DoorKing, Inc. v. United Marketing Group, Inc.
Claim Number: FA1402001546010
Complainant is DoorKing, Inc. (“Complainant”), represented by Jeffrey E. Faucette of Skaggs Faucette LLP, California, USA. Respondent is United Marketing Group, Inc. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <doorkings.com> and <dksopeners.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons, Houston Putnam Lowry, and Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2014; the National Arbitration Forum received payment on February 27, 2014.
On February 28, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <doorkings.com> and <dksopeners.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2014 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@doorkings.com, postmaster@dksopeners.com. Also on February 28, 2014, 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 March 20, 2014.
Both parties made timely Additional Submissions compliant with Supplemental Rule 7.
On March 27, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), Houston Putnam Lowry, and Paul M. DeCicco as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in DOORKING and DKS and alleges that the disputed domain names are confusingly similar to the respective trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
Complainant asserts in particular that the disputed domain names direct users to Respondent’s website where they are presented, not only with the choice of goods made by Complainant, but with 12 other manufacturers, thus resulting in potential customers of Complainant potentially being led to purchase from a competitor of Complainant.
B. Respondent
Respondent broadly denies those allegations and submits, in particular, that it has not used the disputed domain names in bad faith. It submits that the use is distinguished from earlier instances where bad faith has been found under the Policy because the disputed domain names resolve to a “showroom area” of Respondent’s website which features only those goods made by Complainant.
Further, Respondent refers Panel to an earlier UDRP decision involving the same parties and said to be based on the same facts and submits that these Administrative Proceedings represent re-filing of a case that has already been arbitrated and where the complaint was denied.
C. Additional Submissions
Both parties made Additional Submissions which Panel has taken into account and which are referred to as required in the Discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant makes, advertises and sells secure access control systems for buildings (“Complainant’s goods”) by reference to the trademarks DOORKING and DKS;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 4,307,588 registered March 26, 2013 for the trademark DOORKING and USPTO Reg. No. 4,333,595 registered May 14, 2013 for the trademark DKS;
3. Complainant’s goods have been sold by reference to the trademark DOORKING since 1951 and by additional reference to the trademark DKS since 2000;
4. Respondent is a reseller of secure access systems including Complainant’s products under the assumed business name, “Elite Gates Supplies”, having its own website (“Respondent’s website”);
5. The disputed domain names were registered on February 17, 2005;
6. The <doorkings.com> domain name takes Internet users to that part of Respondent’s website where Complainant’s goods are advertised for sale;
7. The <dksopeners.com> domain name resolves to the same online location;
8. There is no evidence of a contractual relationship between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating the trademarks.
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 a 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.
Respondent refers the Panel to DoorKing, Inc. v. United Marketing Group, Inc., WIPO Case No. D2012-0952 (“the WIPO case”) and submits that these new Administrative Proceedings represent re-filing of a dispute that has already been arbitrated.
Respondent states that the Panel in the WIPO case denied the complaint because it found that Complainant had failed to establish trademark rights. The WIPO case did not make any findings adverse to Respondent on the issues of legitimate interests or bad faith.
The Panel understands that Respondent relies on the WIPO case (a) as a basis for Panel to find that Complainant is somehow estopped from pursuing a second complaint on the same facts, and (b) as already determinative of the question of Complainant’s asserted trademark rights.
Respondent states that beyond the new trademark registration there has been no change to the facts to warrant a reassessment of this dispute. However Panel considers that very matter is likely to alter the factual matrix such that these proceedings should continue and so Panel turns to a closer examination of the issue, mindful that some of its observations are of relevance to the question of trademark rights under paragraph 4(a)(i) of the Policy and so will not be repeated later.
Complainant asserts trademark rights in the terms DOORKING and DKS. It is well established that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Moreover, the Policy does not distinguish between registered and unregistered trademark rights and so-called common law trademark rights may accrue through use and reputation (see SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)).
According to the evidence, Complainant had registered trademark rights, lost them through inadvertence, and regained them. Complainant explains that from 1954 to June 23, 2007, it had a valid and subsisting USPTO registration for DOORKING which through error was allowed to lapse.
Complainant claims it has continuously used the trademark DOORKING since 1951. Complainant’s goods are sold throughout the United States and to some countries abroad. Complainant states that its annual turnover is USD40,000,000 and that it spends over one million dollars annually to advertise its products at trade shows. Complainant states that it has also used the trademark DKS since 2000.
The WIPO case did not consider whether or not Complainant had common law trademark rights in DOORKING or DKS. Common law rights were not pressed by Complainant in the earlier proceedings. At the time of the WIPO case, Complainant’s original USPTO registrations had ceased to have effect and Complainant merely averred to its pending replacement applications. The WIPO panel correctly found that those pending applications did not, of themselves, show trademark rights. The WIPO panel was not compelled to consider Complainant’s common law position albeit that it might have been open for it to have done so (see Dept.of Gen. Serv., State of Maryland v. Domain Privacy Group, FA 1488524 (Nat. Arb. Forum April 2, 2013) finding that cancelled trademark registrations do not cancel trademark rights).
This Panel is not in the position to know the detail of the WIPO case and notes only that the landscape has now altered since the USPTO applications before the WIPO panel have now matured to into the above referenced registrations. Moreover, there is compelling evidence before this Panel of common law rights in both trademarks but that for reasons which follow a conclusive finding on that point is unnecessary.
Therefore the Panel finds that Complainant is not estopped from continuing with these proceedings and that Panel is properly seized of the matter.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel has already found Complainant to have trademark rights in the terms DOORKING and DKS through (at least) registration. The Panel also finds that the disputed domain names are confusingly similar to the respective trademarks. Discounting the wholly non-distinctive gTLD, “.com”, the comparisons reduce to the trivial difference between “doorkings” and the trademark DOORKING, whilst the term “dksopeners” simply adds, within the context of the relevant goods, the descriptive word “openers” to the DKS trademark (see, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding the <amextravel.com> domain name confusingly similar to Complainant’s AMEX trademark 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); see, finally, T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant has satisfied the first element of the Policy in respect of both disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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 or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information identifies Respondent as “United Marketing Group, Inc.” and so there is no prima facie evidence that Respondent might be commonly known by either of the disputed domain names. On the contrary there is direct evidence from Respondent that it is known by the d/b/a name, “Elite Gates Supplies”. Given the foregoing the Panel concludes that the Respondent is not commonly known by the at-issue domain names pursuant to paragraph 4(c)(i).
There is no evidence that Respondent has any relevant trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant expressly denies any authorization.
Complainant provides evidence that the domain names resolve, directly or indirectly as the case may be, to Complainant’s website which promotes not only Complainant’s goods, but also the goods of third parties which compete, in greater or lesser extent, with Complainant’s goods, including, “Viking access”, “FAAC”, “Liftmaster”, “Multicode”, “Linear”, “Allen Bradley”, “EMX”, “Miller Edge”, “Reno”, “IEI” and “Omron.” Panels previously considering this aspect of the UDRP have found that a respondent has no rights or legitimate interests in a domain name where it is used to resolve to a website displaying and selling products of complainant’s as well as third-party products that compete with complainant (see, for example, Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003); Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003)).
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names.
Respondent states that it operates under the name “Elite Gates Supplies” name where it advertises and sells a variety of security equipment. Respondent contends that it has not engaged in a so-called “bait and switch” scheme. Instead, Respondent states that the disputed domain names resolve to “showroom areas” of Respondent’s website devoted exclusively to Complainant’s goods. Those goods cannot be directly compared with the goods of other makers also sold from Respondent’s website.
The Panel notes that much of the Response and the Additional Submissions of both sides is concerned with the possible application of the criteria for bona fide in related circumstances which were first laid down in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Aside from the observation that in this instance the Panel is not dealing with an authorized reseller (as was the respondent in that case), Panel regards the detailed discussion of that case by the parties as a distraction from the simple application of paragraph 4(a)(ii) of the Policy.
The only issue for determination is whether Respondent has used the disputed domain names in connection with a bona fide offering of goods in the broader sense that it has a legitimate right to use the domain names in the manner it has done. That exercise requires examination of the efficacy of the showroom area devoted to Complainant’s goods as a means of guarantee that users, interested only in Complainant’s goods, are not lured to investigate competitive products at the same online location.
Complainant claims that Internet users looking for DOORKING branded products are led to a websites where they are presented with 12 other manufacturers, thus resulting in potential customers of Complainant possibly being led to purchase from a different manufacturer.
That is a blunt overstatement of the real state of the Respondent’s website. Nevertheless, even within the confines of the “Doorking showroom” there remains a marginal list of other manufacturers’ names. That practice fell short of good faith use. Whether it is limited to cases of authorized resellers or not, what underpins the thinking of the panel in the Oki Data case is that those who use another’s trademark, even to promote genuine goods, must do so with great care.
Therefore, the Panel finds that Respondent has no rights or interests in the disputed domain names. Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to demonstrate the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Given the preceding analysis, the Panel finds that Respondent’s conduct is caught squarely by subparagraphs 4(b)(iii) and (iv) above and concludes that Respondent’s registration and use of both disputed domain names to be in bad faith.
Having established all three elements required under the ICANN Policy in respect of both domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doorkings.com> and <dksopeners.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair)
Houston Putnam Lowry
Paul M. DeCicco
Panelists
April 8, 2014
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