PrintingForLess.com, Inc. v. Printinginabox.com
Claim Number: FA1101001366298
Complainant is PrintingForLess.com, Inc. (“Complainant”), represented by Dan Rice of PrintingForLess.com, Inc., Montana, USA. Respondent is Printinginabox.com (“Respondent”), represented by Thomas E. Toner of Innovus Law Group, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wholesaleprintingforless.com>, <wholesaleprinting4less.com>, <printfastforless.com>, <buyprintforless.com>, <youprintforless.com>, <prints-4-less.com>, <printfourless.net>, <printing-forless.com>, and <printing4less.biz>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Sir Ian Barker, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2011; the National Arbitration Forum received payment on January 6, 2011.
On January 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wholesaleprintingforless.com>, <wholesaleprinting4less.com>, <printfastforless.com>, <buyprintforless.com>, <youprintforless.com>, <prints-4-less.com>, <printfourless.net>, <printing-forless.com>, and <printing4less.biz> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2011 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@wholesaleprintingforless.com, postmaster@wholesaleprinting4less.com, postmaster@printfastforless.com, postmaster@buyprintforless.com, postmaster@youprintforless.com, postmaster@prints-4-less.com, postmaster@printfourless.net, postmaster@printing-forless.com, and postmaster@printing4less.biz. Also on January 14, 2011, 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 timely Response was received and determined to be complete on February 4, 2011.
On February 8, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant has provided commercial printing services since 1999 under the marks PRINTINGFORLESS, PRINTINGFORLESS.COM and PRINTFOR LESS. It owns several registered trademarks for all of the above marks as well as one for PRINTINGFORLESS.COM AMERICA’S PRINT SHOP.
The dates of registration of these trademarks vary from 2005 to 2009 and the first use dates range from 1999 to 2005.
The Complainant’s marks are used widely in its promotional materials and have appeared in national publications. It has engaged in extensive marketing and advertising of its registered marks. Some of its marks were initially on the supplemental register with PRINTINGFORLESS.COM being the first to be so registered on October 4, 1999.
The disputed domain names are confusingly similar to the Complainant’s registered marks as can be seen from the following table, which also notes the registration dates of each disputed domain name.
|
Disputed Domain Name |
Domain Registration Date |
Complainant Trademark |
Trademark Registration Date |
Trademark 1st Use Date |
|
<wholesaleprinting4less.com> |
02/28/2009 |
printingforless.com printingforless |
09/19/2006 11/09/2005 |
01/09/2000 03/31/1999 |
|
<wholesaleprinting4less.com> |
03/02/2009 |
printingforless.com printingforless |
09/19/2006 11/09/2005 |
01/09/2000 03/31/1999 |
|
<printfastforless.com |
06/11/2010 |
printforless |
07/31/2007 |
12/09/2003 |
|
<buyprintforless.com> |
01/17/2007 |
printforless |
07/31/2007 |
12/09/2003 |
|
<youprintforless.com> |
01/17/2007 |
printforless |
07/31/2007 |
12/09/2003 |
|
<prints-4-less.com> |
02/01/2007 |
printforless |
07/31/2007 |
12/09/2003 |
|
<printfourless.net> |
04/17/2008 |
printforless |
07/31/2007 |
12/09/2003 |
|
<printing-forless.com> |
04/18/2008 |
printingforless.com printingforless |
09/19/2006 11/09/2005 |
01/09/2000 03/31/1999 |
|
<printing4less.biz> |
04/18/2008 |
printingforless.com printingforless |
09/19/2006 11/09/2005 |
01/09/2000 03/31/1999 |
The Complainant gave the Respondent no right to use its registered trademarks in any domain name. The Respondent is not known by any of the disputed domain names. The Respondent is engaged in a competitive business with the Complainant and the disputed domain names are currently for sale as an inducement for others to enter into on-line printing.
The Respondent is attempting to capitalise on the Complainant’s marks by the use of the disputed domain names, presumably to gain revenue from Internet users searching for the Complainant’s website, <PrintingForLess.com>. The Respondent promotes goods and services in competition with the Complainant on its website.
The Respondent registered and is using the disputed domain names in bad faith in an attempt to unfairly capitalise on the goodwill of the Complainant’s marks. It is unlikely that the disputed domain names would have been selected for registration without the Respondent’s knowledge of the reputation of the Complainant’s marks. The Respondent registered the disputed domain names in order to cause consumer confusion and to “free ride” on the Complainant’s goodwill in its marks.
The Respondent is using the disputed domain names intentionally to attract Internet users for commercial gain by creating the likelihood of confusion between the disputed domain names and the Complainant’s marks. They imply some sponsorship by, affiliation with, or endorsement by the Complainant of the Respondent’s website.
The Respondent uses the disputed domain names in connection with identical services to the Complainant’s and is exploiting the Complainant’s goodwill. Given the renown of the Complainant’s marks in the commercial printing industry, the Respondent could not have registered the disputed domain names in ignorance of the Complainant’s rights. Even a rudimentary Internet search of “printforless” would have led the Respondent to the Complainant’s website with notice of the Complainant’s trademark rights.
B. Respondent
The Complainant has offered no proof of any of the three elements required to be proved under Para. 4(a) of the Policy. Although the disputed domain names and the Complainant’s trademarks have similar elements, even small differences in descriptive terms can be sufficient to distinguish the two.
Two of the cited trademark references (which ones were not stated) are on the supplemental trademark register which confers no rights. Each mark was registered under section 2(f) which is an admission that a mark is not inherently distinctive. Therefore, the Complainant fails under Para. 4(a)(i) of the Policy.
Far from being associated exclusively with the Complainant the term “printing for less” is commonly used. A cursory search shows numerous pages using the term which are associated with neither the Complainant nor the Respondent. The term is generic and the Complainant has not proved that the Respondent lacks rights in the disputed domain name within the meaning of Para. 4(a)(ii) of the Policy. The Complainant has provided no detail of its extensive use and promotions over 10 years.
The Respondent qualifies under Para. 4 (c)(i) of the Policy in that, before notice of any dispute, it had used the disputed domain names in connection with a bona fide offering of goods and services.
The Respondent offers bona fide printing services. It develops reseller sites for customers and tracks, processes and fulfils printing orders.
The Complainant has failed to prove bad faith registration and use. The Policy is not designed as a method of resolving all domain name disputes, but rather it was designed to prevent a particular type of abusive cybersquatting. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001).
The Complainant has not proved that its registered trademarks were so famous at the time of registration of the disputed domain names that the Respondent must have known of them. The Complainant has failed to show how the Respondent is obtaining an unfair commercial advantage. Nor has it shown a likelihood of actual confusion. The Complainant has not established any pattern of cybersquatting by the Respondent.
1. The disputed domain names are all confusingly similar to registered trademarks in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name.
3. The Respondent registered and is using the disputed domain names in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
It is axiomatic that proof that it has trademark registrations discharges a Complainant’s onus under Paragraph 4(a)(i) of the Policy, provided the disputed domain names are confusingly similar to those marks.
The disputed domain names incorporate different versions of the Complainant’s mark. For example, the word “for” is replaced by the numeral “4” in one disputed domain name. The generic word “wholesale” is attached to the trademark expression “printingforless.com”. The addition of generic words does not effect the finding of confusing similarity. Nor do minor changes such as “four” and “4” for the word “for”.
Inspection of the table reproduced earlier shows that each of the disputed domain names is confusingly similar to one or all of the Complainant’s registered trademarks.
The fact that the disputed domain names are comprised of common, generic or descriptive terms is not a defence where the Complainant has registered trademarks. The Complainant has only to prove that it has rights in a mark and whether the disputed domain name is identical or confusingly similar to that mark.
The Respondent’s comments about the supplemental register fail for want of specificity. The Complainant has produced copies of sufficient relevant trademarks which are not in the supplemental register. The disputed domain names are confusingly similar to these marks.
The Panel sees no relevance in the Respondent’s assertion that the trademarks were registered under Section 2(f). The Respondent’s submissions did not elaborate on this contention.
Accordingly, the Complainant has discharged the onus under Paragraph 4(a)(i) of the Policy.
Because the Complainant gave the Respondent no right to use its trademarks in a dispute domain name, the onus shifts to the Respondent to show that it comes within one of the situations covered by Paragraph 4(c) of the Policy. The only one possibly applicable is Paragraph 4(c)(i). The Respondent has therefore to show that before notice of any dispute, it made a bona fide offering of goods or services by use of the disputed domain names.
The Complainant argues that the Respondent uses the disputed domain names in an attempt to enable others to enter a competitive relationship with the Complainant and to offer commercial printing services in competition with the Complainant’s printing business. The Complainant submits screen-shots of the websites resolving from the <printing-forless.com> and <printing4less.biz> disputed domain names. The Complainant claims that these sites are representative of the websites resolving from all of the disputed domain names. The Complainant claims that the screen captures show websites that provide various printing services and printed products that compete with the Complainant’s printing services and products.
The enquiry under this head of Paragraph 4(a) of the Policy must necessarily coalesce with that under Paragraph 4(a)(iii) – registration and use in bad faith. The enquiry must focus on the good faith of the Respondent at the time the first disputed domain name was registered, i.e. January 17, 2007.
If the registration was in good faith, then the Respondent’s activities could come within Paragraph 4(a)(ii) of the Policy.
The difficulty for the Complainant in this case is that there is little evidence to show the fame of its trademarks at the time of the registration of the first disputed domain names in 2007. Frequently, in cases under the Policy, the disputed domain name has been identical or confusingly similar to a product which is so well-known that the Panel can take judicial notice of its notoriety (e.g. Coca-Cola, Veve Clicquot). Alternatively, the Complainant in its evidence can demonstrate the extent, intensity and outreach of its marketing and of its use of its trademarks. Frequently, information such as turnovers, numbers of transactions, advertising budgets and extent of national coverage is provided.
Here, all the Complainant has done is to state that it has used the mark or marks since 1999, that the marks have appeared on its website and advertising, that the marks have appeared in well-known publications (copies of such appearances not supplied), and that it “… has engaged in extensive marketing and advertising with regard to the marks in question”. (no detail given)
A complainant has to prove both bad faith registration and bad faith use. Whatever may now be the situation about bad faith use, in order for the Complainant to succeed, the Panel must be able to infer bad faith registration.
Constructive notice of a complainant’s trademark does not have a place under the Policy, according to some panel decisions. See The Way Int’l Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003). However, there are some decisions which indicate that where both parties are resident in the United States and the Complainant has registered U.S. trademarks which are easily searched on-line, the prohibition against constructive notice should be relaxed. See Overview of WIPO Panel Views on Selected UDRP Decisions at para. 3.4. In the present case, a trademark search and, indeed, just a reference to the Complainant’s website would have indicated to the Respondent the Complainant’s prior use of the term “Printing for Less”.
In the Panel’s view, the disputed domain names by their very quantity and close similarity to the Complainant’s trademarks demonstrate the unlikelihood that the Respondent registered them in ignorance of the Complainant, its marks and its activities. The Complainant had been operating for some eight years prior to the registration of the disputed domain names.
However, both parties operate in a relatively specialized area – the on-line sale of printing – and although the extent of the Complainant’s business has not been fully indicated, the facts that it had been in business since 1999 and that its operations had appeared in publications distributed nationwide, allow the Panel to infer that registration of the disputed domain names occurred with the knowledge by the Respondent of the Complainant’s business.
Moreover, the Respondent’s use of the disputed domain names is commercial and competitive. The Respondent does not use the disputed domain names to make a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate non-commercial or fair use under Policy ¶4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003).
Accordingly, the Complainant succeeds under Paragraph 4(a)(ii) of the Policy because the Respondent has not proved the defence under Paragraph 4(c)(i) of the Policy. The Complainant has also proved bad faith registration under Paragraph 4(a)(iii).
Bad faith use can be inferred because the Internet user, accessing the website of any of the disputed domain names, would justifiably think that the products on offer through the websites could be linked to the Complainant. The Respondent is “cashing in” on the Complainant’s goodwill in the printing business and is competing with the Complainant. The fact that the Respondent is likely to divert potential customers from the Complainant by virtue of its operation is evidence of both bad faith registration and use. See Policy ¶ 4(a)(iii).
Furthermore, the Respondent attempts to attract Internet users for commercial gain to its websites by creating a likelihood of confusion. See Policy ¶ 4(b)(iv); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the domain names <wholesaleprintingforless.com>,
<wholesaleprinting4less.com>, <printfastforless.com>,
<buyprintforless.com>, <youprintforless.com>,
<prints-4-less.com>, <printfourless.net>, <printing-forless.com>,
and <printing4less.biz> be TRANSFERRED from the Respondent
to the Complainant.
Hon. Sir Ian Barker Panelist
Dated: February 22, 2011
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