DECISION

 

Terrapin Spa Covers, LLC d/b/a Texas Spa Covers v. BRIAN REJNIAK / ORANGE COUNTY POOL & SPA

Claim Number: FA1603001663931

 

PARTIES

Complainant is Terrapin Spa Covers, LLC d/b/a Texas Spa Covers (“Complainant”), Texas, USA.  Respondent is BRIAN REJNIAK / ORANGE COUNTY POOL & SPA (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <texasspacover.com>, registered with FastDomain Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 3, 2016; the Forum received payment on March 3, 2016.

 

On March 5, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the <texasspacover.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name.  FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 March 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@texasspacover.com.  Also on March 7, 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 March 8, 2016.

 

On March 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant uses the TEXAS SPA COVERS mark in connection with its business manufacturing and selling spa covers. Complainant has registered the TEXAS SPA COVERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,810,349, first use in commerce January 2, 2003, filed October 2, 2013, registered September 8, 2015), which demonstrates rights in the mark. See Compl., at Attached Annex 2. Respondent’s <texasspacover.com> domain name is confusingly similar to the TEXAS SPA COVERS mark as it includes the entire mark except the final “s” and adds the generic top-level domain “.com.”

 

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain name. Rather, the domain name resolves to a website containing competing products and links to a competing website: <spacoversplus.com>.  See Compl., at Attached Annexes 4-5.

 

Respondent registered and used the <texasspacover.com> domain name in bad faith as the disputed domain name resolves to a competing website and links Internet users to a competing website. Id.  From this use, Respondent is likely profiting, evincing Policy ¶ 4(b)(iv) bad faith.  Additionally, Respondent registered the disputed domain in close temporal proximity to Complainant’s filing of an Assumed Name Certificate (DBA) in Burnet County, Texas on February 21, 2013, which constitutes opportunistic bad faith.

 

B. Respondent

Respondent’s contentions are as follows:

 

Complainant’s USPTO registration is on the Supplemental Register and, thus, insufficient to establish rights in the trademark under Policy ¶ 4(a)(i).

 

The terms of the <texasspacover.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet to succeed over Respondent per Policy ¶ 4(a)(ii).

 

Respondent’s registration of the domain name on April 22, 2013 predates both Complainant’s filing of a trademark registration with the USPTO and its subsequent registration, making bad faith registration and use impossible per Policy ¶ 4(a)(iii).

 

FINDINGS

Complainant owns the following trademark registration made on the USPTO´s Supplemental Register:

 

TEXAS SPA COVERS, Reg. No. 4810349, Reg. Date September 8, 2015, filed on October 3, 2013, for fitted spa covers in International Class 11.  First use / first use in commerce: January 2, 2003.  The trademark´s certificate includes a disclaimer stating, “No claim is made to the exclusive right to use “covers”, apart from the mark as shown.”

 

According to the Registrar´s WhoIs database, the creation date for the record corresponding to the disputed domain name is April 22, 2013.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The first element of the Policy requires that a complainant proves, a) that it has right in a mark, and b), that the disputed domain name is identical or confusingly similar to such mark.  The Panel believes that Complainant failed to establish its rights in the mark.  The Panel believes that since the TEXAS SPA COVERS mark, registered under Reg. No. 4810349 on the Supplemental Register of the USPTO, is an essentially weak mark, in order to establish its rights in the mark in the context of the UDRP Complainant should have shown that its mark had acquired secondary meaning at the time of the registration of the disputed domain name, i.e. on April 22, 2013.  The Panel notes that in its application before the USPTO Complainant stated “January 2, 2003” as the date of first use and first use in commerce.  This statement however is insufficient by itself to show secondary meaning.   While trademarks and service marks registered on the Supplemental Register are not inherently incapable of distinguishing goods and services, a complainant relying upon such mark must prove that its mark is distinctive.  See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005), citing Bryant v. Yerke, AF-0315 (eResolution Oct. 15, 2000), where the panel established that in order to press its rights, if any, in the mark against others the applicant must establish through record evidence that the mark has acquired distinctiveness. Nor is the Assumed Name Certificate (DBA) filed by Complainant in Burnet County, Texas on February 21, 2013, by itself probative of common law rights in the mark.[1]

 

In particular, Complainant completely fails to describe whether, since when or how its mark acquired distinctiveness in respect of the fitted spa covers in International Class 11 stated in its trademark application.  While the requisite evidence is the one necessary for establishing common law rights in a mark,   the Panel notes that Complainant fails to submit documents concerning advertising or marketing expenses, evince of sales, affidavits or any other proof of consumer recognition.  As recognized by this panelist in RecruitUSA Inc. v. Krueger, FA 1203764 (Nat. Arb. Forum Aug. 5, 2008), the standards required to this effect by panels include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).

 

In use of its general powers under Paragraph 10(a) of the Rules, on March 23, 2016, the Panel visited the Wayback Machine at “www.archive.org” in search for archived pages of the website at the disputed domain name.  The search results indicate that the Machine first saved pages on July 3, 2013. On the same date the Panel also searched the Machine for archived pages of “www.texasspacovers.com”, the website at Complainant´s <texasspacovers.com> domain name.  This visit showed that the Machine first saved web pages on June 14, 2013.  These search results might suggest that Respondent began using the website at the disputed domain name a few days after Complainant had already began using his own website. This circumstance and the fact that Respondent used the legend “Texas Spa Covers” on the website at the disputed domain name indicate that Respondent most likely was aware of Complainant, Complainant´s products and website when Respondent began using its website.  Since it also appears that Respondent for some time linked the website at the disputed domain name to the website at <spacoversplus.com>, where spa covers were offered, it is reasonable to conclude that Respondent is using the legend “Texas Spa Covers”, which happens to be the name under which Complainant has been doing business, for profit. 

 

However, these facts, which might be of significance for a court of the competent jurisdiction in the context of unfair competition and trading off, are beyond the limited scope of these UDRP proceedings, which require a proof of standing based on rights in a mark, including common law rights.

 

Based on the instant record and for the sole purposes of this proceeding, the Panel concludes that Complainant has failed to prove its rights in the TEXAS SPA COVERS mark.  In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the disputed domain name, or whether it has registered and is using this domain name in bad faith.  See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). 

 

DECISION

Since Complainant failed to establish the first element required under the UDRP, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <texasspacover.com> domain name REMAIN WITH Respondent.

 

 

Roberto A. Bianchi, Panelist

Dated:  March 28, 2016