Filmtools, Inc. v CPM / Steven Moore
Claim Number: FA1102001372817
Complainant is Filmtools, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is CPM / Steven Moore (“Respondent”), represented by John T. Whealan of The Law Office of John T. Whelan, LLC, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cpmfilmtools.com>, registered with VOLUSION, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 14, 2011.
On February 23, 2011, VOLUSION, INC. confirmed by e-mail to the National Arbitration Forum that the <cpmfilmtools.com> domain name is registered with VOLUSION, INC. and that Respondent is the current registrant of the name. VOLUSION, INC. has verified that Respondent is bound by the VOLUSION, 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 February 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@cpmfilmtools.com. Also on February 28, 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 March 18, 2011.
A timely Additional Submission was received from Complainant on March 18, 2011.
On March 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the registered owner of United States Trademark Registration No. 2,923,148 for FILMTOOLS. The certificate of registration is attached to the Complaint. Complainant has common law service mark rights in the FILMTOOLS mark that predate the registration of the subject domain name in September 2009. Attached to the Complaint, Complainant has exhibited several news articles and press releases showing worldwide use of the FILMTOOLS brand and name for several years prior to the registration of <cpmfilmtools.com> by Respondent.
Complainant submits that Respondent is engaged in cybersquatting and has registered the subject domain name, which is virtually identical to Complainant’s registered FILMTOOLS mark, and uses the disputed domain name to divert consumers looking for Complaint’s goods and services to a commercial website which hosts retail services for directly competing goods.
Complainant commenced business in 1994 as a California company engaging in retail store services and online ordering in the field of lighting equipment, carts, camera support gear, camera filters, video tape, still film, hand tools, gaffer tape, camera mounts, sync slates and other equipment related to the film and video industries. Since as early as 1998, Complainant has operated a website accessible at the domain name filmtools.com that provides the same services.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s mark. Complainant submits that all that is required to prove confusing similarity is to show that the disputed domain name misappropriates sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark. Citing Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
Complainant submits that the disputed domain name <cpmfilmtools.com> is virtually identical and confusingly similar to Complainant’s registered FILMTOOLS mark. The disputed domain name features Complainant’s entire FILMTOOLS mark and adds the term “CPM.” The addition of the three letters “CPM” fails to sufficiently distinguish Respondent’s domain name from the Complainant’s marks pursuant to Policy ¶ 4(a)(i), even if those three letters constitute the name of Respondent's business. See Cable News Network LP, LLP v. Elie Khouri, FA117876 (Nat. Arb. Forum Dec. 16, 2002) (finding confusing similarity where "merely appending a 2 or 3 letter group . . . to the CNN Mark to form each of these 12 disputed domain names fails to sufficiently distinguish the resulting domain name from the CNN Mark."); Toilets.com v. Rons Porta Johns, D2007-0952 (WIPO Aug. 27, 2007) (finding confusing similarity between ronsportajohns.com and Complainant's mark PORTA-JOHN, where Respondent's business was named RON'S PORTA JOHN); see also The Cheesecake Factory Inc. v. Say Cheesecake, D2005-0766 (WIPO Sep. 12, 2005) (finding confusing similarity between saycheesecake.com and Complainant's mark THE CHEESECAKE FACTORY, where Respondent's business was named SAY CHEESECAKE); Lockheed Martin Corp. v. Deborah Teramani, D2004-0836 (WIPO Dec. 1, 2004) (finding confusing similarity where "prepended or appended letter group (specifically 'lil', 'aa', 'so')" to Complainant's mark are "minor variations [that] are each insufficient in and of itself, when used in forming a domain name that results from modifying a mark, to confer the requisite and sufficient distinctiveness on that name which would adequately abate concomitant user confusion otherwise arising from use of that name."); see also Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding confusing similarity where "the minor difference in spelling . . . as well as appending the 'cc' letter group are insufficient to convey sufficient distinctiveness to the domain name so as to avoid confusion of Internet users."); see also America Online, Inc. v. David Nasi, FA 102525 (Nat. Arb. Forum Feb. 1, 2002) (holding that "domain names are merely a combination of Complainant's marks with SONY, MICROSOFT, or MSN" and are therefore confusingly similar to Complainant's AOL mark).
Complainant further submits that the ".com" portion of the contested domain name is irrelevant to the confusingly similar analysis. See MPL Communications Ltd v. Denny Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the domain name "paulmccartney.com" was confusingly similar to the famous name Paul McCartney); see also Yanni Management, Inc. v. Progressive Industries, FA 95063 (Nat. Arb. Forum Aug. 2, 2000) (finding that the domain name "yanni.com" was identical to Complainant's YANNI trademark and therefore was confusingly similar); see also CMG Worldwide, Inc. v. Alessandro Bottai, FA 94661 (Nat. Arb. Forum May 31, 2000) (finding confusing similarity based on a finding that the domain name "chuckberry.com" is identical to the CHUCK BERRY trademark). Thus, the addition of ".com" is insufficient to avoid a finding of confusing similarity between the disputed domain name and the FILMTOOLS mark.
Complainant submits that accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain name is confusingly similar to Complainant’s trademarks.
Complainant submits that Respondent has no rights or legitimate interest in the <cpmfilmtools.com> domain name and argues that under the Policy, once the Complainant asserts a prima facie case against the Respondent, the Respondent bears the burden of proving that it has rights or legitimate interests in the contested domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant states that it has not licensed Respondent to use its mark, nor does Respondent have any legal relationship with Complainant that would entitle it to use Complainant’s mark. Respondent has no legitimate reason for using the FILMTOOLS service mark as a dominant part of its domain name.
Complainant submits that the Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the contested domain name. For instance, one circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in Policy ¶ 4(c)(i). This paragraph describes the situation where “before any notice to respondent of the dispute,” respondent uses or prepares to use “the domain name in connection with a bona fide offering of goods or services.” However, when the page offers competing goods to those offered under the Complainant’s mark, the argument that such use is a bona fide offering of goods and services is even weaker. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see also 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).”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Accordingly, the circumstances described in Policy ¶ 4(c)(i) are not present.
Complainant refers to another circumstance that would support a respondent’s claim of rights or legitimate interest is detailed in Policy ¶ 4(c)(iii) that states:
you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant argues that with respect to these circumstances, Respondent is making a plainly commercial use of the contested domain name that is confusingly similar to Complainant’s marks. Screen captures showing Respondent's use of the disputed domain name are attached as an exhibit to the Complaint, which demonstrate that the disputed domain name has been used to host a commercial retail site for goods and services similar to those sold and offered by Complainant. Accordingly the circumstances described in Policy ¶ 4(c)(iii) are also not present.
Complainant submits that in view of its well-known service mark and its established trademark rights, this commercial use by Respondent violates Complainant’s rights under Section 43(a) of the Lanham Act. Respondent’s use of the domain name <cpmfilmtools.com> is “on or in connection with any goods or services,” and Respondent “uses in commerce any word, term, [or] name . . . , or any combination thereof . . . , which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” Lanham Act Section 43, 15 U.S.C. §1125; See Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum, Dec. 2, 2003) (finding that use of someone else’s well-known business name undermines any claims to a legitimate interest). It is well settled that misdirecting Internet traffic by using another party’s trademark is unlawful. See Brookfield Communs., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). The illegal registration and use of a domain name reflecting another’s trademark is not a protected use under the Policy. See Viacom International, Inc. et al. v. TVdot.net, Inc., D200-1253 (WIPO, January 16, 2001) (“[The] illegal use of another’s trademark cannot be considered a bona fide use.”) Accordingly, under the laws of the United States and guiding Policy decisions, Respondent cannot show any legitimate interest in the contested domain name.
Complainant submits that the disputed domain name has been registered and is being used in bad faith. Complainant argues that the Policy expressly details specific circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Policy ¶ 4(b). Any one of these express circumstances is sufficient to establish bad faith. A first circumstance applicable here is detailed in Policy ¶ 4(b)(iv), which states that
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant argues that it is well settled that the registration and commercial use of a domain name that is identical or confusingly similar to Complainant’s mark to divert traffic to Complainant’s competitors satisfies the requirements of Policy ¶ 4(b)(iii). See Societe des Produits Nestle SA v. Mustafa Yakin / Moniker Privacy Services, D2008-0016 (WIPO, March 11, 2008) (“the fact that Respondent’s website contains links to other websites offering competing products with those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent.); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Dollar Financial Group, Inc. and National Money Mart Company v. The Loan Office, Inc., FA 1112559 (Nat. Arb. Forum Jan. 2, 2008) (finding the respondent’s registration and use of nationalmoneymart.com to compete with the NATIONAL MONEY MART trademark owner violates ¶¶ 4(b)(iii) and (iv) of the Policy). Accordingly, Respondent’s registration and use of the contested domain name, cpmfilmtools.com, to offer online retail services in direct competition with Complainant satisfies the requirements of Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that it also appears that Respondent registered the disputed domain name with at least constructive knowledge of Complainant's rights in the FILMTOOLS mark by virtue of Complainant's prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int'l v. DDI Sys., FA 124506 (NAF Oct. 24, 2002); Orange Glo Int'l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Finally, Complainant submits that it is settled law that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See America Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd. D2000-0809 (WIPO Sept. 6, 2000); see also Deutsche Bank AG v. Diego-Arturo Bruckner, D2000‑0277 (WIPO May 30, 2000) (“The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith”); see also FAO Schwarz v. John Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000); see also Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered well-known business name with hopes of attracting the complainant’s customers); see also Woolworths plc. v. David Anderson, D2000-1113 (WIPO Oct. 10, 2000). In the present case, Respondent registered the domain name and used Complainant's FILMTOOLS trademark on the website, which is a clear infringement of Complainant’s marks. Because the FILMTOOLS mark is so obviously connected with Complainant, and because the domain name <cpmfilmtools.com> so clearly references the Complainant’s marks, registration by Respondent, who has no connection with Complainant suggests bad faith. Accordingly, a finding of bad faith is also supported on these grounds.
B. Respondent
Respondent claims in the Response that the "correct identity of Respondent is CPM Fastools, Inc., not CPM, as stated in the complaint."
Respondent submits that it was incorporated in Maryland in 2005 and had immediate success providing on-site laser sintering and cryogenics. In 2006, the U.S. Government recognized CPM Fastools with its 2006 Small Business of the Year Award, complete with an invitation to the White House and a Presidential visit. Also in 2006, the State of Maryland awarded Respondent its Maryland Technology Champion Award. A ceremony at the Governor’s Mansion followed.
As Respondent’s sales grew, its line of products and services offered expanded as well.
In 2009, seeking to leverage off of the reputation and name recognition of the company, and to further utilize its on-site design and manufacturing capacity, Respondent, through one of its principals, registered the disputed domain name and commenced business as “CPM Film Tools”. Respondent submits that it has had a successful business operating as “CPM Film Tools” since that time.
Respondent denies that the disputed domain name is suggestive of Complaiant’s service mark. Respondent argues that Complainant is no doubt aware, a plethora of URL registrations comprising the term, FILMTOOLS, are active including at least: www.digitalfilmtools.com, www.handyfilmtools.com, www.austinfilmtools.com and www.hdfilmtools.com. To Respondent’s knowledge, each of these domain names is currently registered to a registrant other than Complainant (or Respondent). In fact, other entities have even registered and are using the domain names www.filmtools.net and www.film-tools.com, each of which is virtually identical to Complainant’s trademark.
The reason for this is readily apparent. Complainant’s trademark, FILMTOOLS, is highly suggestive of the services to which the mark relates. Stated differently, it is an apt name for a business in the film and video industry. CPM Fastools elected to register the domain name <cpmfilmtools.com> not with any bad faith or intent to gain from Complainant’s trademark, but rather to take advantage of the good will it had established in its company name as well as the descriptive and highly suggestive nature of the domain name. Respondent notes that its “family” approach to branding was apparently appreciated by Complainant at the time it filed the Complaint, as evidenced by its reference to a screen shot of Respondent’s web site (attached to the Complaint as an exhibit to the Complaint), wherein Respondent’ use of the terms CPM, CPM Fastools, and CPM Film Tools is discussed.
Respondent submits that Complainant makes absolutely no demonstration of bad faith on the part of Respondent in its Complaint but rather merely offers that there is a “reasonable inference that purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith”. Alternatively, Complainant seems to suggest that Respondent sought to divert traffic from Complainant’s site. Contrary to these unsupported theories, however, in reality nothing could be farther from the truth. To demonstrate this fact, Respondent has run a search of all search terms used by visitors to its web site located at <cpmfilmtools.com> for the one year period from March 8, 2010 to March 14, 2011. Predictably, the results of this search, set forth in Exhibit A, confirm that the vast majority of visits to the web site (4,568) have resulted from using the search term, “CPM FilmTools”. The second most used search term has been, “CPM Filmtools”, resulting in 1,472 visits. The number of visits resulting from searching for Complainant’s trademark, “filmtools”: zero.
Prior to receiving the Complaint in this proceeding, Respondent had absolutely no knowledge of the existence of the Complainant, nor of Complainant’s trademark, domain name, or business. In fact, since Respondent has used the domain name at issue, not a single customer, prospective customer, web site visitor, or other individual has ever indicated that they contacted Respondent thinking that they were contacting the Complainant. Instead, Respondent is an established, in fact award-winning, on-going concern that registered the domain name at issue in good faith for the sound and viable business reasons discussed above and not to disrupt or in any way affect or benefit from the business of Complainant. At no time has Respondent acted in bad faith.
C. Additional Submissions
In Additional Submissions, Claimant submits that this dispute turns on whether Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy. The Response goes to great lengths to distract the panel with arguments addressed to a hypothetical set of facts in which Respondent did not register its domain name in bad faith. In addition, Respondent hopes to distract, from the well-established rule that the relevant date for showing "rights in the mark" for the purposes of the Policy dates back to the filing date on Complainant’s trademark application, which is prior to the registration date of the contested domain names. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003).
Complainant submits that it has established the requisite rights under the Policy Paragraph 4(a)(i) requires that Complainant identify "a trademark or service mark in which [it] has rights." It is well-settled that a federal trademark registration is sufficient to establish a complainant’s rights in a mark. See 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”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the United States Patent and Trademark Office). Complainant has provided the Panel with a copy of the US Trademark Registration Certificate for its FILMTOOLS mark.
Complainant submits that its FILMTOOLS trademark is distinctive and not highly suggestive. Although the Response fails to employ the legal terms typically used in analyzing trademark rights, Respondent appears to argue that Complainant’s FILMTOOLS mark is not distinctive and is "highly suggestive." However, these matters are not properly presented in the context of a dispute under the Policy and should be addressed to the national authority issuing the trademark registration. See Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 26, 2006) ("The Respondent's remedy is to attack the trademark registration through a petition for cancellation, which action Respondent has failed to undertake.") However, Respondent has initiated no action before the United States Patent and Trademark Office ("USPTO") for cancellation of the FILMTOOLS mark.
Complainant addresses Respondent’s argument that the use of the mark FILMTOOLS by other entities eliminates Complainant's right to protection. Complainant submits that in doing so, Respondent ignores that a federal registration of a mark is prima facie evidence of validity, which creates a presumption that the mark is inherently distinctive. See e.g. Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning."). That third-parties use the mark FILMTOOLS in connection with their domain names or in connection with unrelated businesses cannot undermine the USPTO's conclusion that the FILMTOOLS mark is distinctive for identifying Complainant’s goods and services. The infringement of the FILMTOOLS mark by others does not justify the infringement of the FILMTOOLS mark by Respondent. Furthermore, Complainant is currently dealing with the list of infringers provided by Respondent.
Complainant submits that Respondent had notice of Complainant’s mark. Complainant argues that it is well-established that when a complainant has a trademark registration, the relevant date for showing "rights in the mark" for the purposes of the Policy dates back to the complainant's trademark application filing date. See e.g., Greenhouse Fabrics, Inc. v. Texas International Property Associates - Na Na, FA 1281603 (Nat. Arb. Forum Oct. 7, 2009) (finding that complainant had established rights in the mark as of its trademark application filing date). In this case, Complainant filed its application for the FILMTOOLS mark on January 22, 2004. After its application registered on February 1, 2005, this established Complainant's rights in the FILMTOOLS mark dating back to January 22, 2004. Thus, Complainant has shown its rights in its FILMTOOLS mark prior to September 9, 2009, when Respondent registered the CPMFILMTOOLS.COM domain name and commenced business as "CPM Film Tools."
Complainant submits that its registration of the FILMTOOLS mark on the Principal Register of the USPTO conferred constructive notice to Respondent at the time the <cpmfilmtools.com> domain name was registered. See Orange Glo Int'l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) ("Complainant's OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.").
Complainant submits that the fact that the Response was not filed by the correct respondent is evidence of bad faith registration and use. Respondent claims in the Response that the "correct identity of Respondent is CPM Fastools, Inc., not CPM, as stated in the complaint." The WHOIS information shows the Registrant as Steven Moore and CPM. Therefore, the correct Respondent did not file a Response.
CPM Fastools, Inc. c/o Steven Moore, the entity that filed a Response to the Complaint, is not listed as the Registrant of the disputed domain name. Providing false or misleading information and failure to correct inaccurate information in connection with the registration of the domain name is evidence of bad faith. See Enterprise Holdings, Inc. v. (Undisclosed), FA 1007001337431 (Nat. Arb. Forum Aug. 30, 2010) (finding that the registrant registered the name in bad faith under Policy Paragraph 4(a)(iii) by providing false or misleading WHOIS information to the registrar, where the entity that responded to the Complaint was not the registrant of the disputed domain name); see also Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).
Paragraph 4(b)(iv) of the Policy permits a complainant to show a respondent's bad faith by showing that that "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site." In the Complaint, Complainant has made a clear case that Respondent registered and used the contested domain names to benefit from an association with Complainant and the FILMTOOLS mark.
Throughout the entire course of Respondent's registration and ownership of the <cpmfilmtools.com> domain name, Complainant has used the domain name FILMTOOLS.COM to provide information about its business and the services offered under the FILMTOOLS mark, including its on-line ordering and retail store services in the field of lighting equipment, camera support gear, camera filters, video tape, still film, hand tools, gaffer tape, camera mounts and sync slates. It is difficult to believe that Respondent never visited the domain name FILMTOOLS.COM and was unaware of Complainant's business and mark when it registered the domain name <cpmfilmtools.com>, especially when Complainant's and Respondent's businesses are in the same industry.
In the Response, the Respondent asserted that CPM Film Tools "has been a successful operating concern" due to "leverage off of the reputation and name recognition of" CPM Fastools. Response p. 3. Respondent is, in fact, trading off of the success of Complainant's trademark FILMTOOLS by using the mark without permission. Moreover, registration and operation of the domain name <cpmfilmtools.com> is infringement of Complainant's federally registered trademark FILMTOOLS, which is in itself evidence of bad faith. See America Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd., D2000-0809 (WIPO Sept. 6, 2000) ("The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith"); Household International, Inc. v. Cyntom Enterprises, FA95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered well-known business name with hopes of attracting the complainant's customers).
Respondent provided results of a "search of all search terms used by visitors to its web site," which, according to Respondent, comfirms "that the vast majority of visits to the web site (4,568) have resulted from using the search term, 'CPM FilmTools', the name of Respondent's dba." Response p. 5. Complainant notes that statistical analysis of internet traffic does not justify trademark infringement.
Complainant denies that Respondent has rights or legitimate interest in the disputed domain name arguing that the evidence shows that Respondent was aware of Complainant’s business and its FILMTOOLS mark when it registered the domain name <cpmfilmtools.com>. As discussed in the Complaint, Respondent's use of the contested domain name in a knowing infringement of the FILMTOOLS mark cannot be a bona fide offering of goods and services under the Policy. See Boardroom Inc v. Titan Net, D2006-0480 (WIPO June 6, 2006) ("a knowingly infringing use of a trademark is not a bona fide offering of goods and services under the Policy"). Accordingly, it can not demonstrate any rights or legitimate interest under Paragraph 4(c)(i) of the Policy.
In order for Respondent to show that it was commonly known by the <cpmfilmtools.com> under Paragraph 4(c)(ii) of the Policy, it must show that it was commonly known by this name before registration of the contested domain names. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”). In the WHOIS information for the disputed domain name, Respondent is listed as "Steven Moore" and "CPM". See Exhibit 2. Respondent has provided no evidence to support that it was commonly known by <cpmfilmtools.com> before registering the contested domain name; accordingly, it cannot demonstrate rights under this section.
Complainant concludes submissions by stating that at heart, this dispute turns on whether the Panel believes Respondent’s argument that, despite the fact that Complainant used the domain name FILMTOOLS.COM to advertise its related business and services, and that Complainant's mark FILMTOOLS was on the Principal Register of the USPTO for at least four years prior to registration of the disputed domain name, Respondent was totally unaware of Complainant and its rights in the FILMTOOLS mark when registering <cpmfilmtools.com>. Complainant has provided the Panel with strong support for its rights in the FILMTOOLS mark. Finally, Respondent cannot show that was commonly known by the name <cpmfilmtools.com> prior to registration of the contested domain names, nor can it show that it used the domain name in connection with a bona fide offering of goods or services without intent to capitalize on Complainant’s mark.
Complainant is the owner of US service mark registration number 2,923,148 FILMTOOLS registered on the Principal Register dated February 1,2005 for “on-line ordering and retail store services in the field of lighting equipment, camera support gear, camera filters, video tape, still film, hand tools, gaffer tape, camera mounts and sync slates in class 35.”
Respondent claims in the Response that the "correct identity of Respondent is CPM Fastools, Inc., not CPM, as stated in the complaint." This Panel finds that WHOIS information shows the Registrant as Steven Moore and CPM. Therefore the correct Respondent is identified.
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.
Complainant has satisfied this Panel that it is the owner of the service mark FILMTOOLS through its registration and significant use of the FILMTOOLS service mark in trade including on the Internet on the website to which its <filmtools.com> domain name resolves.
Under the Policy, Complainant must prove each of the three elements in Policy ¶ 4(a).
The disputed domain name contains effectively four elements viz. the letters “CPM” the words “film”and “tools” and the “.com” gTLD extension.
It is well established that when comparing a trademark or service mark with a disputed domain name the Panel may ignore the “.com” gTLD extension. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
This Panel has compared Complainant’s FILMTOOLS trademark and the residual elements in the disputed domain name: “cpmfilmtools”.
In the view of this Panel the dominant element of the disputed domain name is the letters “cpm” and in the context of the disputed domain name the “filmtools” element is arguably descriptive as Respondent has submitted.
Complainant has not furnished any evidence of actual confusion. Respondent on the other hand has shown that an analysis of the hits on its website indicates that the visitors to its website intended to find Respondent and by definition were not confused.
This Panel understands that under the Policy evidence of actual confusion is not usually required and most decisions are based on a simple visual or aural comparison of the mark and the domain name. In the absence of such evidence in the present case however the benefit of the doubt must be given to Respondent.
The jurisdiction of this Panel does not extend to determining whether there has been an infringement of trademarks and that is for another forum.
Complainant has not satisfied Policy ¶ 4(a)(i) and it is therefore unnecessary for this Panel to consider the second element in Policy ¶ 4(a). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant has not satisfied Policy ¶ 4(a)(i) and it is therefore unnecessary for this Panel to consider the second or third element in Policy ¶ 4(a).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James Bridgeman Panelist
Dated: April 7, 2011
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