national arbitration forum

 

DECISION

 

IPH International Pty Ltd ACN 104 849 363 v. Jjfamily Trust / James Mcilmurray

Claim Number: FA1207001454799

 

PARTIES

Complainant is IPH International Pty Ltd ACN 104 849 363 (“Complainant”), represented by Anthony Ford of Hemming+Hart Lawyers, Australia.  Respondent is Jjfamily Trust / James Mcilmurray (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <crimesafe.net>, <crimesafebrisbane.com>, <crimesafecost.com>, <crimesafeprice.com>, <crimesafescreens.com>, <crimesafesecuritydoors.com>, and <crimesafesecuritydoorsbrisbane.com>, registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc.

 

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.

 

Bruce E. O'Connor as Panelist.

 

PROCEDURAL HISTORY

This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2012; the National Arbitration Forum received payment on July 23, 2012.

 

On July 27, 2012, Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <crimesafe.net>, <crimesafebrisbane.com>, <crimesafecost.com>, <crimesafeprice.com>, <crimesafescreens.com>, <crimesafesecuritydoors.com>, and <crimesafesecuritydoorsbrisbane.com> domain names are registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. and that Respondent is the current registrant of the names.  Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. has verified that Respondent is bound by the Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

 

On July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2012 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@crimesafe.net, postmaster@crimesafebrisbane.com, postmaster@crimesafecost.com, postmaster@crimesafeprice.com, postmaster@crimesafescreens.com, postmaster@crimesafesecuritydoors.com, and postmaster@crimesafesecuritydoorsbrisbane.com.  Also on July 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 20, 2012.

 

On August 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.

 

On August 27, 2012, Complainant filed an Additional Submission with the National Arbitration Forum. This document was timely and complete in accordance with Supplemental Rule 7.

 

On August 28, 2012, Respondent filed an Additional Submission with the National Arbitration Forum. This document was timely and complete in accordance with Supplemental Rule 7.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of various registered trade marks (without limitation), which are each registrations of the plain word mark CRIMSAFE (the  "Trade Marks"). These include Australia Registration No. 663314 dated June 7, 1995, and registrations in China, Japan, United States of America, Canada, and under the Madrid Protocol designating only the European Community. Complainant also has registrations in Australia and other countries for trademarks that include the word mark CRIMSAFE.

 

The Complainant has licensed several related entities to use the Trade Marks to operate a business of manufacturing and distributing a range of stainless steel security screen products which are based on a set of patents and registered designs that are also owned by the Complainant (the "CRIMSAFE Products").

 

The CRIMSAFE Products are sold in 8 countries including Japan, Fiji, Papua New Guinea, Vanuatu and the Solomon Islands. In addition to the Complainant's trade mark rights referred to above, the Complainant has common law rights with respect to the term "CRIMSAFE" in these countries.

 

Complainant and its related entities have registered the following domain names which make use of the word "Crimsafe'": <www.crimsafe.com.au>; <www.crimsafe.com>[1].

 

Complainant and its related entities have successfully operated a commercial website in respect of each domain name since the relevant time of registration. Each website has, since registration made extensive use of the word "CRIMSAFE" as a badge of origin for the CRIMSAFE Products and the CRIMSAFE Business.

 

Complainant has used the word "CRIMSAFE" in Australia, the United States and other parts of the world for approximately 16 years and during that time, the Complainant has invested a substantial amount of money into promoting the trade mark and name globally, including (without limitation) significant and constant advertising and marketing initiatives including sponsorship, television, radio, print media and online advertising; the appointment of over 151 independent licensees that operate businesses of exclusively wholesaling and retailing CRIMSAFE Products; the appointment of a Trade Marks Attorney to obtain registration for the Trade Marks on a global scale; the establishment and maintenance of commercial web sites, which are displayed on the domain names set out above; and frequently taking legal action against parties that use the Trade Marks without the consent of the Complainant.

 

The Respondent is operating a business under the name of "You're Secure" in which the Respondent sells and installs various window and door products including security screens, blinds, windows and doors in South East Queensland, Australia ("Respondent's Business"). The main website for the Respondent's Business is located at <www.youresecure.com.au>.

 

Each of the Domain Names features the word "Crimesafe" as the predominant and most distinct part of the relevant domain name.

 

The word "Crimesafe" so nearly resembles the Complainant's registered trade mark "CRIMSAFE" that it is likely to cause persons to wonder if or mistakenly conclude that the Domain Names are either owned by the Complainant (or their related entities), or that the Respondent has the right to use the Trade Marks and sell the CRIMSAFE Products.

 

This potential confusion is exacerbated by the fact that the Respondent distributes a competing product to that of the Complainant, which may lead an Internet user to believe that they are being provided with information about the authentic CRIMSAFE Products, when in fact the Respondent's product is completely different to that of the Complainant's.

 

The only difference between the words "Crimesafe" and "CRIMSAFE" is the letter 'e', which is in the centre of the word "Crimesafe". This letter can easily be unnoticed unless the word is examined closely. Furthermore, a simple typographical error (by including the 'e') could take an Internet user who intended to search for the Complainant's website, to one of the web sites attached to the Domain Names.

 

The Respondent has no rights or legitimate interests in respect of the Infringing Domain Names because:

(a)       the Respondent is a competitor of the Complainant and its authorised licensees (in that it distributes a competing brand of product);

(b)       the Respondent is not authorised by the Complainant to deal in the CIRMSAFE Products or to use the Trade Marks in any way;

(c)        the Respondent does not have any association in the course of trade with the Complainant and does not have any form of sponsorship, approval or affiliation with the Complainant;

(d)       the Respondent has not registered the word "crimesafe" as a trade mark in any jurisdiction (the reason being, that to do so would be a breach of the Complainant's trademark and other rights); and

(e)       the Respondent has not at any stage legally used the word "crimesafe" as a badge of origin for a business or any products (the reason being, that to do so would be a breach of the Complainant's trademark and other rights).

 

As stated above, the Respondent is trading exclusively under the name of "You're Secure". The word "crimesafe" does not replicate and is not in any way associated with the Respondent's trading name. There is no evidence that the word "crimesafe" is commonly or even occasionally used to generically describe stainless steel security products.

 

The use of the word "crimesafe" by the Respondent is a deliberate attempt to:

(a) replicate and cause confusion with the word "CRIMSAFE" in which the Complainant has trade mark rights; and

(b) as such, divert Internet users searching for information relating to the CRIMSAFE Products to the Domain Names.

 

The Google AdWords website allows browsers to input hypothetical search terms and provides a range of statistics which demonstrates how many times certain terms are input by users into the Google search engine. If the word "CRlMSAFE" is entered into this tool, the results page shows that 6 of the top 25 keyword ideas suggested by Google are virtually identical to the Domain Names (except of course the use of the word "Crimesafe" in substitute for the word "crimsafe").

 

It can be inferred that the Respondent selected the Domain Names on the basis that they each represent high volume search strings for Internet users seeking information about CRIMSAFE Products, which would increase the likelihood that those Internet users would be mistakenly diverted to the Domain Names.

 

In addition to the Domain Names, the Respondent has other domain names, within Australia that infringe on the trademarks held by the Complainant.

 

On 18 January 2012 the Complainant issued the Respondent with a cease and desist letter ("Letter One"). The demands set out in Letter One were not satisfied by the Respondent. Instead, shortly following Letter One being sent, the Respondent edited the content of the web sites linked to the Domain Names to remove all uses of the word "Crimesafe", except for the Domain Names themselves.

 

Each web site, prior to Letter One, made extensive use of the word "crimesafe" and attempted to falsely suggest that stainless steel security products are commonly generically referred to as "crimesafe".

 

There is no evidence whatsoever to suggest that stainless steel security products are commonly generically referred to as "crimesafe". The Complainant submits that to suggest otherwise is a deliberate attempt by the Respondent to pass off the Respondent's product as that of the Complainant's.

 

On 31 January 2012 the Complainant issued the Respondent with a second cease and desist letter, which repeated the demands of Letter One (Letter Two). The demands set out in Letter Two were ignored by the Respondent.

 

To date the Complainant has not received any written or verbal response or acknowledgement from the Respondent in respect of Letter One or Letter Two.

 

B. Respondent

Respondent acknowledges that the Complainant has a registered trademark under the name "CRIMSAFE". However, the word "Crimsafe" does not appear in any of the Domain Names in dispute.

 

Respondent acknowledges that the Complainant has registered the following domain names: <www.crimsafe.com>; <www.crimsafe.com.au>.

However, these domain names are different from the Domain Names that are in dispute, and are neither identical nor deceptively similar. In particular the following Domain Names have many extra terms, words or letters in the domain names that clearly differentiate them from the Complainant's web sites.

 

Respondent agrees that the Complainant has legitimately and very successfully used and promoted the word CRIMSAFE for approximately 16 years.

 

As a consequence Respondent finds it difficult to accept that the Domain Names could in any way be confused with the domain names and trademark that the Complainant has advertised successfully for 16 years.

 

Respondent disagrees with the Complainant's description of Respondent and its business as a competitor of the Complainant. A more accurate description would be an "Indirect opponent". This may sound like semantics, but it is important to understand the Complainant's position in the marketplace compared with that of Respondent.

 

The market for security screens in South East Queensland is divided up into three product types.

 

Within each product type there are a number of brands and varying products.

Respondent markets, manufactures and installs multiple products from all three product types.

 

Complainant is the owner of CRIMSAFE, one of the major brands in the type of security screens generically identified as "stainless steel security screens".

 

There are more than 10 different brands of stainless steel security screens. Respondent manufactures and/or markets two of these brands.

 

Complainant owns the trademark and rights to CRIMSAFE and sells the rights to its 151+ independent licensees for them to sell the CRIMSAFE product to their own customers (the end users who purchase the screens).

 

To clarify what this means, the Complainant's direct competitors are the other brands of stainless steel security screens. Respondent's direct competitors are the 151+ independent licensees who are dealing with the end users and have the capacity to not only sell them a brand of this type of security screen, but a number of crime prevention products from the other categories as well.

 

As Respondent's business name "You're Secure" suggests, Respondent's primary business is to manufacture a wide range of "Crime Prevention" Products.

 

Essentially Respondent in the business of making its customers "Safe from Crime". Respondent's products serve many purposes include Crime Prevention and Deterrents. Respondent makes it clear to its customers that Respondent has a wide range of products available to keep them safe from crime.

 

Respondent contends that given the nature of its business, it has every right to continue to use the Domain Names in dispute, given that they are different than Complainant's trademark name and are relevant to Respondent's business.

 

Complainant has no rights over the word "Crime", over the word "Safe", or over the term "CrimeSafe". They are all generic words/terms which any Security company has the right to use. As a consequence Respondent has every right to use them in its line of business as marketers and manufacturers of Security and Crime Prevention Products. As a further consequence, Respondent has every right to register and use the Domain Names that contain these words in them.

 

Respondent agrees with Complainant that Respondent has no authorisation with them or association of any kind that allows us to use their Trade Marks. Respondent would add that it has never sought authorisation or planned to use any part of their Trade Marks in any way.

 

Respondent agrees with Complainant that Respondent has not registered the words "Crime", "Safe" or "CrimeSafe" as a trademark or "badge of origin". These are generic words and terms that broadly describe part of what Respondent does.

 

Respondent's website and its personal dealings with its customers on the phone, in Respondent's premises, or at the customers residence, seeks to differentiate the brands of security screen Respondent sells from the Complainant's brand CRIMSAFE.

 

Respondent seeks to assure its customers that its brands are both manufactured in a way that is better than the security screens manufactured by Complainant. In essence Respondent is doing everything it can from the beginning of the quoting process to differentiate its products from Complainant's.

 

C. Additional Submissions

Complainant

There have been numerous occasions in the past where the Respondent has, without authorisation, used the Complainant's name and trade mark in order to generate business on the basis that the products sold by You're Secure are the same as those provided by the Complainant.

 

One of these is a Yellow Pages advertisement belonging to the Respondent published in 2007, which clearly depicted the Complainant's trade mark.

 

Another of these is a bundle of emails between the Complainant and the Respondent which occurred in April of 2008. The emails contain requests by the Complainant to the Respondent requesting that the Respondent discontinue using the Complainant's trade marks and any references to the Complainant's name in its advertising material. In the emails, the Respondent confirmed that You're Secure will discontinue its use of the Complainant's name and trade mark.

 

Another of these is a June 2008 Yellow Pages advertisement belonging to the Respondent which clearly displayed the Complainant's trade mark. The Complainant sent an email to the Respondent requesting that the advertisement be removed.

 

It is clear from these that the Complainant had made its position regarding the unauthorised use of its name and trade mark very clear to the Respondent. Further, it is obviously untrue that the Respondent had never planned to use the Complainant's name and trade mark in any way. The Respondent has previously used the Complainant's name and trade mark in various types of advertisements including in print advertising (such as the Yellow Pages), signs (such as signs on motor vehicles) and on the Internet.

 

Respondent admits that he used words or a combination of words, directly associated with, related to and which are protected under the Complainant's trade mark, when creating the Domain Names. By doing so, the Respondent is taking advantage of the Complainant's market presence and reputation. This amounts to "passing off", which the Respondent claims is a "legitimate tactic" in generating customers for his business.

 

We strongly dispute the assertion that passing off is a legitimate tactic and reaffirm that the use of the term "crimesafe" by the Respondent in the various Domain Names is not only an infringement of the Complainant's trade mark, but a deliberate attempt to "pass off' the Domain Names as being associated or in some way affiliated with the Complainant, when the opposite is the case.

 

Respondent

One of the licensees of Complainant made an arrangement with Respondent in 1998 for Respondent to sell the CRIMSAFE Product, which Respondent did until 2007. Respondent did pass itself off during that period as a distributor of the CRIMSAFE Product, in that it was authorised to do so.

 

The 2007 Yellow Pages advertisement was organised in 2006, during this period of authorisation. The 2008 bundle of emails occurred after this period, but after Respondent had already authorised changes to the Yellow Pages to remove reference to the CRIMSAFE Product.

 

By using the words or phrases "crime", "safe", "cost", "security", "Brisbane", or "doors", Respondent is not passing off but rather using terms that are generic in the security industry.

 

Respondent goes into great detail in discussing the specifics of its relationship with Complainant and its licensee during the authorised period.  Respondent also discusses in detail the events that occurred in 2008 following this period, in which Respondent successfully sold another brand of stainless steel security screen to one of its biggest commercial customers instead of the CRIMSAFE Product.

 

Respondent attributes the 2008 sale to the inferiority of the CRIMSAFE Product, and the current proceeding to the use of money and bullying on the part of Complainant because of the lost order in 2008, and nothing to do with the Domain Names.

 

PRELIMINARY ISSUE - RESPONDENT’S CONTENDED UNTIMELINESS OF COMPLAINANT'S ADDITIONAL SUBMISSION

Complainant's Additional Submission was received 7 days after reception by the National Arbitration Forum of the Response. Respondent contends that the Additional Submission is thus untimely under Supplemental Rule 7, which requires that an additional submission be received "within five (5) Calendar Days after the date the Response was received by the Forum". Respondent is incorrect in this assertion, because it ignores the definition of "Calendar Days" in Supplemental Rule 1 that extends the deadline for any Calendar Day deadline that falls on a Saturday or Sunday to the following Calendar day (i.e., Monday). The five-day period in this case had a deadline of August 25, which was a Saturday. The filing of Complainant's Additional Submission on Monday, August 27 was thus timely.

 

FINDINGS

Complainant registered the trademark CRIMSAFE on June 7, 1995 in Australia, Registration No. 663314 dated June 7, 1995, and the other Trade Marks subsequently in Australia and certain other countries.

 

Complainant’s contention of common law rights in the Trade Marks is not supported by any evidence whatsoever and has not been established to the satisfaction of the Panel.

 

Respondent registered the <crimesafe.net> domain name on November 8, 2011 and the <crimesafebrisbane.com>, <crimesafecost.com>,

<crimesafeprice.com>, <crimesafescreens.com>, <crimesafesecuritydoors.com>, and <crimesafesecuritydoorsbrisbane.com> domain names on September 26, 2011.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant's trademark registrations establish its rights in the Trade Marks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

In deciding whether Complainant has proven the first element of the Policy, the Panel must compare the trademark with the domain name in terms of similarity in sight, sound and meaning, without reference to the specific uses to which the trademark and the domain names are being put[2]. Here, the nature of the Trade Marks makes that comparison difficult. The principal element of the second level portions of the Domain Names, "crimesafe", is certainly similar in appearance to the dominant portion of the Trade Marks, CRIMSAFE. The only difference is the addition in the former of the letter "e". The omission of that letter from the Trade Marks leads the observer to speculate as to the pronunciation of their dominant portion - does the "i" sound like a short "i", as in "criminal", or like a long "i", as in "crime." That difference also gives potential to slightly different meanings for the Trade Marks and the Domains. Fortunately for the Panel, Respondent does not raise this point and by implication admits that the second level portion of the Domain Names and the dominant portion of the Trade Marks are identical in pronunciation, i.e., "crime safe". And, the Google AdWords website search results introduced by Complainant supports the pronunciation (and meaning) of the Trade Marks as "crime safe."

 

The remaining portions of the Domain Names are either generic or descriptive terms ("brisbane", "cost", "price", "screens", "securitydoors", and "securitydoorsbrisbane") that add no distinctiveness to their combination with "crimesafe". Likewise, the top-domains ".net" and ".com" cannot be relied on to distinctively distinguish the Domain Names from the Trade Marks. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”);  Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); Trip Network Inc. v. Alviera, supra (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Therefore, the Domain Names are confusingly similar to the Trade Marks.

 

Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

 

            (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

            (ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

            (iii) the Respondent is making a legitimate non‑commercial 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 must make a prima facie showing that Respondent does not come under those circumstances. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

Complainant has made such a prima facie case. Respondent admits that it is not known by the Domain Names, using as it does the trade name "You're Secure" for its business, and that it has not been authorized by Complainant to use or register the Domain Names. The goods for which the Trademarks have been registered include "mesh screens of metal including security screens and insect screens for windows." Those are exactly the goods that Respondent is selling on its web site. And Respondent's use of the Domain Names is clearly commercial. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (a respondent’s use of a disputed domain name to operate a competing business is not a protected use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii)).

 

Respondent contends that it has legitimate interests in the Domain Names because of genericness of the words "crime" and "safe" when applied to the products of both Complainant and Respondent. There is no doubt but that these words describe the desired attributes of the security screens that both Complainant and Respondent sell, making customers "safe from crime" as Respondent puts it. But that descriptive quality does not mean that anyone, including Respondent, can use the words "crime" and "safe" in immediate succession as the conjoined term "crimesafe" that is confusingly similar to the Trademarks.

 

Respondent contends that it is not a direct competitor of Complainant, but rather an "indirect opponent" of the licensees of Complainant who sell directly to the public as does Respondent. The public will make no distinction, however, between a manufacturer (or distributor) that sells through retailers and another retailer of like type. Especially is this the case where the former's trademark (the Trade Marks) is known to the public through advertising and promotion. As admitted by Respondent ("Crimsafe [is] one of the major brands ... in the market.") For all intents and purposes, Complainant and Respondent are seen by the public to sell competitive products.

 

Respondent's use is not a bona fide use of the Domain Names.

 

Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.

 

Paragraph 4(b) reads:

 

[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

            i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

            (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

            (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

            (iv) 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.

 

In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.

 

Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.

 

The following facts have caught the attention of the Panel in its decision on this element of the Policy.

 

First, Respondent was well aware of the Trade Marks prior to its registration of the Domain Names. This knowledge is shown by Respondent's advertisement in 2007 containing the Trade Marks. This knowledge is also shown by Respondent's detailed recounting of its relationship with Complainant and Complainant's licensee during the period in which Respondent was authorized to sell the CRIMSAFE Product. And the recounting of Complainant's lost sale to one of Respondent's "biggest commercial customers"  leaves no doubt but that Complainant and Respondent were and are in competition with each other.

 

Second, Respondent continued in 2008 to take out advertisements containing unauthorized uses of the Trade Marks. Respondent characterizes this as an oversight, and points out that it discontinued use of the Trade Marks in response to emails from Complainant. 

 

Third, Respondent's web site (to which the Domain Names redirect the user) contained until recently prominent uses of the term "Crimesafe" as part of Respondent's description of its security screens, even though those screens were manufactured by others than Complainant.

 

For example:

 

Crimesafe Security Windows and Doors

 

Are you looking for the best value Crimesafe security windows and doors? You're Secure is the Crimesafe security window and door expert for securing your home or business.

 

There are a number of different brands of Crimesafe security windows and doors on the market...

 

Crimesafe security windows and doors are...

 

From this example, it is apparent to the Panel that Respondent is making a not-so-subtle reference to security screens identified by the term Crimesafe.  Why did Respondent not use the generic terms "security screens" when discussing such products on its web site?  Why did Respondent find it necessary to identify those as "Crimesafe" rather than "stainless steel"? Respondent's contention, that "we seek to differentiate the brands of (screens) we use from the Complainant's brand Crimsafe", is contradicted by this evidence. The Panel does not accept Respondent's contention that "crimesafe" is a generic term in the security screen industry. The extensive prior dealings between the parties demonstrate that Respondent intentionally picked a term that was confusing similar to the Trade Marks, for the purpose of trading on the goodwill of the Complainant.

 

Respondent's prior knowledge of the Trade Marks, its prior unauthorized use of the Trade Marks, and its recent use of a term confusingly similar to the Trade Marks as a source identifier for competitive products, establishes Respondent's bad faith in both registration and use of the Domain Names. Respondent's actions thus come within the circumstances of paragraph 4(b)(iv) of the Policy.

 

Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy.

 

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <crimesafe.net>, <crimesafebrisbane.com>, <crimesafecost.com>, <crimesafeprice.com>, <crimesafescreens.com>, <crimesafesecuritydoors.com>, and <crimesafesecuritydoorsbrisbane.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. O'Connor, Panelist

Dated:  September 6, 2012

 

 



[1] Complainant and Respondent both erroneously refer to URLs (Uniform Resource Locators) as "domain names."

[2] Respondent's contentions as to the genericness of the words "crime" and "safe", and as to the distinctions between its business and that of Complainant, are inappropriate for determinations of confusing similarity under the first element of the Policy and will be considered in the determination of rights and legitimate interests and bad faith under the second and third elements of the Policy.

 

 

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