Michael J. Stevenson and
Joram Corporation d/b/a MOLD-IN GRAPHICS SYSTEMS v. Des Crossley
Claim Number: FA0707001028240
PARTIES
Complainants are Michael J.
Stevenson and Joram Corporation d/b/a MOLD-IN
GRAPHICS SYSTEMS (collectively, “Complainants”), represented by Robert
E. Strauss, 541 High Chaparral Loop, Prescott, AZ 86303. Respondent is Des Crossley (“Respondent”), represented by Jonathan
Ellis, of Ellis, Verboeket, Terry, Level 12, Forsyth Barr House,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mouldingraphics.com>, registered
with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Linda Byrne, Clive Elliott and Roberto Bianchi as
Panelists.
PROCEDURAL HISTORY
Complainants submitted a Complaint to the National Arbitration Forum
electronically on July 3, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 6, 2007.
On July 3, 2007, Melbourne IT, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <mouldingraphics.com>
domain name is registered with Melbourne IT,
Ltd. and that the Respondent is the current registrant of the name. Melbourne IT,
Ltd. has verified that Respondent is bound by the Melbourne IT, registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 31, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@mouldingraphics.com by e-mail.
A timely Response was received by e-mail on July 31, 2007. The Response
was deficient under ICANN Rule 5 as it was not received in hard copy.
On August 6, 2007, The Forum received a timely Additional Submission
from Complainants, which the Panel considered in making its decision.
Respondent did not reply to Complainants’ additional submission, as it was his
right pursuant to Supplemental Rule 7(c).
On August 8, 2007, pursuant to Complainants’
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Linda Byrne and Clive Elliott as panelists, and
Roberto Bianchi as chair.
RELIEF SOUGHT
Complainants request that the domain name be transferred from
Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants
In their
complaint, Complainants make the following contentions:
- Respondent’s domain name is confusingly similar to the “MOLD-IN GRAPHICS” trademarks in which Complainants have rights.
- Respondent has no legitimate right or interest in respect of the disputed domain name. This domain name is the substantial duplicate of Co-complainant’s domain name <moldingraphics.com> registered on June 5, 1996, which has been in continuous use since that date. Respondent knew of this because of the open and notorious posting of this domain name by Co-complainant at trade shows and in print advertisements in trade magazines prior to the registration of the disputed domain name. Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services. Instead, Respondent has parroted Co-complainant’s product names for Respondent’s designations of products such as: its Spray-in colour system to compete with Co-complainant’s Spray-In Color System and its Surface Enhancer product to compete with Co-complainant’s Surface Enhancer product. At no time, prior to registration of the disputed domain name, has Respondent been commonly known by, or done business under, the disputed domain name.
- Respondent has registered and used the disputed domain name in bad faith. Respondent registered the disputed domain name with the intent to disrupt Complainants’ business and create user confusion and thereby divert consumers to Respondent’s web site which promotes competing goods in the same line of business and market area as Co-complainant’s goods. Respondent has parroted Co-complainant’s product names for Respondent’s designations of its Spray-in colour system and Surface Enhancer products, all with the intent to confuse and divert consumers. Respondent’s use of the domain name <mouldingraphics.com> is a flagrant and fraudulent attempt to trade on Complainants’ goodwill and reputation. Co-complainant’s registered trademarks have the fanciful and inherently distinctive prefix MOLD-IN GRAPHICS, which Respondent adopted to confuse the trade.
B. Respondent
In his Response, Respondent contends the following:
- It is denied that Respondent’s domain name is confusingly similar to the Complainants’ alleged trademarks. The expression “mold in graphics” is purely descriptive of graphics moulded into a cast or moulded product. An Internet review shows the expression to be widely used so as to refer to mold in graphics. Thus, the expression MOLD-IN GRAPHICS could never be a trademark.
- It is denied that Respondent has no legitimate interest in the disputed domain name. The domain name <mouldingraphics.com> is essentially and exclusively descriptive of the product and/or services which Respondent produces and delivers in the course of its business. As illustrated by the Internet uses identified by Respondent, the words “mould in graphics” are widely used for graphics that are moulded into cast or moulded plastic articles. Respondent has the right to use purely descriptive words in relation to its business and has a legitimate interest in acquiring and using these descriptive words as its domain name. The fact that Complainants also use these words is direct evidence of their descriptiveness. No amount of the use of the ® symbol can turn a purely descriptive and widely descriptively used expression into a proprietary brand name. Neither the invalid registration of a description nor the use of that description can prevent (nor have prevented) the legitimate descriptive use of such a description by third parties, including Respondent.
-
Respondent has registered and used the disputed domain
name in good faith. Respondent has simply
adopted as a domain name words widely used and accepted as a pure description
of the process involved. There is not and cannot be any bad faith in the
registering and using such a domain name. Complainants were and are fully aware
of the completely descriptive nature of both MOLD-IN GRAPHICS and “mould in
graphics.” In applying for registration of
MOLD-IN GRAPHICS in the USA Complainants acted in bad faith, and are
seeking improperly to prevent Respondent from legitimately using in the course
of trade the normal, widely used, plain English description of the process in
question. Complainants have
misused the Policy and thus acted in bad faith.
C. Additional Submission
In their Additional Submission of August 6, 2007, Complainants contend
as follows:
- In reply to Respondent’s contention that the expression “MOLD-IN GRAPHIC” is merely descriptive, Complainants state that the mark was registered on January 2, 1990 based on a first use date of March, 1983, and that the legal presumption that these words are not merely descriptive has been strengthened by the lengthy period of registration and use, which clearly establishes distinctiveness, combined with extensive advertising. Co-complainant’s average annual expenditure for advertising and promotion is in excess of $95,000.00. Complainants have reviewed the websites cited by Respondent and found that in substantially every instance, the website sponsor is a customer of Co-complainant, MOLD-IN GRAPHIC SYSTEMS, or a rotational molder customer of Co-complainant using Co-complainant’s graphic transfer products in their operations. Three of the websites cited by Respondent are sponsored by marketers of products manufactured by custom rotational molders. These are customers of MOLD-IN GRAPHIC SYSTEMS and use its graphic transfer products. There is evidence that the uses of “Mold In Graphics” in Respondent’s exhibits are not merely descriptive, but are indications of product source.
- Respondent has not asserted that he uses the words “mould in graphics” in a trade name or trademark, and certainly is not a licensee of Complainants.
- Respondent competes with Complainants and sells competitive goods to the same market, i.e., plastic rotational molders. Respondent’s products compete with Co-complainant’s products and some, notably the Surface Enhancer and
class=Section2>-Spray
in colour system, mimic Co-complainant’s trademarks. In view of this competitive setting,
Respondent’s registration of a domain name which is confusingly similar to
Complainant’s trademarks was made in bad faith and likely intended to disrupt
Complainants’ business and create customer confusion. Respondent was likely to
have been aware of Complainants’ use of the trademarks. According to a
declaration by Nicholas Moldan, Sales Representative of Co-complainant,
Respondent has known of Co-complainant Mold-In Graphic Systems for several
years, and relates that Respondent Des Crossley attended a display booth for
Graphic Systems, Ltd. at a ARMSA trade show held in
FINDINGS
Co-Complainant Stevenson is the current owner of the following marks registered by the U.S.P.T.O.:
- MOLD-IN GRAPHIC SYSTEMS, Reg. No. 1,574,897, Reg. Date January 2, 1990, Renewed January 2, 2000; First Use March, 1983; For Transfers for a process for applying graphics, labels or identification onto rotationally molded polyethylene products. Intl. Class 16. (“SYSTEMS” is disclaimed apart from the mark as shown).
- MOLD-IN GRAPHICS SPRAY-IN ADHESIVE SYSTEM, Reg. No. 1,965,271, Reg. Date April 2, 1996; Renewed April 2, 2006; First Use December 1, 1994; For Spray adhesive used in rotational plastic moldings. Intl. Class 1. (“GRAPHICS SPRAY-IN ADHESIVE SYSTEM” is disclaimed apart from the mark as shown).
- MOLD-IN GRAPHICS SPRAY-IN COLOR SYSTEM, Reg. No. 2,002,284, Reg. Date September 24, 1996, Renewed September 24, 2006; First Use December 1, 1994; For Spray-in coloring composition used to decorate rotational plastic moldings. Intl. Class 2. (“GRAPHICS SPRAY-IN COLOR SYSTEM” is disclaimed apart from the mark as shown).
-
MOLD-IN GRAPHICS SPRAY-IN SURFACE ENHANCER, Reg.
No. 2,002,667; Reg. Date September 24,
1996; Renewed September 24, 2006; First Use March 1, 1995; For Surface
enhancing spray adhesive to decorate rotational plastic moldings. Intl. Class
2. (“GRAPHICS SPRAY-IN SURFACE ENHANCER” is disclaimed apart from the mark as
shown).
Complainant
Stevenson licensed these marks to Co-complainant Mold-In Graphic Systems.
Respondent Des Crossley registered the <mouldingraphics.com> domain name on April 19, 2007.
The Parties are competitors in the sale of products and services for use in the rotational molding industry.
The Panel
notes that although Respondent’s electronic submission was received in a timely
manner, Respondent failed to submit a hard copy as required by ICANN Rule
5. The Panel has discretion as to the
amount of weight given to the Response. See Telstra
Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the response is
solely in the discretion of the panelist).
The Panel has decided to accept and carefully consider the
Response. See Bd. of Governors of the Univ. of Alberta v.
Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a
response which was one day late, and received before a panelist was appointed
and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469
(Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on
the merits and not by default and because Complainant has not been prejudiced
in the presentation of its case by the late submission, Respondent’s opposition
documents are accepted as timely.”).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). In the Panel’s opinion, Respondent failed to submit any evidence that the owner of the licensed marks did not exercise quality control over the goods marketed under the license.
Respondent’s domain name fully contains the MOULD-IN GRAPHICS expression, where “mould” (the British spelling) is used instead of “mold” (the American version). Such a minor difference cannot suffice to distinguish the domain name from Complainants’ marks. Also, the addition of the gTLD “.com” is inapt to distinguish both identifiers. The Panel concludes that Respondent’s <mouldingraphics.com> domain name is confusingly similar to Complainants’ MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks)
Respondent claims
that the MOLD-IN GRAPHICS mark is descriptive. However, this Panel is not the
appropriate forum for deciding the validity of Complainants’ marks. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO, Jan. 18, 2005) (finding that a
respondent wishing to contest the continued validity of Complainant’s marks,
must do so through an appropriate administrative and/or judicial avenue with
appropriate jurisdiction over the issue, such as by filing an action in the
USPTO to cancel federal registrations or alternatively instituting federal
litigation; absent respondent having done so and attained a final ruling in its
favor, the panel is constrained to defer to the USPTO’s initial determination
implicit in its having granted a registration); see also Cyberbingo Corp. v.
207 Media Inc., D2005-0714 (WIPO Oct. 4, 2005) (holding that
the proper forum for considering if a trademark lacks distinctiveness is
cancellation or invalidity proceedings).
The Panel concludes that the domain name at
issue is confusingly similar to Complainants’ marks.
Complainants contend that the MOLD-IN
GRAPHICS expression is fanciful and inherently distinctive, while Respondent, relying on a number of printouts
from web sites, claims that this expression, and its equivalent “mould-in
graphics, is essentially descriptive of technical procedures or products for
moulding/molding of decals, designs, or artwork into plastic materials. In
reply, Complainants argue that many of the websites showing texts with the
“mold-in” or “mold-in graphics” expressions belong to rotational molder
customers of Co-complainant using Co-complainant’s graphic transfer products in
their operations, that some of the websites cited by Respondent are sponsored
by marketers of products manufactured by custom rotational molders who are
customers of Complainants, and that some of those websites contain references
to Co-complainant.
After examining the evidence, The Panel notes
that in some of these printouts the expressions are
indeed used descriptively for products and/or technical procedures for
incorporating graphic elements into molded products. While conceding that
Complainants could perhaps have been more
diligent in policing their mark, the Panel notes that in some of the websites, such as <tuffboom.com>,
the expression is used in capital letters, as in a trademark, in a disclaimer
stating “Mold-In-Graphics is not affiliated in any way with
As explained in the next section,
Respondent must have been aware that MOLD-IN GRAPHICS was a trademark belonging
to a third party. The Panel believes that Respondent is using the <mouldingraphics.com> domain name to divert consumers to his own
web site, where Graphic Systems Ltd. is marketing its own goods and services
competing with Complainants. This is not a bona fide use of the domain name at
issue and inconsistent with a right or legitimate interest in the disputed
domain name.
This Panel concludes that Respondent is using the <mouldingraphics.com> domain name
to advertise products and services that compete with Complainants. In Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec.
1, 2003), the respondent used the disputed domain name to divert Internet users
to a competing commercial site. The
panel found that the respondent was taking advantage of the complainant’s mark,
and was not using the disputed domain name within the parameters of Policy ¶¶
4(c)(i) or (iii). Similarly, in Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the
respondent used the disputed domain names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks. The panel concluded that the
respondent was not using the disputed domain names for a bona fide
offering of goods or services, or a legitimate noncommercial or fair use. Since Respondent appears to be using the <mouldingraphics.com> domain name in the same manner as the respondents in Glaxo and Coryn, this Panel concludes that Respondent’s use does not
constitue a bona fide offering of
goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).
In sum, Complainants have established that
Respondent lacks rights to or legitimate interests in the domain name at issue.
In their Additional Submission, Complainants submit as
Exhibit 23 a declaration made by Nicholas Moldan, Complainants’ sales
representative in Europe, Australasia and
Considering the photo of the booth annexed as Exhibit 16 of
the Complaint, and the short distance separating the booths of the Parties, the
Panel concludes that Respondent could not have arrived to his booth without
noticing Complainants’ logo and domain name.
The trade show was held in March
2007, and Respondent registered the domain name few days thereafter, on April
19, 2007. Respondent had the opportunity to do so but does not deny this. The
Panel concludes that Respondent knew or must have known of Complainants'
mark when he registered the disputed domain name.
Respondent claims that he could
not have registered the domain name in bad faith because it consists solely of
a widely used and accepted description of products and services. While the
Panel accepts that there is some merit in this argument, it is not satisfied by
Respondent’s evidence that descriptive uses are so generalized and pervasive in
the relevant trade sector or on the Internet as to allow this Panel to infer
that the expression is devoid of distinctive power. The main factor to be
considered in this case is that Complainants and Respondent are direct
competitors in what appears to be a specialized market, and that adopting a
competitor’s trademark as a domain name is an act in bad faith.
The Panel believes that Respondent registered and used the <mouldingraphics.com> domain name, which is confusingly similar to Complainants’ mark, to attract Internet users to his own web site, as described in Policy ¶ 4(b)(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.”)
This Panel concludes that Respondent registered the <mouldingraphics.com> domain name with the intent to disrupt Complainants’ business by diverting customers to Respondent’s competing website. Indeed, it appears that Respondent has used Complainants’ product designations on the products advertised on Respondent’s website. Therefore, this Panel also finds that Respondent registered and is using the <mouldingraphics.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
The Panel concludes that the third element of the Policy is met.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mouldingraphics.com> domain name be TRANSFERRED
from Respondent to Complainants.
Roberto Bianchi, Chair
Linda Byrne, Panelist
Clive Elliott, Panelist
Dated: August 22, 2007
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