PrintingForLess.com, Inc. v. Michael Ploch
Claim Number: FA1103001377160
Complainant is PrintingForLess.com, Inc. (“Complainant”), represented by Dan Rice of PrintingForLess.com, Inc., Montana, USA. Respondent is Michael Ploch (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ezprintingforless.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2011; the National Arbitration Forum received payment on March 10, 2011.
On March 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ezprintingforless.com> domain name is 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 March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@ezprintingforless.com. Also on March 10, 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 31, 2011.
On April 5, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts its rights in the PRINTINGFORLESS and PRINTINGFORLESS.COM marks, which are registered in several trademarks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,022,197 issued Nov. 29, 2005) and (Reg. No. 3,145,572 issued Sept. 19, 2006), respectively, and which have been used in connection with commercial printing services since at least 1999. According to Complainant, the trademarks have been used on its websites, postcards, letterhead and have appeared in national publications. Furthermore, Complainant argues that the domain name <ezprintingforless.com> is confusingly similar to Complainant's marks and wholly incorporates two of the registered marks. Complainant also argues that the confusing similarity is likely to cause consumers to believe mistakenly that the domain name is owned by or affiliated with Complainant.
Complainant argues that Respondent should be considered as having no rights or legitimate interests in the disputed domain name. In support of this, Complainant asserts that:
§ Respondent is neither affiliated with nor commonly known as the Complainant's mark, Respondent is not a licensee or subsidiary of Complainant and therefore Respondent has never been authorized to use the Complainant's marks;
§ Nothing in the domain records suggests that Respondent is commonly known by the disputed domain name;
§ Respondent has not used the domain name in connection with a bona fide offering of goods and services since Respondent is offering a competitive online commercial printing service in the same space as Complainant;
§ Respondent is using the domain name for commercial gain misleadingly divert consumers to its website;
§ Respondent promotes competitive goods and services on the website to which the domain name resolves, which cannot be considered as a legitimate use.
Complainant argues that the domain name should be considered as having been registered and having been used in bad faith. In support of this Complainant contends that:
§ Respondent registered the domain name with the specific intent to cause consumer confusion and to "free ride" on the goodwill associated with Complainant's mark;
§ Respondent has operated a commercial website at the domain, through which it sells and offers or intends to sell and offer commercial printing services (which are in competition with Complainant's services);
§ Given the renown of Complainant's marks in the relevant industry, Respondent could not have registered the domain name at issue without knowledge of Complainant's rights in the mark;
§ Respondent's use of the domain name constitutes a false designation of origin or sponsorship for Respondent's goods and services.
B. Respondent
Respondent claims that he had no knowledge of Complainant or of the trademarks thereof and he had no bad faith intention when registered the domain name. He asserts that after noticing that the domain name is incorporated in Complainant's marks, he redirected its website to Complainant's site.
Respondent states that no sales were made and no revenue was generated from the website under the domain name.
Respondent claims that he is ready to freely transfer the domain name to Complainant.
Complainant, PrintingForLess.com, Inc. is the owner of several PRINTINGFORLESS.COM and PRINTINGFORLESS trademarks registered with the USPTO (Reg. No. 3,022,197 issued Nov. 29, 2005) and (Reg. No. 3,145,572 issued Sept. 19, 2006), respectively. The trademarks are registered in conjunction with commercial printing services. Complainant is offering printing services via its website, where the PRINTINGFORLESS marks are duly used.
Respondent, Michael Ploch is the owner of the domain name ezprintingforless.com. The screenshots of the website www.ezprintingforless.com attached to the Complaint show that commercial printing services were offered through this website.
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.
Preliminary Issue: Respondent's Consent to Transfer
It is a fact that Respondent did not contest the transfer of the disputed domain name but instead agreed to transfer it to Complainant.
Nevertheless, the Panel is of the view that Complainant did not implicitly consent in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. Therefore, the Panel decided to analyze the case under the elements of the UDRP Policy.
The Panel finds that Complainant duly established rights in the PRINTINGFORLESS.COM mark under Policy ¶ 4(a)(i)) by registering that mark with a federal trademark authority, the USPTO (Reg. No. 3,145,572 issued September 19, 2006).
The Panel agrees with Complainant that Respondent’s <ezprintingforless.com> domain name is confusingly similar to its own PRINTINGFORLESS.COM mark, since the addition of the letters "ez" fails to sufficiently differentiate the disputed domain name from the mark, in particular that the disputed domain name fully incorporates Complainant's mark.
It is a fact that the WHOIS information identifies the registrant as “Michael Ploch.” Based on this, the Panel determines that there is nothing in the records that would suggest that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Based on the evidence submitted, the Panel agrees with Complainant that Respondent’s disputed domain name resolves to a site offering services that directly compete with Complainant’s business. The Panel highlights that Respondent did not contest this allegation. The Panel finds that the competitive nature of the services offered by Respondent using the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <ezprintingforless.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Based on the above, the Panel finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and therefore the burden shifted to Respondent to show it does have rights or legitimate interests. It is a fact that Respondent failed to prove such circumstances which would demonstrate his rights and legitimate interests in the domain name under Policy ¶ 4(c).
The Panel finds that Respondent is likely capitalizing or attempted to capitalize off the similarity between the <ezprintingforless.com> domain name and Complainant’s PRINTINGFORLESS.COM mark as Respondent is using the disputed domain name to redirect Internet users searching for Complainant to its own website which sells competing printing services. The Panel finds that it is very likely that Respondent had constructive or actual notice of Complainant's rights in the PRINTINGFORLESS.COM mark given its renowned used in the printing industry since 2000, its registered trademark with the USPTO, and the close proximity between the services offered by the parties. The Panel finds that this activity of Respondent constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ezprintingforless.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: April 15, 2011
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