Richard Beilstein / Heavy Duty Ramps, LLC v. Kevin Jakopin / Landsport
Claim Number: FA1601001657777
Complainant is Richard Beilstein / Heavy Duty Ramps, LLC (“Complainant”), represented by Benjamin Imhoff of Andrus Intellectual Property Law, LLP, Wisconsin, United States. Respondent is Kevin Jakopin / Landsport (“Respondent”), represented by David Jakopin of Pillsbury Winthrop Shaw Pittman LLP, California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hdramp.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2016; the Forum received payment on January 22, 2016.
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On January 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hdramp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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@hdramp.com. Also on January 27, 2016, 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 February 22, 2016.
On February 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.
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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 <hdramp.com>, be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Wisconsin Limited Liability Company that has used the HD RAMPS mark in connection with its business of design, manufacture, and sales of ramps since at least January 1, 2005. Complainant registered the HD RAMPS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,835,023, registered October 20, 2015), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Annex J for a copy of Complainant’s USPTO registration. Complainant also owns common law rights in the mark. The <hdramp.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, removes the letter “s” from Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.”
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Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use.
Complainant recites that Complainant and Respondent have a long and bitter history; Canaramp, a predecessor company to Heavy Duty Ramps, was owned by Complainant and supplied products to Landsport. Complainant discovered that his partner at Heavy Duty Ramps had conspired with Landsport to form a new operation, Black Hills Engineering, to cut Canaramp sales and supply Landsport with Complainant’s designs. Complainant founded Heavy Duty Ramps in 2005. In 2007, Respondent took over operations of Landsport. In 2010 and 2013, Complainant and Respondent were involved in patent litigation proceedings. Complainant further alleges that because of the bad blood between them, that Respondent registered the disputed domain and uses its domain to sell products and services that compete directly with Complainant’s business. The Panel is directed to screenshots of Respondent’s resolving webpages.
Complainant lastly alleges that Respondent has registered and is using the disputed domain name in bad faith through the following actions. First, Respondent’s use of the domain disrupts and competes with Complainant’s business because Respondent uses the domain to sell products and services that compete with Complainant’s business. Second, Respondent has intentionally attempted to attract, for commercial gain, Internet users to
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Respondent’s webpage by creating a likelihood of confusion with Complainant’s mark. Third, the look and feel of Respondent’s resolving website makes it clear that it is attempting to pass itself off as Complainant. Fourth, Respondent has engaged in the tactic of typosquatting. Finally, Complainant alleges that Respondent has been aware of Complainant’s existence for years and, as such, registered the disputed domain with actual knowledge of Complainant’s mark.
B. Respondent
Respondent alleges that its registered domain name of <hdramp.com> is not identical or confusingly similar to Complainant’s mark. Complainant asserts common law rights in the HD RAMPS mark since 2005, but it fails to provide any evidence of such common law use. Specifically, Complainant’s Attached Annexes E and K make no mention of the HD RAMPS mark. Moreover, the disputed domain name is comprised of common and generic terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark.
Respondent alleges that Respondent has rights and legitimate interests in the domain, through bona fide usage of the mark. The term “HD ramps” is commonly used in Respondent and Complainant’s industry to refer to “heavy duty ramps.”
Respondent contends that Respondent did not register and is not using the domain name in bad faith. Respondent manufactures and sells aluminum ramps, which are used for heavy duty applications onto which products such as cars, trucks, and helicopters can be placed. Respondent alleges that competition between the two corporations is not alone evidence of bad faith. The term “HD” is not exclusively descriptive of Complainant’s business.
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Respondent lastly alleges that Complainant has made a bold face attempt to obtain Respondent’s legitimate domain name of <hdramp.com> in a case of Reverse Name Hijacking under Rule 15 of the UDRP rules.
(1) The domain name <hdramp.com> 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.
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.
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Panel is charged with the twin determinations of whether Complainant has rights in a trademark, as well as a determination of whether Respondent’s disputed domain name of <hdramp.com> is identical or confusingly similar to Complainant’s trademark.
The HD RAMPS marks have been continuously used by Complainant in connection with its business of design, manufacture, and sales of ramps since at least January 1, 2005. As persuasive evidence in support of its contention, Complainant has provided its LLC registration (Attached Annex B), which shows a “registered effective date” of March 23, 2005, and its USPTO registration for the HD RAMPS mark (Attached Annex J), which reflects a first use in commerce date of January 1, 2005. This continued usage demonstrates Complainant’s common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Accordingly, the Panel finds that Complainant has demonstrated common law rights to the HD RAMPS mark per Policy ¶ 4(a)(i).
Panel has reviewed Complainant’s registration of the HD RAMPS mark with the USPTO (Reg. No. 4,835,023, registered October 20, 2015) as evidenced by Attached Annex J. Panel finds that trademark registrations with the USPTO
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suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). 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)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Panel next assesses whether the disputed domain name of <hdramp.com> is identical or confusingly similar to Complainant’s trademark.
In the case at issue, the <hdramp.com> domain name wholly incorporates Complainant’s mark, removes the letter “s” from Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the gTLD “.com.” Previous panels have found evidence of confusing similarity pursuant to Policy ¶ 4(a)(i) where a respondent removes the letter “s” from a complainant’s mark or eliminates the spacing between the words of a complainant’s 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also determined that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys.,
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FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). For these reasons, the Panel finds that Respondent’s disputed domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the domain is comprised of common and descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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
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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 has propounded a convincing argument that Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that Complainant’s Attached Annex H of the WHOIS information, merely lists “Kevin Jakopin / Landsport” as registrant. Further, Complainant has not granted Respondent any license or authorization to use Complainant’s mark. And in fact, Respondent is a competitor of Complainant, as evidenced by their dueling websites. As such, the Panel finds no basis in the available record to find that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Panel thus finds that Complainant has made a prima facie case and so the onus
shifts to Respondent to show that it has rights or a legitimate interest in the
disputed domain name.
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Respondent has not provided any evidence that Respondent is commonly known by the disputed domain name or any variant of Complainant’s mark.
Respondent has provided no reliable evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Panel’s view of
screenshots of Respondent’s resolving webpages (Attached Annexes K and L) show that Respondent uses its disputed domain name to sell products and
services that compete directly with Complainant’s business. Previous panels have held that a respondent’s use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).”). This Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Therefore, Respondent has not satisfied its resultant burden to show that it does have rights and legitimate interests in the domain name of <hdramp.com.>
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Complainant has provided compelling evidence that Respondent and
Complainant are competitors in the circumscribed ramp market and have been
aware of each other’s existence for years. For example, Complainant’s actions
against Respondent for patent and copyright infringement exemplify their
contentious history. And contemporaneous to the registration and use of the
<hdramp.com> domain name, Respondent expressly identified Complainant as
“HD Ramps” as shown by Complainant’s Attached Annex C1.
The Panel has also reviewed Attached Annexes A, E, F, I, K, and L of copies of Complainant’s declaration, screenshots of Complainant’s resolving webpages, and screenshots of Respondent’s webpages, respectively. As a result, Panel has concluded that Complainant’s and Respondent’s competitive and litigious history is proof indeed that Complainant and Respondent were well acquainted players in the limited ramp market, well before Respondent registered the confusingly similar domain name of <hdramp.com> on March 7, 2014. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, this Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
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Respondent’s domain name of <hdramp.com> resolves to a splash page that advertises the same type of goods offered under Complainants mark, according to Panel’s view of Complainant’s Attached Annex F. This splash page directs the consumer to the Respondent’s website at Landsport.com, as shown by Panel’s view of Complainant’s Attached Annex I. Thus, Respondent’s use of the domain disrupts and competes with Complainant’s business because Respondent uses the domain to sell products and services that compete with Complainant’s business. Previous panels have concluded that a respondent’s use of a domain to sell products and/or services that compete directly with a complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Panel notes, from a review of the screen shots of both Complainant and Defendant, that competing goods of heavy duty ramps are offered by both
vendors. These dueling screen shots are evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s webpage by creating a likelihood of confusion with Complainant’s mark. Past panels have determined that the use of domain by a respondent to sell competing products and services is evidence of bad faith registration and use
per Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25,
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2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). For this reason, the Panel finds that Respondent registered and is using the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Panel concurs with Complainant that the look and feel of Respondent’s resolving website makes it clear that it is attempting to pass itself off as Complainant. The Panel’s attention was directed to pages 9 and 10 of Complainant’s Attached Amended Complaint, wherein Complainant provided a side-by-side comparison of Complainant and Respondent’s resolving webpages. Here, it is obvious that Respondent’s top banner, top banner colors, pictures, and text are strikingly similar to Complainant’s. Prior panels have held that a respondent demonstrates bad faith registration and use where it attempt to pass itself off as a complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent has engaged in the tactic of typosquatting by simply removing the letter “s” from Complainant’s HD RAMPS mark, in order to register its domain name of <hdramp.com>. Previous panels have decided that a respondent’s mere removal of a letter from a complainant’s mark is considered typosquatting and is evidence of bad faith. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA
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328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii).
Reverse Domain Name Hi-jacking
Respondent has asserted that Complainant’s within Complaint constitutes an
effort to engage in reverse domain name hi-jacking of <hdramp.com>. As Panel
has ruled that Complainant has legitimate rights in Respondent’s confusingly
similar domain name, which wholly incorporates Complainant’s trademark,
Respondent’s claim is denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hdramp.com> domain name be TRANSFERRED from Respondent to Complainant.
Further, Respondent’s request that Complainant be adjudged liable for reverse domain name hi-jacking under the UDRP Rules, is denied.
Carol Stoner, Esq. Panelist
Dated: March 09, 2016
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