D B Industries, LLC d/b/a Capital Safety USA v. ICS INC.
Claim Number: FA1501001602653
Complainant is D B Industries, LLC d/b/a Capital Safety USA (“Complainant”), represented by Stephen R. Baird of Winthrop & Weinstine, P.A., Minnesota, United States. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalsaftey.com>, registered with Tucows Domains Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On January 30, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <capitalsaftey.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 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@capitalsaftey.com. Also on January 30, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends that is uses the CAPITAL SAFETY mark to identify its fall protection equipment for fall restraint and fall arrest, namely, hooks; maintenance and repair of fall protection equipment, etc. Complainant has registered CAPITAL SAFETY with the United States Patent Office (“USPTO”) (e.g., Reg. No. 4,635,085, registered Nov. 11, 2014), which demonstrates rights in the mark.
Significantly, Complainant also alleges that it enjoys common law rights in and to the mark.
Complainant also alleges that the <capitalsaftey.com> domain name is confusingly similar to the CAPITAL SAFETY trademark as the domain name misspells the word “safety,” and adds the “.com” gTLD to the CAPITAL SAFETY trademark.
Complainant alleges that Respondent is not commonly known by the disputed domain name or any variant of CAPITAL SAFETY.
Complainant alleges that Respondent is not making a bona fide offering of goods or services using the disputed domain name nor a legitimate noncommercial or fair use. The disputed domain name resolves to a page listing a series of hyperlinks to third-party websites, many of which are directly competitive with the CAPITAL SAFETY trademark.
Complainant further alleges that the Respondent’s offer to sell a domain at an excessive rate constitutes evidence of bad faith registration and use per Policy ¶ 4(b)(i). Respondent has a history of bad faith, as demonstrated by prior UDRP proceedings, which constitutes a pattern pursuant to Policy ¶ 4(b)(ii).
Complainant finally alleges that the Respondent is likely receiving click-through fees by directing users via the confusingly similar domain name to various commercial links, including those of Complainant’s competitors and that Respondent is exhibiting typosquatting behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on December 4, 2007.
As the Respondent failed to file a Response, the Complainant’s allegations are deemed true unless clearly unreasonable. As such, the Complainant has satisfied the elements of Paragraph 4 of the Policy and the disputed domain name should be transferred.
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 to own the CAPITAL SAFETY mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,635,085 registered Nov. 11, 2014; filed Oct. 2, 2012). Such registrations confer rights in the trademark dating back to October 2, 2012, the date on which Complainant first filed for trademark protection with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
However, the Respondent’s December 4, 2007 registration of the disputed domain name predates Complainant’s earliest USPTO filing. Previous panels have found, however, that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the trademark under Policy ¶ 4(a)(i). Instead, a complainant may establish its rights of priority by using the trademark in commerce and, thereby, establish its rights through the common law . See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in a mark.).
Previous panels have held that complainants may establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant alleges that it has used the CAPITAL SAFETY mark in connection with fall arrest and protection equipment, training services, and consulting services since 1978. Complainant asserts that it has registered and used the <capitalsafety.com> domain name in connection with its services since May 4, 2001. See Comp., at Attached Ex. 4. Further, Complainant contends that has enjoyed significant growth and success, and the public has come to recognize Complainant as such. Based on the provided evidence, the CAPITAL SAFETY mark has garnered the requisite secondary meaning for a common law trademark, and therefore the Complainant has satisfied Policy ¶ 4(a)(i).
From the Complainant’s Complaint, it is not clear how much public recognition and/or secondary meaning was established prior to December 4, 2007, the date the disputed domain name was registered; however, as no Response was filed in this matter, the Panel accepts as true the Complainant’s allegations. If it exists, the Panel would expect to see clear evidence of secondary meaning in CAPITAL SAFETY that PRECEDES Respondent’s registration of the disputed domain name, not just mere allegations. However, given the totality of the circumstances of this case, it is not unreasonable to believe Complainant’s allegations regarding secondary meaning of the common law trademark prior to Respondent’s registration of the disputed domain name.
Furthermore, even if the Complainant had clearly established that it had secondary meaning in the trademark prior to the registration of the disputed domain name, the Complainant nowhere explains any justification of why it delayed for a period of over seven years before bringing a complaint under the UDRP or even filing a demand letter with the Respondent. Although strict application of the laches doctrine is beyond the scope of the UDRP, sometimes, the delay that Complainant engaged in prior to bringing a Complaint under the UDRP is relevant. To illustrate, the panel in City Bank v. Domain Admin / Inavit, Inc., FA 1564337 (Nat. Arb. Forum July 21, 2014), while not reaching laches, wrote, “lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. As laches is a defense mechanism for Respondent which finally affects the arguments regarding the elements of rights or legitimate interests in the disputed domain name and bad faith registration and use, the delay should be taken into account in those elements.”); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
As no Response was filed in the present case, it is not clear that the Respondent relied in any way to the Complainant’s delay. Reliance on the delay is a principle factor for prior Panels when considering something that appears like laches. From the Complainant’s own admission in its Complaint, nothing transpired for over seven years between the Respondent’s registration of the disputed domain name and the Complainant’s initial demand letter. See Complaint at 3. Although the Panel finds both the delay and the lack of any evidence explaining the delay to be unreasonable, as there is no evidence that the Respondent relied on this delay in any way and, given the totality of the circumstances, the obvious delay should not hinder Complainant from asserting its trademark rights herein.
Complainant argues that the <capitalsaftey.com> domain name is confusingly similar to the CAPITAL SAFETY trademark. Specifically, Complainant asserts that the disputed domain name is a misspelling of the trademark. Complainant argues that the disputed domain name simply transposes the letters ‘t’ and ‘e.’ However, “[t]ransposition of letters in [a] trademark does not distinguish the domain name.” See RingCentral, Inc. v. Augustine Rivera, FA 1562126 (Nat. Arb. Forum July 1, 2014). Further, Complainant contends that the addition of the gTLD “.com” is irrelevant to the confusingly similar analysis. Under similar circumstances, previous panels have determined that a disputed domain name comprised of a misspelling of a mark less spacing, and the addition of a gTLD were confusingly similar under Policy ¶ 4(a)(i). See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Accordingly, the Panel finds that the <capitalsaftey.com> domain name is confusingly similar to the CAPITAL SAFETY trademark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <capitalsaftey.com> domain name. First, Complainant points out that Respondent is not commonly known by the disputed domain name or any variant of CAPITAL SAFETY. The Panel notes that the WHOIS information merely lists “ICS INC.” as registrant. As Respondent has failed to add any evidence for the Panel’s consideration, the Panel finds no basis in the available evidence to find that the Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Next, Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name resolves to a page listing a series of hyperlinks to third-party websites, many of which are directly competitive with the CAPITAL SAFETY mark. Complainant alleges that this is a commercial use rather than a noncommercial use; that presumably, Respondent is generating revenue from the promoted links when clicked by Internet users. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Respondent’s use of pay-per-click links that resolve to websites in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). Therefore, the Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant contends that the disputed domain name resolves to a page that, in addition to a series of hyperlinks in direct competition with Complainant, includes a general offer to sell the domain for the price of $12,709, which well exceeds the out-of-pocket costs associated with the registration. See Comp., at Attached Ex. 7. Complainant argues that a listed offer to sell a domain at an excessive rate constitutes evidence of bad faith registration and use per Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Respondent’s general offer of the disputed domain name for a price that well exceeds the costs associated with registration is evidence of bad faith registration and use per Policy ¶ 4(b)(i).
Complainant asserts that Respondent has a history of bad faith, as demonstrated by prior UDRP proceedings, which constitutes a pattern pursuant to Policy ¶ 4(b)(ii). Complainant argues that this history of bad faith permeates the instant Panel’s bad faith analysis. Prior panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent has been subject to numerous adverse UDRP decisions. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel notes that Complainant has cited a list of UDRP cases in which Respondent was found in bad faith. Compl., at Attached Ex. 9; e.g., CHEAPCARIBBEAN.COM v. ICS INC., FA 1582257 (Nat. Arb. Forum Nov. 4, 2014).
In light of Respondent’s demonstrated pattern of bad faith registration and use of domain names, the Panel finds evidence of Respondent’s bad faith registration and use at present pursuant to Policy ¶ 4(b)(ii).
Furthermore, as Respondent is likely receiving click-through fees by directing users via the confusingly similar domain name to various commercial links, including those of Complainant’s competitors, Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv). Prior panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent is using a confusingly similar domain name to feature competing or related pay-per-click hyperlinks. The Respondent’s conduct falls within the parameters of Policy ¶ 4(b)(iv) and, as such, amounts to bad faith use and registration of the disputed domain name.
Finally, Complainant alleges that Respondent is exhibiting typosquatting
behavior. Complainant contends that by transposing the letters ‘t’ and ‘e’ in the word “safety,” Respondent is attempting in bad faith to benefit from the typing mistakes of Internet users. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). The Panel agrees that the Respondent’s typosquatting behavior is evidence of bad faith registration and use per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <capitalsaftey.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: March 3, 2015
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