Proto Labs, Inc. v. James Clelland
Claim Number: FA1301001479560
Complainant is Proto Labs, Inc. (“Complainant”), represented by Jeffrey D. Shewchuk of SHEWCHUK IP SERVICES, LLC, Minnesota, USA. Respondent is James Clelland (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain nameat issue is <protolabcnc.com>, registered with Hostopia.com Inc., d/b/a Aplus.net.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2013; the National Arbitration Forum received payment on January 10, 2013.
On January 10, 2013, Hostopia.com Inc, d/b/a Aplus.net confirmed by e-mail to the National Arbitration Forum that the <protolabcnc.com> domain name is registered with Hostopia.com Inc, d/b/a Aplus.net and that Respondent is the current registrant of the name. Hostopia.com Inc, d/b/a Aplus.net has verified that Respondent is bound by the Hostopia.com Inc, d/b/a Aplus.net 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 January 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2013 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@protolabcnc.com. Also on January 11, 2013, 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.
Respondent submitted an Extension Request in regards to filing a Response January 30, 2012. On January 31, 2013, the Forum granted an extention to file a Response until February 11, 2013. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.
1. Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the PROTO LABS mark (Reg. No. 3,690,457 registered on Sept. 29, 2009) as well as registration with the European Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 7,242,696 registered on May 5, 2009). Complainant uses this mark in manufacturing custom parks through a computer numerical control (“CNC”) process.
2. The addition of the generic word “CNC” to the PROTOMOLD mark is insufficient to avoid any confusion. The term CNC is commonly used in the industry and refers to the processes Complainant uses in its business.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.
3. Complainant is not affiliated with Respondent in any way. Complainant has not authorized Respondent to use its mark.
4. Respondent is using the domain name to allegedly provide CNC services that are in direct competition with those services Complainant offers under the PROTO LABS mark. Respondent is using sales figures and business metrics that appear to suggest Respondent is a much larger player in the industry than it really is, suggesting to Internet users that Respondent is the Complainant.
Policy ¶ 4(a)(iii): Respondent registered and is using the domain name in bad faith.
5. Similarities between Complainant’s domain names and the disputed domain name make it likely Internet users will be deceived into believing Complainant is affiliated or connected with the <protolabcnc.com> domain name. The content of the website deliberately seeks to confuse Respondent’s use of the domain name with the business conducted by Complainant under its PROTO LABS mark.
6. It is inconceivable that Respondent did not have actual knowledge of Complainant’s rights in the PROTO LABS mark at the time of registering the domain name.
B. Respondent’s Contentions
1. Respondent did not submit a Response. The Panel notes that in Respondent’s Extension Request to the Forum, Respondent contends that both Respondent and Complainant sought to resolve the dispute outside of arbitration.
2. Respondent claims that Complainant stopped responding to his attempts to negotiate the dispute.
3. The Panel notes that the <protolabcnc.com> domain name was registered on April 14, 2011.
1. Respondent’s <protolabonc.com> domain name is confusingly similar to Complainant’s PROTOMOLD mark.
2. Respondent does not have any rights or legitimate interests in the <protolabonc.com > domain name.
3. Respondent registered or used the <protolabonc.com> domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims that it owns USPTO trademark registrations to the PROTO LABS mark (e.g. Reg. No. 3,690,457 registered on Sept. 29, 2009) as well as trademark registrations with Europe’s OHIM (E.g. Reg. No. 7,242,696 registered on May 5, 2009). Complainant contends that it uses this mark in manufacturing custom parks through a computer numerical control (“CNC”) process. The Panel agrees that Complainant’s USPTO and OHIM registrations satisfy its Policy ¶ 4(a)(i) showing of rights in this dispute because both Complainant and Respondent are located in the United States. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant next argues that the addition of the generic word “CNC” to the PROTOMOLD mark is insufficient to avoid any confusion. Complainant also states that the term CNC is commonly used in the industry and refers to the processes Complainant uses in its business. The Panel notes that the domain name incorporates the terms “protolab” (a misspelling of the PROTO LABS mark with the deletion of the spacing), “cnc,” and the generic top-level domain (“gTLD”) “.com”—contrary to Complainant’s assertion, there is no instance of the PROTOMOLD mark in this domain name. The Panel agrees that merely deleting the letter “s” from a registered mark, and adding the industry-specific descriptive acronym “cnc” does nothing to distinguish the <protolabcnc.com> domain name from the PROTO LABS mark. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel further agrees that both the addition of the gTLD “.com” and the deletion of the spacing in the PROTO LABS mark does nothing to distinguish the domain name from the mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). For these reasons the Panel finds that Respondent’s <protolabcnc.com> domain name is confusingly similar to the PROTO LABS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that it is not affiliated with Respondent in any way. Complainant claims that it has not authorized Respondent to use its mark. The Panel notes that the <protolabcnc.com> domain name’s WHOIS information lists one “James Clelland” as the registrant of the name. Previous panels have found that a respondent is not commonly known by a disputed domain name when no information in the record can suggest the respondent is commonly known by the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel agrees and conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is using the domain name to allegedly provide CNC services that are in direct competition with those services Complainant offers under the PROTO LABS mark. Complainant believes that Respondent is using sales figures and business metrics to inflate its size and sales power in the industry, suggesting to Internet users that Respondent is the Complainant. The Panel notes that the domain name resolves to a website purporting to offer Internet users services nearly identical to those Complainant offers under the PROTO LABS mark. See Complainant’s Ex. I. Previous panels have found that whether a respondent intends to pass itself off as a complainant, or merely compete directly with a complainant’s business, neither use constitutes a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel agrees that Respondent’s use of the <protolabcnc.com> domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
Complainant contends that the similarities between Complainant’s PROTO LABS mark and related websites and the disputed domain name make it likely that Internet users will be deceived into believing Complainant is affiliated with the <protolabcnc.com> domain name. Complainant contends that the content of the website seeks to confuse Respondent with Complainant’s PROTO LABS mark and related business. The Panel notes that the disputed domain name purports to offer goods nearly identical to those offered under the PROTO LABS mark, and requests Internet users to supply personal information to receive a “quote to you within 24 hours.” See Complainant’s Ex. I. Previous panels have concluded that it is bad faith use and registration for a respondent to operate a confusingly similar disputed domain name to lure Internet users to a business that competes directly with a complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel agrees that Respondent has registered and used the <protolabcnc.com> domain name to confuse Internet users into believing they are doing business with Complainant in a Policy ¶ 4(b)(iv) act of bad faith.
Complainant also argues that the similarities between the <protolabcnc.com> domain name and the services offered under the PROTO LABS mark make it inconceivable that Respondent did not have actual knowledge of Complainant’s rights in the PROTO LABS mark at the time of registering the domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <protolabcnc.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 3, 2013
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