B
P2H, Inc. v. Estado Alpha
Claim Number: FA1210001467534
Complainant is P2H, Inc. (“Complainant”), represented by Emily A. Danchuk of Furman Gregory, LLC, Maine, USA. Respondent is Estado Alpha (“Respondent”), represented by PsdgoesHtml, Inc . d/b/a PGH, Inc., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psdgoeshtml.com>, registered with Tucows, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2012; the National Arbitration Forum received payment on October 16, 2012.
On October 16, 2012, Tucows, Inc confirmed by e-mail to the National Arbitration Forum that the <psdgoeshtml.com> domain name is registered with Tucows, Inc and that Respondent is the current registrant of the names. Tucows, Inc has verified that Respondent is bound by the Tucows, 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 October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@psdgoeshtml.com. Also on October 17, 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 October 20, 2012.
On October 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
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 for Uniform Domain Name Dispute Resolution Policy (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
Complainant is in the business of graphic web design conversion and implementation, with multiple business locations in the United States and Europe. Complainant is a leader in its industry, with over 50,000 customers and seven solid years of quality service offerings.
The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has used the PSD2HTML trademark in connection with its services since at least as early as March I, 2005. Complainant’s primary website used in its business is “www.psd2html.com”, which has been in use since 2005.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint. Respondent has recently begun operating a website at the disputed domain name. Respondent’s services are identical to those offered by Complainant. The homepage of the offending website is virtually identical to that of Complainant’s homepage, and the remainder of the offending website contains virtually identical layout and design to that of Complainant’s website. Due to its similarity to the <psd2html.com> domain name, the disputed domain name is likely to cause confusion and mistake, and is likely to deceive as to the affiliation, connection or association of Respondent with Complainant. The content, layout and design of the website of the offending domain name is likely to cause confusion, to cause mistake, and to deceive as to the origin, sponsorship, or approval of Respondent’s commercial activities by Complainant. Respondent’s intent is clearly to misleadingly divert consumers or to dilute Complainant’s mark and reputation.
Respondent is using the disputed domain name in an effort to garner sales and profits by confusing actual and prospective customers of Complainant into believing that Respondent’s website is Complainant’s website. Respondent is attempting to garner Complainant’s goodwill by using a confusingly similar domain name and website content, design and layout so that consumers attempting to visit Complainant’s website mistakenly go to Respondent’s website.
The disputed domain name should be considered as having been registered and being used in bad faith. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. The nature and similarity of the disputed domain name with that of Complainant’s domain name and the chosen layout and design of Respondent’s homepage and website, which is virtually identical to that of Complainant’s homepage and website layout and design, demonstrate that Respondent is attempting to confuse internet users, consumers and prospective customers and to misappropriate the goodwill of Complainant.
B. Respondent
In its Response, Respondent makes the following contentions:
At the time of registering the disputed domain name, Respondent was not aware of Complainant.
The two domain names are essentially different. "PSD" and "HTML" are extremely common file formats in the web industry. The way Respondent arranged those words in the disputed domain name is just a common phrase, different from the one of Complainant.
Complainant has absolutely no exclusive rights or monopoly over these two terms. PSD is the format owned by Adobe, which almost every design file is built on; and HTML is the format in which all web pages are served. This makes these two formats extremely common in the web development industry.
Complainant’s registered trademark is P2H, or PSD2HTML. Neither of these two terms was used in the disputed domain name.
Respondent has no intentions of creating confusion with the disputed domain name. Respondent does not believe there really is a likelihood of confusion by any person.
Complainant states that Respondent is using this disputed domain name "in an effort to garner sales and profits by confusing customers". This is completely untrue. A Google search of the terms "psd to html" produces over 58 million results, in which Respondent is non-existent.
Respondent believes it is not a direct competitor of Complainant, as it operates mainly outside the US. Respondent started its business working for Argentina, South America, and Europe, and now has some clients in the US.
Respondent also uses the disputed domain name as a legitimate business purpose.
Complainant also claims the design of his website and Respondent’s are identical. Respondent differs from this opinion, as the two are extremely different.
Respondent never engaged in bad faith to attract Complainant’s customers (or any Internet user) to Respondent’s site, nor did it try to sell the disputed domain name.
The disputed domain name is not typosquatting. No one could accidentally type "goes" instead of "2".
According to the Wikipedia, “Photoshop document” or “psd” is the default file extension of the proprietary file format of Adobe System's Photoshop program.[1] “HyperText Markup Language” or “HTML” is the main markup language for displaying web pages and other information displayed in a web browser.[2]
The Parties are competitors in the business of converting web designs of customers in psd into HTML.
Complainant owns a US trademark registration for PSD2HTML, Reg. No. 4076201, Reg. Date December 27, 2011, filed on December 13, 2010, covering “Computer programming services; computer software development services” of International Class 42.
The disputed domain name was registered on April 2, 2012.
“PSD” and “HTML” are most common terms designating file formats constituting input and output, respectively, of file conversion services provided by Complainant and Respondent. Accordingly, the Panel considers that Respondent’s use of these terms in a domain name, linked by the verb “goes”, is strictly descriptive of Respondent’s business, and therefore, a legitimate use of the disputed domain name.
Because Complainant failed to show that Respondent lacks any rights or legitimate interests in the disputed domain name, the Complaint should be dismissed.
.
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 shown that it owns a trademark registration for PSD2HTML. This does not mean that it has any rights in the “psd”, “html” or “2” terms on their own and by themselves. See Gorstew Limited v. Worldwidewebsales.com, D2002-0744 (WIPO Oct. 23, 2002) (“The Panel is not satisfied that the Complainant has any rights in the word “beaches” on its own. All of the Complainant’s evidence suggests that its only rights are in marks consisting of that word plus either (i) some digits or other word or words or (ii) some design (or in some cases, a stylized script, with a wavy line underneath the word”.).
Thus, Complainant’s rights in the mark exist in a composite expression made of common terms. The disputed domain name also contains the terms “psd” and “html” in the same order as in Complainant’s mark, although they are linked by the verb “goes” instead of “2”. The Panel however hesitates in making a finding of confusing similarity having in mind that both composite expressions, which are simply descriptive of the conversion services that the Parties provide, by using common names for naming file formats, are slightly different in that “goes” also conveys the idea of “coming to be” or becoming other thing.[3]
In any case, the Panel need not reach a conclusion under the first requisite of the Policy, because Complainant has failed to make out its case under the second requisite. See Mastercard International Incorporated v. Education, Ersin Namli, D2011-2312 (WIPO Aug. 3, 2012) (“Ultimately, however, this Panel need not to decide the question of whether the Complaint establishes that Respondent’s disputed domain name is confusingly similar to marks of Complainant, since the Panel has determined that the Complaint fails on other grounds, as elaborated below.”).
On its website <psd2html.com> Complainant describes its business activity as follows:
.
“What is PSD to HTML? We convert your designs to high quality, cross-browser compatible, valid HTML/ XHTML / CSS markup. We call this process ‘PSD to HTML’.”
The Panel notes that this very statement of Complainant reveals that “psdtohtml” is a far from distinctive expression, and that it instead is clearly descriptive.
Since Respondent is also in the business of providing services of conversion of “psd” into “html”, the Panel believes that there is nothing wrong for Respondent, as a provider of such services, to use in a domain name the common terms “PSD” and “HTML” linked by an appropriate term such as “goes” to refer to the idea of converting one format into another, thus describing its services. Complainant cannot monopolize “PDSD” or “HTML” which are common technical terms. It is far from certain that Complainant can monopolize the terms jointly by simply adding the term “2,” as in Complainant’s PSD2HTML mark.
Also, the Panel cannot overlook the fact that on March 22, 2011, when Respondent was applying for the PSD2HTML mark before the USTPO, the USTPO Examining Attorney initially refused registration, stating, inter alia,
“The specimen of record indicates the applicant is offering a service for users to “explore all available options and convert PSD to HTML now. In addition, applicant’s “About the P2H.COM Service” web site page at http://www.psd2html.com/about-us.html describes applicant’s services as: “PSD2HTML.com provides fast, high quality conversion of graphic Web design into Hypertext Markup Language (HTML) and its extensions, as well as skins / themes / templates for various engines. We accept source files in all common formats, including PSD, PNG, AI, and even HTML (existing markup).”
Therefore, the proposed mark merely describes at least one use of the applicant’s computer programming or software development services; i.e., to convert Photoshop document files into hyper text markup language file types, and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).”[4]
On August 18, 2011, the trademark applicant in its “Response to Office’s Action” stated that that its mark had acquired distinctiveness in the marketplace for the services thereunder, and submitted a statement that the PSD2HTML mark had been in continuous and exclusive use by Applicant for over 5 years, and therefore the mark had become distinctive of the services pursuant to 15 U.S.C. § 1052(f).[5] On August 19, 2011, the USTPO Examining Attorney accepted the acquired distinctiveness claim; and the descriptiveness refusal was withdrawn.[6]
This simply means that Complainant has obtained registration for a trademark consisting of (strictly) the “psd2html” expression. Based on this registration, Respondent can monopolize on the Internet, neither the “psd to html” expression nor any other equivalent expression simply describing the service of converting PSD into HTML, such as “psdgoeshtml”. In fact, a simple Google search for the terms “psd to html” and “psd 2 html” conducted by the Panel on November 13, 2012, showed that numerous providers of conversion services, i.e. competitors of Complainant and Respondent, are using “psd to html” and similar phrases either in their domain names or to describe their services offered on the Internet.
The Panel believes that independently of the fact of its registration in the United States, Complainant’s PSD2HTML mark is inherently weak because it is basically descriptive of the format conversion services.
Notwithstanding the fact of the US trademark registration, and the applicant’s statement of use of the mark, there is nothing on this record showing that the term “psd2html” had acquired secondary meaning at the time of the registration of the disputed domain name. Even conceding that Complainant’s statement of August 18, 2011 submitted to the USTPO was accurate, it simply refers to the “psd2html” expression, literally and strictly considered, and not to any other expression containing the common terms “psd” and “html”, describing or merely referring to services of format conversion.
In the Panel’s opinion, Respondent’s descriptive use of the “psd” and “html” terms appears to be legitimate. “psd” and “html” are common format names. In fact, these terms are so obvious for offering conversion services that they are used both by Respondent, Complainant and numerous other businesses as domain names in their websites for competing commercial purposes, in approximately the same manner. See Pinnacle Intellectual Property v. World Wide Exports, D2005-1211 (WIPO Feb. 17, 2006) relative to <canadamedicineshop.com>, where the panel found that the respondent engaged in the sale of pharmaceutical products under the name “CanadaMedicineShop”, and concluded that such name was an apt descriptive choice for the respondent’s business, that the respondent had accordingly demonstrated a legitimate interest in the name, and that, given the weak, descriptive nature of the complainant’s THE MEDICINE SHOPPE mark, the complainant had failed to establish that the respondent registered and used the domain name at issue in bad faith.
Because offering goods or services by using the corresponding descriptive or generic terms is a legitimate use of these terms, independently from the fact that Complainant has obtained a registration for an inherently weak mark, the Panel concludes that Complainant has failed to prove the second element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <psdgoeshtml.com> domain name REMAIN WITH Respondent.
Roberto A. Bianchi, Panelist
Dated: November 13, 2012
[1] See http://en.wikipedia.org/wiki/Psd#Computers, visited on October 31, 2012.
[2] See http://en.wikipedia.org/wiki/Html, visited on October 31, 2012
[3] See http://www.merriam-webster.com/dictionary/go (visited on November 12, 2012). “14 c: to come to be : become <the tire went flat> —often used to express conversion to specified values or a specified state <gone Hollywood> <go condo>”.
[4] See http://tsdr.uspto.gov/documentviewer?caseId=sn85196721&docId=OOA20110322155454 (visited on November 13, 2012).
[5] See http://tsdr.uspto.gov/documentviewer?caseId=sn85196721&docId=ROA20110818190948 (visited on November 13, 2012).
[6] See http://tsdr.uspto.gov/documentviewer?caseId=sn85196721&docId=NTS20110819110548 (visited on November 13, 2012).
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