PrinterOn Corporation v. Premiere Global
Services
Claim Number: FA0607000744560
PARTIES
Complainant is PrinterOn
Corporation (“Complainant”), represented by Sheldon H. Klein, of Arent Fox PLLC, 1050 Connecticut Avenue,
NW, Washington, DC 20036. Respondent is
Premiere Global Services (“Respondent”),
represented by Theodore H. Davis Jr., 2221 E. Bijou St, Suite 100, Colorado
Springs, CO 80909.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <printanywhere.com>,
registered with Network Solutions, Inc.
PANEL
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.
Beatrice Onica Jarka as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 6, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 7, 2006.
On July 7, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <printanywhere.com>
domain name is registered with Network Solutions, Inc. and that the 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 July 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 31, 2006 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@printanywhere.com by e-mail.
A timely Response was received and determined to be complete on July
31, 2006.
A timely and complete Additional Submission from Complainant was
received on August 7, 2006.
On August 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
·
it is a
communications industry pioneer of mobile printing solutions
·
it has
registered the PRINTANYWHERE mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,202,629 issued November 10, 1998) and it has used
the said mark in United States and Canada for a number of years starting with
1997 in connection to computer software that provides printing and fax services
to computer network printers and allows customers to build Internet printing
and fax capabilities into web services or back end applications. The mark has been incorporated in several
domain names owned by the Complainant’s subsidiary Spicer Corporation, and is
also featured prominently on other Complainant’s websites. All these websites advertise the
Complainant’s products. By intense
use, advertising and marketing the PRINTANYWHERE mark has acquired significant
commercial strength and good will.
·
it holds US
federal registrations for other marks PRINT SIMPLY ANYWHERE mark, PRINTWHERE
and PRINTERON PRINT SIMPLY ANYWHERE.
·
the Respondent
is not commonly known by the disputed domain name, because the WHOIS
information lists the registrant of the domain names as “Premiere Global
Services,” and there is no other evidence in the record indicating that
Respondent is commonly known by the disputed domain name. In addition the Complainant asserts that it
has not authorized or licensed Respondent to register or use a domain name
incorporating Complainant’s PRINTANYWHERE mark, except for a limited period of
time of three months which expired.
·
the <printanywhere.com> domain name resolves to a commercial
website where Respondent offers mobile printing solutions closely related to
Complainant’s own services. Although
Respondent’s website now displays the PREMIERE ANYWHERE mark, the website
displayed Complainant’s PRINTANYWHERE mark until on or about June 24, 2006.
·
the Respondent purchased the disputed domain name registration in order
to solicit business from Complainant and possibly enter into a business
partnership with Complainant. In this sense, the Respondent has repeatedly
attempted to enter into a business partnership with Complainant concerning the
<printanywhere.com> domain name.
Complainant alleges that it informed Respondent that it was not
interested but that Respondent could retain the disputed domain name
registration for several months, at which time it would have to transfer it to
Complainant. At the end of this grace
period, Complainant maintains that Respondent refused to transfer the disputed
domain name to Complainant, unless Respondent was paid $5,000, even though it
knew of Complainant’s rights in the PRINTANYWHERE mark and that Complainant did
not want to enter into a business partnership with Respondent.
·
the Respondent is using the <printanywhere.com> domain name to redirect Internet users
seeking Complainant’s mobile printing solutions to Respondent’s competing
website.
·
the Respondent has shown a pattern of conduct of registering domain names
incorporating trademarks of others in the communication industry in which the
Respondent has no rights or legitimate interests.
B. Respondent
The Respondent alleges by the Response that:
·
the
Respondent’s domain name is different from the mark that has been in actual use
by the Complainant, as prior to filling the complaint, the Complainant was
using the mark PRINT SIMPLY ANYWHERE and not PRINT ANYWHERE, and all evidence
presented indicated that the Complainant had acquired the registration of the
mark PRINT ANYWHERE solely to remove it as a potential obstacle to its use of
the PRINT SIMPLY ANYWHERE mark. The
mark PRINT ANYWHERE was abandoned by the Complainant.
·
the Respondent
has rights and legitimate interests in the domain name, as, prior to receiving
notice of the dispute related to the domain name, it purchased the domain name
in connection with its bona fide offering of conferencing and business
communications services under the mark PREMIERE ANYWHERE, including a service
that permits users to print any email attachment from any mobile device – in
other words, a service that allows users to print documents anywhere.
·
the domain name
has not been registered or used in bad faith. The Respondent was not aware that
the Complainant had acquired a registration of the mark PRINT ANYWHERE until
after the Respondent had purchased the domain name <printanywhere.com>. In this sense, the Respondent did not
register or acquire the domain name for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant or to a
competitor of the Complainant, or to prevent Complainant from reflecting the
mark in a corresponding domain name.
Also, the Respondent has not registered or acquired the domain name for
the purpose of disrupting the business of the Complainant or a Competitor and
by using the domain name, it has not intentionally attempted to attract, for commercial
gain, Internet users to Respondent’s web site or other on-line location by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s web site or
location or of a product or service on Respondent’s web site or location. The
Respondent’s relationships with third parties in connection to the registration
of certain other domain names arguably similar to marks owned by third parties
are not evidence of bad faith as the Respondent either has an actual business
relationship with those third parties or has engaged in negotiations to enter
into one.
C. Additional Submissions
The Complainant further asserts that:
·
it has demonstrated that the disputed domain name is identical and
confusingly similar to PRINTANYWHERE
mark in which Complainant has rights.
·
there is no evidence of abandonment of the mark by the Complainant and it
is not for the ICANN Panel to decide abandonment in case of a United States
federally registered trademark
·
the evidences attached to the complaint and additional submission of the
Complainant proves that there has been a continuous use of the PRINTANYWHERE mark.
·
Respondent has failed to demonstrate that it has rights and legitimate
interests in the disputed domain name, as it registered the domain name to offer services that are
highly competitive with and nearly identical to those for which Complainant
owns rights in the mark PRINTANYWHERE.
·
Respondent
claims that the domain name is merely descriptive are negated by Complainant’s
incontestable U.S. federal trademark registration, and by the fact that
Respondent has acknowledged Complainant’s rights and has taken a license to use
the mark.
·
Respondent had
constructive notice of the Complainant’s mark rights and the registration and
use of the disputed domain name to promote competing services, even if
Respondent’s highly dubious claim of a lack of knowledge is true, amounts to
bad faith registration and use.
FINDINGS
The Complainant registered the
PRINTANYWHERE mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,202,629 issued November 10, 1998) and it has used the said mark in United States and Canada for a number
of years starting with 1997 in connection to computer software that provides
printing and fax services to computer network printers and allows customers to
build Internet printing and fax capabilities into web services or back end
applications.
The mark has been incorporated in several domain names owned by the
Complainant’s subsidiary Spicer Corporation, and is also featured prominently
on other Complainant’s websites. All
these websites advertise the Complainant’s products. The Panel agrees with the Complainant, that by intense use,
advertising and marketing the PRINTANYWHERE mark has acquired significant
commercial strength and good will.
The Respondent purchased the disputed domain name
registration in order to solicit business from Complainant and possibly enter
into a business partnership with Complainant, which would have allowed the
Respondent to benefit legally of the Complainant’s mark. Even though the Complainant informed Respondent that it
was not interested in a business relationship with the Respondent, but that
Respondent could retain the disputed domain name registration for several
months, at which time it would have to transfer it to Complainant, the
Respondent refused to transfer the disputed domain name to Complainant, unless
Respondent was paid $5,000. All this
time, the Respondent has been continuing to use the
<printanywhere.com> domain name to redirect Internet users
seeking Complainant’s mobile printing solutions to Respondent’s competing
website. It is the opinion of
the Panel, that the Respondent acquired and has been using in bad faith a domain
name which is identical with a United States federally registered mark in which
the Complainant has rights. The Panel
also considers that the Respondent has not succeeded to prove any rights or
legitimate interests in the disputed domain name but merely brought unsupported
allegations as to the lack of distinctiveness and abandonment of the
Complainant’s mark.
The issue of abandonment of a trademark is beyond the jurisdiction of
an ICANN Panel.
DISCUSSION
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.
The Panel considers that the Complainant has established rights in the “PRINTANYWHERe” mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Paisley Park Enterprises v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The domain name incorporates the
Complainant’s mark in its entirety.
This makes it identical to the
Complainant’s “PRINTANYWHERE.” The mere
addition of the generic top-level domain “.com” represents a minor alteration
to Complainant’s registered mark, insufficient to negate the identical aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000)
(refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than
disjunctive sense in holding that “mere identicality of a domain name with a
registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”); see also
Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
As to the issue of abandoment, as said under the FINDINGS, the Panel shall not consider it. See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Kenneth Pushkin. v. Lee Arnold, FA 508530 (Nat. Arb. Forum Aug. 12, 2006) (declining to decide whether the complainant had abandoned its rights in the RADIO FREE AMERICA appreciating that the Panel’s authority or discretion to consider a challenge of the validity of a registered mark).
It is the Panel’s opinion that
Complainant made a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
that the Respondent did not succeed to show that it does have rights or
legitimate interests.
The Respondent is not known by the
disputed domain name. The Complainant
has not authorized or licensed Respondent to register or use a domain name
incorporating Complainant’s PRINTANYWHERE mark, except for a short period of
time, which expired in June 2006. The <printanywhere.com> domain
name resolves to a commercial website where Respondent offers mobile printing
solutions closely related to Complainant’s own services. The fact that the
Respondent’s website now displays the PREMIERE ANYWHERE mark together with the
fact that the website displayed Complainant’s PRINTANYWHERE mark until on or
about June 24, 2006 do not represent elements of 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 Expedia,
Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding
that the respondent’s use of the <expediate.com> domain name to redirect
Internet users to a website featuring links to travel services that competed
with the complainant was not 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 also Wal-Mart Stores, Inc. v. Power of Choice
Holding Co., FA 621292 (Nat. Arb.
Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
In addition, the solicitation
by the Respondent of business from Complainant and the inquiry in connection to
a possible business partnership with Complainant, represent further elements
which forms the Panel’s conviction that the Respondent has no rights or
legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. MForce Commc’ns, FA 708908
(Nat. Arb. Forum Jul. 27, 2006) (finding that the respondent did not have
rights or legitimate interests in domain names containing the complainant’s
marks simply by registering them with the intent of forming a business
partnership with the complainant); see also Enter. Rent-A-Car Co. v. David
Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (“Respondent
registered domain names containing the marks of others, including Complainant,
with the addition of the words ‘auto’ and ‘auction’ for the purpose of some
future association with these mark holders…these circumstances clearly show
that Respondent has no rights or legitimate interests in the disputed domain
name.”).
Respondent has acquired the disputed domain name from a Registrant
against payment. There is no evidence whatsoever of the good faith in
registration of the disputed domain name by the initial Registrant. The mere registration for the sale of the
disputed domain name for an amount in excess of registration expenses
represents obviously bad faith registration and use of the domain name. The
buying of the disputed domain name by the Respondent cannot alone, in the
opinion of the Panel, validate the bad faith registration made by the initial
Registrant. Considering the facts of the case and the further Respondent’s
conduct in connection to the disputed domain name makes the Panel to reach the
conclusion that the Respondent has acquired and has been using the disputed
domain name in bad faith.
For example, the Respondent is using the <printanywhere.com>
domain name to redirect Internet users seeking Complainant’s mobile printing
solutions to Respondent’s competing website.
The Panel finds that Respondent is taking advantage of the confusing
similarity between the disputed domain name and Complainant’s PRINTANYWHERE
mark in order to profit from the goodwill associated with the mark. Such
conduct constitutes bad faith under Policy ¶ 4(b)(iv). See
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000)
(finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the
complainant were in the same line of business and the respondent was using a
domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to
attract Internet users to its <efitnesswarehouse.com> domain name); see
also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
In
addition, despite the grace period given by the Complainant, the Respondent refused to transfer the disputed domain name to Complainant, even
though it knew of Complainant’s rights in the PRINTANYWHERE mark and that
Complainant did not want to enter into a business partnership with
Respondent. Such conduct represents bad
faith registration and use too in the opinion of the Panel. See
Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the respondent registered
and used the <xeroxdealers.com> domain name in bad faith by contacting
third-party dealers of the complainant and attempting to solicit business from
them); see also Kinko’s, Inc. v. eToll., Inc., FA 94447 (Nat. Arb. Forum
May 27, 2000) (finding bad faith registration and use because “Respondent
registered the domain name in connection with a business proposal made to
Complainant. The registration was
performed without permission either expressed or implied from the
Complainant. When Complainant declined
the business proposal and asserted its trademark rights, Respondent refused to
transfer the domain name since it feared Complainant was attempting to utilize
Respondent’s mobile office technology without compensation to Respondent.”).
The
last factual element which formed the Panel’s conviction in this case as to the
bad faith of the Respondent refers to the allegations and evidences provided by
the Complainant, that the Respondent is involved in a pattern of conduct
regarding the registration of others’ trademarks as domain names, which were
approached in the Response in very soft manner.
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 <printanywhere.com>
domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: August 24 , 2006
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