Scaffolds USA, Inc. v. Steve Sanguedolce / Scaffolding Today Inc dba Scaffold USA
Claim Number: FA1511001649302
Complainant is Scaffolds USA, Inc. (“Complainant”), Florida, United States. Respondent is Steve Sanguedolce / Scaffolding Today Inc dba Scaffold USA (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scaffold-usa.com>, registered with Volusion, 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.
Francine Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2015; the Forum received payment on November 22, 2015.
On November 30, 2015, Volusion, Inc. confirmed by e-mail to the Forum that the <scaffold-usa.com> domain name (the “disputed domain name”) is registered with Volusion, Inc. and that Respondent is the current registrant of the name. Volusion, Inc. has verified that Respondent is bound by the Volusion, 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 December 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@scaffold-usa.com. Also on December 1, 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.
A timely Response was received and determined to be complete on December 17, 2015.
Complainant submitted an Additional Submission on December 21, 2015.
On December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant deals in the marketing and sale of scaffolding online under the name “Scaffold USA” on its website at www.scaffoldusa.com. The Complainant’s domain name <scaffoldusa.com> was registered on October 23, 2001, and has been used for the sale of scaffolding online since January 15, 2011.
The disputed domain name <scaffold-usa.com>, registered on September 27, 2013, is identical with Complainant’s trade mark SCAFFOLD USA (paragraph 4(a), the Policy).
The SCAFFOLD USA mark is a registered mark owned by Complainant and its <scaffoldusa.com> was registered and has been in use by Complainant for several years before the disputed domain name was registered (paragraph 4(b), the Policy).
Respondent registered the disputed domain name to intentionally attract customers for commercial gain by the likelihood of confusion with Complainant’s <scaffoldusa.com> domain name which was already by then a well-known domain name for purchasing scaffolding online. Complainant suffered incidents where customers have tried to contact Complainant but ended up being in contact with Respondent.
B. Respondent
Respondent stated in a reply by email that the only similarity between Respondent and Complainant is that both companies sell scaffolding in the United States but that is where the similarity ends. Complainant is a distributor for Alufase Aluminium Scaffolding whereas Respondent is owned and operated by Scaffolding Today, Inc.; Respondent does not sell Alufase Aluminium Scaffolding; the target audience of Respondent is different from that of Complainant; the parties sell incompatible products; and Complainant is a distributor whereas Respondent is a manufacturer.
“Scaffold-USA” is an alternate name of Scaffolding Today, Inc. The business name and disputed domain name were selected without prior knowledge of the existence of “ScaffoldUSA.com”. There was therefore no intent of bad faith on Respondent’s part. The word “scaffold” is a broad word that applies to any industry or market; the word “USA” is a broad word that indicates to Internet visitors that Respondent is based in the United States; the hyphen in the disputed domain name was “added to create contracts; to give the impression that the visitor is contacting a ‘Scaffold’ company based in the ‘USA’”. There has never been an incident where a customer contacted Respondent by mistake or, while being confused, thought they were contacting Complainant.
C. Additional Submissions
Complainant asserts that:
(i) It is actively working on expanding the product portfolio with different types of scaffolding products, such as ring lock and frame scaffolding.
(ii) A big order from the U.S. Military was almost lost due to the confusing similarity in the domain names. Complainant also received calls from customers referring to products on Respondent’s website.
(iii) Both parties target the same audience, namely the same U.S. market; and the type of scaffolding offered by Complainant is also offered by Respondent. Product compatibility between the respective brands is irrelevant.
Respondent submits that it has a legitimate interest in the disputed domain name and the purchase/registration thereof was not in bad faith. Scaffolding Today, Inc., the parent company of Respondent, was established on February 14, 2000. Respondent was established on September 20, 2013. It has spent considerable time, money and effort to establish itself; Respondent is a legitimate company with three warehouse facilities in Houston, TX, Philadephia, PA, and North Bergen, NJ.
(a) Complainant has not established it has rights in the trade mark “SCAFFOLD USA”. Complainant has therefore failed to establish that the disputed domain name is confusingly similar to a trade mark in which Complainant has rights.
(b) Complainant has not established that Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) Complainant has not established that the disputed domain name has been registered and used 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.
Complainant has asserted that it has used the SCAFFOLD USA mark in connection with its business since October 23, 2001 and that the trade mark has been used in relation to the sale of scaffolding online since January 15, 2011, but failed to provide any evidence in support. Contrary to its claim that SCAFFOLD USA is a registered trade mark, the Panel notes that the trade mark was not yet registered as of the end of December 2015. Complainant’s pending application for SCAFFOLD USA was filed only on June 9, 2015. Whilst the registration of a trade mark is not a requirement for one to satisfy paragraph 4(a)(i) of the Policy, Complainant has not satisfied its burden of showing with evidence that it does indeed have common law rights in the trade mark SCAFFOLD USA. Bare assertions of trademark rights will not suffice for the purposes of satisfying the first element of paragraph 4(a) of the Policy.
The first element of paragraph 4(a) of the Policy has therefore not been satisfied.
Having found that the first element of paragraph 4(a) of the Policy has not been satisfied by Complainant, it is not necessary for the Panel to analyze the other two elements of the Policy in making a determination if Complainant has established its case under the Policy. However, the Panel would add the following observation in relation to paragraph 4(a)(ii) of the Policy. Complainant has to satisfy a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name (see Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006)). The Panel finds that Complainant has not met this requirement. Since “scaffold” and “USA” are generic, broad terms which describe a product and geographic location, respectively, Complainant has not been established with evidence that Respondent lack rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has therefore not been satisfied.
Complainant has also not shown with evidence that Respondent registered and has used the disputed domain name in bad faith. The mere assertions of bad faith are insufficient for Complainant to satisfy the requirement of paragraph 4(a)(iii) of the Policy. On the face of it, Respondent appears to have rights or legitimate interests in the disputed domain name. There is no evidence to support Complainant’s claim that its domain name <scaffoldusa.com> is well known for the purchasing of scaffolding online and neither is there evidence that Respondent was aware of Complainant at the time the disputed domain name was registered.
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 <scaffold-usa.com> domain name REMAIN WITH Respondent.
Francine Tan, Panelist
Dated: January 10, 2016
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