DINOFLEX
Manufacturing Ltd. v. Recreational Technology Industries Ltd.
Claim
Number: FA0407000292846
PARTIES
Complainant is DINOFLEX
Manufacturing Ltd. (“Complainant”), 5590-46th Avenue S.E., Post
Office Box 3309, Salmon Arm, BC V1E 4S1, Canada. Respondent is Recreational
Technology Industries Ltd. (“Respondent”), 5500-48th Avenue
S.E., Post Office Box 400, Salmon Arm, BC V1E 4N5, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <playtile.com>,
registered with Domainbank.com.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on July 2, 2004; the Forum received a hard copy of the
Complaint on July 7, 2004.
On July 6, 2004, Domainbank.com confirmed by e-mail to the Forum that
the domain name <playtile.com> is registered with Domainbank.com
and that Respondent is the current registrant of the name. Domainbank.com has verified that Respondent
is bound by the Domainbank.com 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 July 8, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 28, 2004 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 postmaster@playtile.com by e-mail.
A timely Response was received and determined to be complete on July 26,
2004.
A timely Additional Submission was
received from Complainant and determined to be complete on August 2, 2004.
On August 3, 2004, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel,
the Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a producer of high quality playground surface tile
products and other molded rubber surfacing products manufactured from recycled
granulated rubber bound with polyurethane.
The playground surfacing tiles bearing the trademark PLAYTILES are
manufactured using granulated recycled rubber, surfaced with colored EPDM
rubber bound with polyurethane resin.
Complainant has been marketing playground surfacing tiles under the
trade name PLAYTILES since 1995.
The <playtile.com> domain name consists
essentially of Complainant’s registered mark PLAYTILES without the letter “s”,
and followed by the domain name suffix “.com”.
The absence of the “s” from the Disputed Domain Name
does not abate the creation of confusion.
Furthermore, since trademarks often evolve into
corresponding domain names, the domain name suffix “.com” is not likely to
create a distinguishing impression and is not a factor in determining if
confusion between the Disputed Domain Name and Complainant’s registered mark
exists.
Respondent’s products bearing the unregistered trade
name PLAY TILE and Complainant’s registered mark PLAYTILES are in all material
respects identical. Both use granulated recycled rubber bound with polyurethane
and both are colored using EPDM surfacing. Both are produced in four square
foot tiles. The similarity of the
products further leads to confusion.
The trademark PLAYTILES cannot be construed as a
generic name for playground surface tiles.
The word “playtiles” is not found in any dictionaries. Also, from the
few responses generated from an Internet search, “playtiles” is clearly not a
generic term.
Complainant has registered marks in both Canada and
the US previously used for rubber safety tiles.
Respondent should be considered as having no rights or
legitimate interests in respect of the <playtile.com> domain name
for the following reasons:
First, Respondent knew of the close similarity of the disputed domain
name to Complainant’s trademark before Respondent made any preparations to use
such name in connection of a bona fide offering of goods or services.
Second, Respondent has never been known by the disputed domain name.
Third, all of Respondent’s uses of the disputed domain name have a
prospect of commercial gain associated with them in attempting to sell
confusingly similar product.
Respondent has registered and is using the Disputed Domain Name in bad
faith.
Respondent’s
principle, Dirk Damberg, was hired by Complainant in 1989 in a technical
position and his employment was terminated 4 years later. The dismissal was
acrimonious.
Respondent’s principle, as a former senior employee and direct
competitor of Complainant for more than eight years, had full knowledge of
Complainant’s trademark registrations which are clearly indicated on all
Complainant’s marketing materials. Respondent also had knowledge of
Complainant’s considerable investment in the marketing of its PLAYTILES
registered products.
Shortly after Respondent’s principle’s dismissal, Respondent began
marketing similar products to those manufactured by Complainant through
Respondent’s first company, Veplas (now non-operational).
From time to time, Complainant receives complaints regarding defective
product from Respondent’s clients.
Recently, Respondent’s new company began using the PLAY TILE
unregistered trade name and is offering for sale and selling surface tile products
through the <playtile.com> domain name (registered March 8,
2004).
Respondent's illegitimate use of the <playtile.com> domain name will further likely (sic) to depreciate
the goodwill attached to the PLAYTILES registered products and similar products
manufactured by Complainant since 1989.
B. Respondent
Respondent alleges to have filed a trademark
application in Canada for the registration of the words "Play Tile"
on April 6, 2004.
Since 1994, Respondent and its related companies have
manufactured, marketed and sold recycled rubber products.
Respondent uses the following product names to
describe its products: "safety play tile", "playsafe", and
"play surface tile."
Respondent is a Canadian market leader in its
industry.
The domain name is similar to the trademark, yet it is
not confusingly similar. The similarity arises from the fact that the trademark
is identical to a generic phrase that is used in this industry. Respondent
provided two examples of industries using the term “playtile.”
The phrase "play tile" is a common generic
name used in this industry. It does not need to be in a dictionary to be
considered generic. Internet searches through engines like <yahoo.com>
revealed over 900,000 entries for "play tile" and approximately
seventy for "playtiles."
Therefore, Respondent has rights in the Disputed Domain Name.
The <playtile.com> domain name was the
closest name to the generic phrase ("play tile") that domain name
policy would allow, given that the domain name policy will not allow a blank
space between "play" and "tile."
The relationship between Dirk
Damberg, principal of Respondent, and Complainant is not truthfully stated in
the Complaint. The facts of this relationship are that Dirk Damberg was at one
time the founder, technical director and a shareholder of Complainant. Since
Dirk Damberg left Complainant, the latter has repeatedly tried to interfere
with the legitimate business pursuit of Respondent. Respondent believes that this is the true source of the
Complaint.
Prior
to knowledge of the dispute raised by the Complaint, Respondent had been using
the domain name for a bona fide offering of its products.
Given that the phrase "play tile" is
generic, Respondent and many other businesses commonly have its products
referred to by that phrase. Respondent provides evidence for two such
industries.
Respondent’s use of a generic phrase
is without any intent to divert consumers or tarnish any aspect of
Complainant’s business.
Complainant's allegation that it
received complaints about the products of Respondent is entirely untrue. No evidence in support of such an allegation
is presented by Complainant.
There are no circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to Complainant who is the owner of the trademark or service
mark or to a competitor of that Complainant, for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related to the
domain name.
There
is no evidence that Respondent has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, and Respondent has not engaged in a pattern of such
conduct.
As reflected in the Annexes of the Complaint,
Complainant's use of the trade name relates to colourful logo tiles for
playgrounds, with numbers and logos, for hopscotch games, etc. Respondent does
not manufacture such items.
The process technology and raw materials used by
Respondent are totally different from that used by Complainant. Thus,
Complainant's allegation of similarity of products is false.
There
is no evidence that by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website or other on-line location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website or location or of a product or service on Respondent’s
website or location.
C. Complainant’s Additional Submission
Canadian and US
marks matured to registration in 1996.
Although Respondent claims that Complainant’s
PLAYTILES trademark is generic based on the Internet searches Respondent
conducted, there is no evidence to support that the domain name is not
confusingly similar to Complainant’s trademark.
Complainant
strongly disagrees with Respondent’s position that the PLAYTILES trademark is
generic and that Complainant does not have rights in the PLAYTILES trademark.
Many
WIPO decisions establish the principle that a trademark registration is prima facie evidence of validity, which
creates a rebuttal presumption that a mark is distinctive.
Documentation supporting the contention that Panels should not substitute
the judgments of these Registrars with the opinion of Respondent is provided by
Complainant. In parallel, relevant decisions show that Panels have held that
making a determination that a trademark is generic is beyond the purview of the
Panel.
The
PLAYTILES Registrations are prima facie
valid.
While Respondent
alleges that the PLAYTILES trademark is generic, Respondent has described its
own product as a “play surface tile” and not a “play tile.”
Rights and Legitimate Interests
Respondent does not have a legitimate interest in the impugned domain
name.
Respondent’s
evidence concerning Internet searches of “play tile” and “playtiles” merely
reveals that Complainant’s PLAYTILES trademark is not generic, and that it is
strong and well known in Canada and the U.S.
Accordingly,
Respondent has not provided any evidence whatsoever to suggest that the
PLAYTILES trademark is a common term for surface tiles in Canada or the U.S. In
fact, Respondent’s Internet searches suggest quite the opposite—that Complainant’s
PLAYTILES trademark is strong.
While it has been
alleged that the PLAYTILES trademark is generic, Respondent itself has
admittedly described its own product as “play surface tile”, and not “play
tile.”
Further, it is
somewhat ironic that while Respondent has alleged that Complainant cannot
assert rights in the PLAYTILES trademark by virtue of being generic,
Respondent’s business card indicates that it is the owner of a trademark
registration for PLAY TILE (which is of course not the case).
The Response
contains a copy of Respondent’s business card falsely indicating that PLAY TILE
is a registered trademark of Respondent.
Respondent’s
Response indicates that Respondent filed a trademark application for “Play
Tile” in Canada. A review of the Register indicates that the entity Global
Technology Investments Ltd. has applied for PLAY TILE, Canadian application No.
1,215,091 for use in association with recycled rubber safety surfacing in
tiles; marketing and sales of safety surfacing tiles.
Complainant
claims that the process by which a product is created is not relevant to
whether two parties are competitors. The issue is whether the two parties offer
similar products. In this case, there can be no doubt whatsoever that
Respondent is a competitor of Complainant. Both parties offer surface tiles for
installation on, inter alia,
playgrounds and recreational facilities. To allege that the parties are not
competitors is completely misleading and false.
Complainant is
not acting in bad faith.
Complainant is
the owner of the PLAYTILES Registrations, which justifies the initiation of the
Complaint in these proceedings.
Further,
Complainant is faced with a disgruntled former employee and shareholder, who
has gone to great lengths to disrupt Complainant’s business, first by selling
competing products several hundred meters from Complainant, leading to consumer
confusion, and most recently by registering and using the impugned domain name.
DISCUSSION & FINDINGS
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 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.
A descriptive
word cannot be registrable as a trademark; however, according to basic
trademark law principles, once registered, a mark, albeit descriptive benefits
from a presumption that it is distinctive or has acquired secondary meaning. The
proof to the contrary lies with the challenger. This notion is explicitly addressed in Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002).
Complainant
asserts that it has established rights to the PLAYTILES mark through its
registration with the Canadian Intellectual Property Office (Reg. No. TMA
458,159 issued May 24, 1996), the United States Patent and Trademark Office
(Reg. No. 2,015,028 issued November 12, 1996) and its use of the mark in
commerce since 1995. In Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002), it was established that under U.S.
trademark law, a registered mark holds a presumption that it is inherently
distinctive and has acquired secondary meaning.
Generally, the
fact that a domain name incorporates Complainant’s registered mark is
sufficient to establish identical or confusing similarity for purposes of the
Policy according to Oki Data Americas,
Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001); Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000),
and Magnum Piering, Inc. v. Mudjackers
& Wilson, D2000-1525 (WIPO Jan. 29, 2001).
In addition,
Complainant contends that the Disputed Domain Name is confusingly similar to
the PLAYTILES mark because the domain name fully incorporates the mark and
merely omits the letter “s”. In Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000), there was a finding that a domain name which
differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly distinctive.
Deletion of the spaces between the words
in the mark does not significantly distinguish the domain name from the mark
because the use of spaces is not acceptable in registered domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002).
Also, the domain name suffix “.com” is not likely to
create a distinguishing impression and is not a factor in determining if
confusion between the domain name and Complainant’s registered mark exists (See
Brookfield Communications Inc. v.
West Coast Entm’t Corp. 174 F. 3d
1036, 1055 (9th Cir. 1999)).
The Disputed Domain Name is identical to Complainant’s corresponding
trademark because the addition of the generic top-level domain “.com” is
irrelevant under the Policy in analyzing the similarity between domain names
and marks. See
Daedong-USA, Inc., Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) wherein Respondent's domain name, <kioti.com>,
was identical to Complainant's KIOTI mark because adding a top-level domain
name is irrelevant for purposes of Policy ¶ 4(a)(i).
Respondent presented evidence to support the generic
nature of the registered trademark in order to defeat the claim of trademark
rights, even though the mark is the subject of an incontestable registration (See
Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug.
24, 2000)).
The Panel finds that it is outside its purview to
consider whether a trademark registration has become generic in accordance with
Lucasfilm Ltd. v. Cupcake Cityi,
D2001‑0700 (WIPO Sept. 21, 2001); X/Open
Co. Ltd. v. Sorenson, D2002‑0297 (WIPO June 24, 2002) and The Amazing Kreskin v. McCambridge,
D2000‑1730 (WIPO Feb. 11, 2001).
Therefore, the issue of the trademark’s genericness will not be
addressed.
Regardless of this position, the Panel wishes to
comment on Respondent’s allegations. Although Respondent presented evidence to
support its opinion that the trademark PLAYTILES is generic, this evidence is
dispelled by Complainant.
Also, the Panel notes that Respondent, while
attempting to establish genericness of Complainant’s mark, has filed a
trademark application for PLAY TILE for its products. It is illogical for Respondent to have filed a trademark
application if it thought that the registration would fail since it considers
PLAYTILES to be generic.
The fact that
both Complainant and Respondent operate in the same industry also encourages
confusion between the Disputed Domain Name and the registered trademarks. As
shown in Slep-Tone Entm't Corp. v. Sound
Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000), the
likelihood of confusion “is further increased by the fact that the Respondent
and [Complainant] operate within the same industry.”
Furthermore,
the Panel would like to indicate an inconsistency in Respondent’s
argument. Respondent alleges that it
does not manufacture items such as “colourful logo tiles for playgrounds, with
numbers and logos, for hopscotch games etc.” as does Complainant. However, Respondent claims that its product
may be described as “safety play tile”, “play safe” or “play surface
tile.” Whether the tiles are destined
exclusively for playgrounds, and whether the tiles are coloured, are not
factors determining the nature of the products. The Panel holds that the products bearing the trademark PLAYTILES
and those sold under the trade name PLAY TILE are substantially similar if not
identical.
Therefore, the
Panel finds that Complainant has satisfied its burden under Policy ¶
4(a)(i). Complainant’s trademarks and
the registered Disputed Domain Name are found to be confusingly similar.
Rights and
Legitimate Interests
In providing its Additional Submission, Complainant
has improved its initial Complaint and has met its burden of proving its
claim. The burden has been shifted onto
Respondent.
The
Panel finds that Respondent has failed to establish any rights to or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent
has not shown that it is commonly known by the mark and never applied for a
license or permission from Complainant to use the trademark name (See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000)).
Also,
Respondent has not shown that it has been commonly known by the domain name
prior to registration of the domain name. As such, the Respondent cannot
prevail (See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)).
The
Panel notes that the date for the filing of the application of the trade name
“Play Tile”, application No. 1,215,091, at the Canadian Intellectual Property
Office is April 29, 2004, roughly three weeks following the issuance of
Complainant’s demand correspondence of April 6, 2004. The Panel disagrees with Respondent who submitted that the
aforementioned application was made on April 6, 2004. The latter application would seem to have been merely sent to an
intermediate on said date, in order to process the application before its
filing with the Canadian Intellectual Property Office.
Concerning
the relationship that Respondent’s principal has with Complainant, the Panel
concludes that, as a former employee, Respondent knew or should have known
Complainant’s mark was in use by Complainant.
This is sufficient for Complainant to establish that Respondent had no
rights or interest in the domain name. It has indeed been confirmed that a former employee does not acquire
rights or legitimate interests in a domain name identical to the former
employer's trademark (See Savino
Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001)).
Complainant
further argues that Respondent’s <playtile.com>
domain name offers similar material products to his. The Panel concludes that Respondent’s use of a confusingly
similar domain name to Complainant’s mark to divert Internet users to
Complainant’s competitors 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).
The
finding that Respondent, as a competitor of Complainant, had no rights or
legitimate interests in a domain name that utilized Complainant’s mark for its
competing website was established in
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003). Furthermore, in Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000), the Panel found that the disputed domain names
were confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods.
The Panel does not believe that Respondent’s business is
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) even though
Respondent contends that it has rights and legitimate interests in the domain
name because the domain name describes its products. Respondent
describes its products as “Play Surface Tiles” and not as “Play Tiles.” As
such, the domain name is not being used to describe the content of the site as
in Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb.
Forum Feb. 13, 2001) where Respondent is using the domain
<groceryoutlet.com> for a website that links to online resources for
groceries and similar goods.
The circumstances surrounding the current dispute also
differ from the facts presented in
SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000). In the latter decision, the Panel found that
Complainant failed to show that it should be granted exclusive use of the
domain name <soccerzone.com>, as it contained two generic terms and was
not exclusively associated with its business.
In the current dispute, the domain name is indeed associated with
Complainant’s business and the term comprising the domain name is not generic,
but representative of the registered trademarks.
The
Panel also finds that Respondent lacks rights and legitimate interests in the
disputed domain name because Respondent has registered the domain name that
incorporates Complainant’s registered marks without the requisite legal
authorization to do so.
In State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000), it was held that unauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services.” Similarly, in Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18,
2000), it was found that Respondent lacked rights and legitimate interests in the
domain name because Respondent was not authorized by Complainant to use its
trademarks and the mark was distinct in its nature, such that one would not
legitimately choose it unless seeking to create an impression of an association
with Complainant.
Bad Faith
Complainant
avers that Respondent registered the <playtile.com>
domain name that incorporates Complainant’s mark with the omission of the
letter “s.” Since the Panel finds that
as a former technical employee, Respondent should have been aware of
Complainant’s mark, the Panel concludes that Respondent’s registration of the
domain name is confusingly similar to Complainant’s mark, and evidences bad
faith registration pursuant to Policy ¶ 4(a)(iii).
In addition, Complainant contends that Respondent is
using the disputed domain name to offer products similar to Complainant’s
products. The Panel concludes that
Respondent has registered and used the domain name to disrupt the business of a
competitor pursuant to Policy ¶ 4(b)(iii).
According to
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001),
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion given the competitive
relationship between Complainant and Respondent. Also, in Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000),
the domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area.
According to the evidence presented, it is clear that
Respondent is attempting to attract customers to its website and is creating
confusion by offering similar products as the Complainant’s for sale. Bad faith can thus be inferred (See Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000)).
The Panel finds that Respondent registered and used
the Disputed Domain Name in bad faith since Respondent wilfully registered the
name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which
can be inferred from the involvement of Mr. Damberg in the industry and as a
past or current employee of Complainant and Respondent respectively.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <playtile.com> domain name be TRANSFERRED from Respondent to
Complainant by Domainbank.com.
Hugues G. Richard, Panelist
Dated: August 17th, 2004
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