Square Peg Interactive Inc. v. Naim Interactive Inc.
Claim Number: FA0311000209572
Complainant is Square Peg Interactive Inc. (“Complainant”), 5170 Sepulveda Blvd., Suite 170, Sherman Oaks, CA 91403-1197. Respondent is Naim Interactive Inc. (“Respondent”), represented by Dale Cendali of O'Melveny and Myers, LLP, Citigroup Center, 153 East 53rd Street, New York, NY 10022.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gototrafficschool.com> (the “Domain Name”) registered with Network Solutions, Inc.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 7, 2003; the Forum received a hard copy of the Complaint on November 12, 2003.
On November 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <gototrafficschool.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on December 3, 2003. Complainant submitted additional materials dated December 8, 2003. These additional materials were timely received. Respondent replied to Complainant’s additional submission in a reply dated December 11, 2003. This reply was also timely received.
On December 11, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts as follows:
· Complainant began using the mark TRAFFIC SCHOOL TO GO (“the Mark”) in commerce at least as early as March 1998. Complainant registered the mark with the Secretary of State of California on February 16, 2000. Complainant also has a United States federal registration for the Mark for educational services, namely for conducting interactive distance learning courses over the internet related to driving techniques. The federal registration was issued July 1, 2003.
· Complainant operates traffic schools in southern California and surrounding areas under the name TRAFFIC SCHOOL TO GO. Complainant also does business on the internet at <trafficschooltogo.com>.
· Complainant’s mark TRAFFIC SCHOOL TO GO was well known in the home-study traffic school industry at the time the Domain Name was registered. Respondent registered the Domain Name on January 21, 2000.
· Respondent operates traffic schools in southern California and other areas under the name GO TO TRAFFIC SCHOOL and over the internet at the Domain Name.
· The Domain Name <gototrafficschool.com> is confusingly similar to Complainant’s mark TRAFFIC SCHOOL TO GO and Complainant’s domain name <trafficschooltogo.com>.
· Actual confusion has occurred as a result of Respondent’s use of the Domain Name.
· When Respondent “first started doing business,” Complainant sent a cease and desist letter to Respondent based on its use of the name “Go To Traffic School.” Respondent failed to cease using the name.
· A representative of Respondent has repeatedly attempted to gain confidential business information from Complainant.
· Respondent has no legitimate rights or interests with respect to the Domain Name.
· The mark TRAFFIC SCHOOL TO GO was known to Respondent prior to Respondent’s use of the Domain Name.
· The Domain Name was registered and is being used in bad faith.
B. Respondent asserts as follows:
· There is no likelihood of confusion between Complainant’s mark and the Domain Name.
· The website at the Domain Name differs markedly from the website at <trafficschooltogo.com> in that the website at the Domain Name is “colorful” and uses many graphics while <trafficschooltogo.com> is a text-based website with little graphics. The tone, look and content of the two websites are different, such that a consumer would not be confused by their appearance.
· The term “traffic school” is generic and commonplace. There are a multitude of companies offering services with the words “traffic school” in their domain name. The terms “go to” or “to go” are also generic and commonplace.
· The domain name <gototrafficschool.com> carries a different meaning than TRAFFIC SCHOOL TO GO in that the former use is a phrase of action encouraging the consumer to “go to the web site” and the latter is an adjective implying that one can take traffic school “to go.”
· Any instances of confusion cited by Complainant are minor or insignificant in view of the large number of customers served by Complainant and Respondent.
· During the employment of Respondent’s Operations Manager, GoToTrafficSchool has never received a telephone call from a customer confusing GoToTrafficSchool with Traffic School To Go.
· Complainant is barred by laches as Complainant was aware of Respondent’s business and use of the Domain Name for several years before instituting this action.
· Respondent has legitimate rights and interests in the Domain Name.
· Respondent uses the Domain Name to operate a bona fide and good faith business in traffic school services. Respondent’s business started in California and is now approved for operation in 13 states.
· The Domain Name was not registered nor is it being used in bad faith.
· The Domain Name was registered and is being used for the primary purpose of promoting Respondent’s business. Respondent has not registered the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name. In addition, Respondent holds no other Domain Name registration that bears any similarity to Complainant’s mark. Complainant did not hold a valid trademark for TRAFFIC SCHOOL TO GO when the Domain Name was registered in January 2000.
· Respondent’s d/b/a application in Los Angeles County under the name GO TO TRAFFIC SCHOOL was published on four occasions and was never objected to by Complainant.
· Complainant’s federal registration for TRAFFIC SCHOOL TO GO postdates the registration of the Domain Name and Respondent’s d/b/a application.
The Panel finds as follows:
Complainant, located in Sherman Oaks, California, began doing business under the Mark TRAFFIC SCHOOL TO GO at least as early as March 1998. Complainant used and is using the Mark for traffic school services in southern California. Complainant does business on the Internet at <trafficschooltogo.com>. Complainant received a State of California registration for the Mark on February 16, 2000 and a federal registration for the Mark (Reg. No. 2,732,297) on July 1, 2003.
Respondent, located in Los Angeles, California, registered the Domain Name <gototrafficschool.com> on January 21, 2000. Respondent published a “Fictitious Business Name Statement” to publicize her adoption of the fictitious business name “GoToTrafficSchool.com” four times during January and February of 2001. The copy of this “Fictitious Business Name Statement” attached to Respondent’s papers notes that Respondent had yet to transact business under the name “GoToTrafficSchool.com.”
At some point Respondent began doing business as a traffic school service provider under the name “GoToTrafficSchool” and on the Internet at the Domain Name. Respondent currently does business under the name “GoToTrafficSchool” and on the Internet at the Domain Name.
The Panel takes notice that Sherman Oaks, CA and Los Angeles, CA are approximately 15 miles apart and are generally part of the same urban area.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
At the time Respondent registered the Domain Name, Complainant was doing business as a traffic school provider in the southern California area using the Mark TRAFFIC SCHOOL TO GO and on the Internet at <trafficschooltogo.com>. One month after registration of the Domain Name, Complainant obtained a State of California registration for the Mark. Two years after that, Complainant obtained a federal registration for the Mark, claiming use dating back to March 1998.
Complainant has shown it has rights in the Mark TRAFFIC SCHOOL TO GO. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Domain Name <gototrafficschool.com> includes the same words as the Mark, although in a slightly different order.
Respondent argues in its response that “traffic school” is a generic and commonplace term, undeserving of protection. Respondent also argues in its reply to Complainant’s additional submission that “to go” and “go to” are similarly generic and commonplace. Respondent’s arguments miss the point. Trademark rights come from using the entirety of a mark, in this case all four words together, as an identifier of a source of goods or services. The constituent parts of a mark may or may not be worthy of protection separate from the entirety of the mark, but that is irrelevant. The mark is analyzed as a whole.
Complainant has made a strong showing that there is a likelihood of confusion between the Mark TRAFFIC SCHOOL TO GO and the Domain Name <gototrafficschool.com>, when analyzed in their entirety. The Domain Name uses the same four words as the Mark, to offer the same category of goods and services, in an overlapping geographic area. While Respondent argues that its services are offered in a broader geographic area than those of Complainant, the Panel finds that confusion could still be likely in the areas where both names are used.
Indeed, Complainant has offered some evidence of actual confusion. Attached to Complainant’s additional submission are what Complainant asserts are examples of correspondence from consumers whom Complainant alleges were actually confused by the similarity of the Domain Name to the Mark. Respondent correctly notes that Complainant’s assertions of such instances of confusion are not made in proper evidentiary form. For example, they are not attached to an affidavit made under oath, nor is it entirely clear whether the number of instances of such confusion matches Complainant’s assertions as to what that number is. Nevertheless, the Panel is persuaded that there have probably been instances of actual confusion. Evidence of actual confusion can be a significant factor, under U.S. trademark law, in establishing that a party’s conduct infringes another’s trademark or service mark.
The above factors suffice to persuade the Panel that the Domain Name is confusingly similar to a mark in which Complainant owns rights. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL).
These two criteria are normally treated separately, but are discussed together here due to the overlapping issues involved. In determining whether Respondent has rights or legitimate interests in the Domain Name, and whether its registration and use of the Domain Name was in bad faith, the Panel finds on the facts of this case that the same fundamental question is posed: Was Respondent, despite adoption of a confusingly similar mark (incorporated into its domain name), able to build legitimate rights in that mark during the period of over two years between the time the Domain Name was registered and the time Complainant brought this action? As discussed below, in a trademark infringement action between the parties in which discovery is taken and the issues are aired before a court of competent jurisdiction, it may well be determined that the answer is no. In this proceeding, however, Complainant has failed to meet its burden of establishing, through sufficient evidence, that Respondent lacks legitimate rights in the Domain Name and that the kind of cybersquatting for which the Policy was adopted has occurred here.
The Panel finds it instructive to examine two points in time: first when the Domain Name was registered, and second the present day use of the Domain Name.
Rights At The Time of Registration of the Domain Name
It is unclear if Respondent had any rights or legitimate interest in the Domain Name at the time it was registered (January 21, 2000). As of that time, Complainant had already been doing business under the name TRAFFIC SCHOOL TO GO and at <trafficschooltogo.com>.
Use by Respondent of the Domain Name, or of the name “GoToTrafficSchool” may very well have been an infringing use in January 2000. Although Complainant did not yet have any registrations of its Marks, it likely had established trademark rights in the Mark. Trademark rights under U.S. law derive from commercial use of a mark, regardless of whether it has been registered. The Panel doubts whether Respondent had any legitimate rights at this time, but has insufficient evidence before it to come to a final determination.
Although Complainant alleges that the Mark was well known in the home-study traffic school industry at this time, it has not supported this assertion with any evidence. Respondent denies having heard of it. The denial strikes the Panel as somewhat implausible, considering Respondent’s adoption of a remarkably similar mark for a remarkably similar business in a nearby location. It is also interesting that Respondent’s statement that it did not have prior knowledge of the Mark is not made under oath. Nevertheless, the burden of proof is on Complainant, and it is questionable whether the burden has been met. Complainant alleges that Respondent had actual notice of Complainant’s Mark at the time the Domain Name was registered. Complainant’s evidentiary submissions, however, do not support this statement. Complainant asserts that Respondent attempted to obtain Complainant’s confidential materials, but Complainant offers no affidavit or other testimony to support this contention. See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name).
Registration of a mark can place other parties on constructive notice of the mark. Complainant’s state and federal registrations, however, were not issued until after the Domain Name was registered. Accordingly, no presumption of constructive notice can apply as of the date of registration. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Bus. Architecture Group, Inc. v Reflex Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001) (Complainant did not adequately demonstrate common law rights that predated the domain name registration).
In short, the evidence that is before the Panel suggests, but does not persuasively establish, that Respondent may have known of Complainant’s mark and therefore lacked legitimate or good faith rights in the Domain Name at the time the Domain Name was registered.
Subsequent Use Of, And Rights In, The Domain Name
Complainant alleges that, when Respondent “first started doing business,” Complainant sent a letter to Respondent demanding that Respondent “cease and desist” its use of the name “GoToTrafficSchool.” A copy of this letter, however, was not submitted to the Panel. Its exact date and contents are therefore unknown to the Panel. Complainant further states that it “decided to wait and see if the name was in practice causing confusion with our potential students and others.” After apparently determining that it was, Complainant began the present proceeding, over two years later.
Respondent argues that this delay results in laches and bars Complainant from obtaining the relief sought here. 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. If a trademark owner accuses another party of infringement but then fails to pursue the matter diligently, it may in some cases be concluded that the trademark owner has abandoned its claim and the accused infringer may be able to build up trademark rights. Proceedings under the Policy provide for no discovery and limited procedural avenues for resolving the sort of classic trademark dispute that has arisen between these parties.
As discussed above, there is little evidence to suggest that Respondent had rights in the Domain Name at the time it was registered. There is evidence, however, to suggest that Respondent currently operates a business in traffic school services using the name “GoToTrafficSchool.com” and at the Domain Name. Respondent has submitted evidence that, apart from the trademark issues, its business is a bona fide enterprise serving a number of courts and communities. While there remains a legitimate question as to whether Respondent’s business was improperly built on Complainant’s trademark rights, there is also a legitimate question as to whether Respondent would have invested the time and effort into building its enterprise under the name “GoToTrafficSchool” had Complainant more aggressively pursued its trademark claims at the time Respondent first started doing business under the name. Respondent may very well have built up its rights under “GoToTrafficSchool” based on the assumption that Complainant had abandoned its concerns regarding Respondent’s use of the Domain Name.
One of the obligations incumbent on a trademark owner who wishes to preserve its rights is to police the use of business names that may be confusingly similar to the owner’s mark. See Uptown Entertainment, Inc. v. Kiryakoza, D2002-0065 (WIPO March 14, 2002) (“Failure of Complainant to police its common law mark would have the effect of debilitating its mark and its rights in the future to register its mark.”). Complainant began to do so when it first sent a letter to Respondent. Whether its subsequent conduct amounts to abandonment of its rights, whether Respondent relied on Complainant’s silence while Respondent built its business, and whether Respondent’s business is now a bona fide enterprise regardless of its questionable original choice of a mark are all questions that would need to be resolved in Complainant’s favor to establish that Respondent lacks legitimate rights in the Domain Name and is using the Domain Name in bad faith. The Panel cannot answer these questions given the materials that Complainant has placed before it.
Because the Panel has insufficient evidence to find that Respondent has no legitimate rights in the Domain Name or to find that Respondent registered and is using the Domain Name in bad faith, it concludes that Complainant has not met its burden of proof for these last two criteria and finds for Respondent.
Nothing herein is meant to prejudge any issue that might be addressed by a court should the dispute between the parties end up in that forum. The Policy, however, was meant to provide a forum for resolving clearer cases of cybersquatting, not classic trademark infringement disputes. See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002) (holding that, because Complainant bears the burden of proof under the UDRP, “[i]f the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding”); see also AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement “are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else”).
Complainant has not established the second and third elements required under the Policy. Accordingly, the Panel concludes that the requested relief shall be DENIED.
Michael A. Albert, Panelist
Dated: December 29, 2003
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