finds that Respondent’s unauthorized use of Complainant’s PRINTINGFORLESS.COM mark to disrupt Complainant’s business by creating competition demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

Complainant contends that Respondent registered the <renoprintingforless.com> domain name in order to capitalize on the goodwill of Complainant’s mark and create consumer confusion. Complainant alleges that Respondent intentionally registered the name appropriating Complainant’s mark in order to reroute Complainant’s intending customers to Respondent’s own website for Respondent’s commercial gain. The Panel finds that Respondent’s efforts to increase profits for its business by creating consumer confusion and using Complainant’s mark indicate bad faith registration and use according 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).

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 <renoprintingforless.com> domain name be TRANSFERRED from Respondent to Complainant.

Timothy D. O’Leary, Panelist
Dated: September 7, 2010

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