Ideal Products, LLC v.
Manila Industries, Inc.
Claim Number: FA0610000819490
PARTIES
Complainant is Ideal
Products, LLC (“Complainant”),
represented by Steven L. Smilay, of Botkin & Hall, LLP, 105 E. Jefferson Blvd., Suite 400, South
Bend, IN 46601-1913. Respondent
is Manila
Industries, Inc. (“Respondent”),
represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sani-tred.com>,
registered with Compana, Llc.
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.
Bruce E. O'Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on October
13, 2006; the National Arbitration Forum received a hard copy of the
Complaint on October 16, 2006.
On October 16,
2006, Compana, Llc confirmed by
e-mail to the National Arbitration Forum that the <sani-tred.com> domain
name is registered with Compana, Llc and
that the Respondent is the current registrant of the name. Compana, Llc
has verified that Respondent is bound by the Compana,
Llc 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 October 20,
2006, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of November 9,
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@sani-tred.com
by e-mail.
A timely Response was received and determined
to be complete on November 9, 2006.
On November 14, 2006, an Additional
Submission from Complainant was received and determined to be proper in
accordance with Rules 7(a) and 7(b) of the National Arbitration Forum's
Supplemental Rules (the "Supplemental Rules"). On November 20, 2006, a Respondent's
Objection and Reply to Complainant's Additional Submission was received and
determined to be proper in accordance with Rules 7(c) and 7(d) of the
Supplemental Rules.
On November 15, 2006,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name at
issue be transferred from Respondent to Complainant.
PROCEDURAL ISSUE
Respondent contends that the Panel should not
consider the Additional Submission of Complainant. First, Respondent contends that Rule 7 of the
Supplemental Rules is an improper modification of Rule 12 of the Rules for
Uniform Domain Name Dispute Resolution Policy (the "Rules"), that
calls for a complaint and a response and further statements or documents from
either of the parties in the sole discretion and at the request of the
Panel. The Panel finds it unnecessary to
rule on this point, because it welcomes the Additional Submission and the Reply
and exercises its discretion to accept those filings in accordance with Rules
7(a)-7(d) of the Supplemental Rules and Rules 10(a)-(d) and 12 of the
Rules. Second, Respondent contends that
the Additional Submission is beyond the scope of Rule 7 of the Supplemental
Rules (Rule 7(f) expressly states that additional submissions must not amend
the complaint or the response) and is an end-run around the 10 page limitation
on the Complaint imposed by Supplemental Rule 4(a). The Panel finds that the Additional Submission
does not amend the Complaint, but only responds to the arguments made by
Respondent in its Response. The Panel
also finds that the Reply does not amend the Response, but only responds to the
arguments made by Complainant in its Additional Submission. The Panel also has the authority to waive the
page limitations for the Additional Submission and the Reply under Rules
10(a)-(d) of the Rules. Thus, both the
Additional Submission and the Reply have been considered in this Decision.
PARTIES’ CONTENTIONS
A. Complainant
Complainant's SANI-TRED trademark is the
subject of U.S. Trademark Registration No. 2,950,830. This registration issued on May 17, 2005, and
was based on an application filed April 30, 2002 that claimed a date of first
use and first use in commerce of April 23, 1993. This registration protects the mark for
"liquid surface coatings for floors and walls."
The domain name at issue is the same as
Complainant's trademark. A website
operated by Respondent using that domain name is a referral site which draws
viewers to it by confusing them into thinking that they are going to a website
using the <sanitred.com> domain name that has been in operation
since 2003. At the website, viewers are
referred to a variety of businesses, which are in competition with Complainant.
Complainant has no affiliation with Respondent and has never authorized or consented to the use of its trademark in connection with this Web site or otherwise.
Customers of Complainants are being confused by the existence of this website
into thinking that it is connected with or authorized by Complainant.
Complainant supports these contentions with
corresponding exhibits and declarations.
Complaint contends that Respondent has a
history of using domain names for other than legitimate purposes (but refers
only to a case involving a company whose name is similar to that of the
Registrar in this matter).
B. Respondent
Respondent acquired the domain name at issue
on February 15, 2005. On that date,
Complainant had no right to the SANITRED trademark. Respondent points to cancellation of
Complainant's U.S. Registration on March 28, 2001, to abandonment of
Complainant's application for
Respondent is using the domain name at issue
at its website that is an advertising portal that provides access to a broad
range of services, and the fact that Respondent is developing advertising
revenues at that website demonstrates its legitimate interest in operating the
site. The links at that website are
sponsored links provided by others, e.g., Google. Respondent registered the domain name at
issue because Respondent believed the domain name was a term to which no party
had established secondary meaning.
Respondent registers thousands of names, looking for commonly used,
generic, descriptive terms to which no party had exclusive rights, evidencing
its good faith intent in the present matter. Given the lack of Complainant's
trademark rights and Respondent's legitimate interest, it must follow that
Respondent did not register and is not using the domain name in dispute in bad
faith.
C. Additional Submissions
Complainant contends that the SANI-TRED
trademark is not descriptive or generic, having been registered twice by the
U.S. Patent and Trademark Office. Thus,
evidence of secondary meaning through extensive use and advertising is not
required to establish Complainant's trademark rights. Complainant submits prints of downloads from
Merriam-Webster's Web site at <m-w.com> showing that neither SANI nor
TRED nor SANI-TRED are words in the English language. If secondary meaning were required, that is
established by the declarations submitted with the Complainant showing multiple
instances of actual consumers seeking to find Complainant's products by
searching for the trademark SANI-TRED.
Complainant also submits a print of the first 10 pages of a Google
search, finding over 20,000 references to SANI-TRED and contends that the
overwhelming majority of the references refers or relate to Complainant's
products.
Complainant contends that Respondent’s
business model, of providing an advertising portal, would not work unless
Complainant had trademark rights in SANI-TRED, pointing out that no one would
use a word that is a descriptive or generic term until it had acquired
secondary meaning.
Complainant contends that Respondent has
provided no support for its belief that the domain name at issue was a term to
which no party had established secondary meaning.
Complainant contends that Respondent's
registration and use of the domain name in dispute was in good faith cannot be
taken at face value, given the fact that SANI-TRED is neither common, generic,
descriptive, nor geographically descriptive.
Complainant makes reference to three prior
cases in which Respondent was found to have engaged in bad faith registration
and use of the domain names in those cases.
Respondent points out that as of the registration
date of the domain name at issue, Complainants did not own a federal
registration for the SANI-TRED trademark.
The search results on Google conducted now are irrelevant to the period
in question from 1993 thorough 2005, because Google only allows for searches
that go back to November 2005, nine months after registration of the domain
name at issue. Respondent submits a
print of a Dogpile search for the period prior to registration of the domain
name at issue, with no other limitation on date. This print shows no Google references for
SANI-TRED.
Respondent contends that SANI-TRED is
descriptive, with "sani" being quite clearly a shortened term of the
word sanitary and "tred" being a homophone for the word tread. The combination clearly calls to mind a
"sanitary tread" which is quite descriptive of Complainant's
business, which includes floor and deck coverings. Complainant has failed to show secondary
meaning, and any rights gained by Complainant subsequent to registration of the
domain name are irrelevant.
Respondent employs a software program that
selects domain names automatically, based on proprietary algorithms that assess
popular, unregistered keywords, and transmits them electronically for
registration, without human intervention.
The purpose is to acquire generic and descriptive names, geographically
descriptive designations, surnames, and acronyms for future use. Pending such use, the names are
"parked" with a domain name parking service, and the parking service
engages a publicly traded searching service to provide hypertext content and
sponsored links. Each of these
activities is conducted electronically, and Respondent is not responsible for
the content appearing on the parked sites.
Once notified by a holder of a registered mark, Respondent has its
attorneys review the domain name in question and transfers it to the holder
upon receiving a formal notice of request if the domain name is likely to
infringe the registered mark.
Respondent notes that the three cases cited
by Complainant in its Additional Submission were instances where a response was
not filed and the cases were decided based solely on the complaint. Therefore, there is little in the way of
precedent to be found to be relevant to the case at hand. Respondent points out that the burden to
establish [no] rights or legitimate interest in the domain name at issue falls
on the Complainant, which then shifts the burden to the Respondent. Respondent's legitimate interest is evidenced
by its transfer of many domain names to owners of both common law and federally
registered marks over time.
Respondent contends that Complainant has
focused only on bad faith use.
Complainant cannot show bad faith registration, as required, because
Complainant did not have and was having trouble obtaining a federally
registered trademark at the time of domain name registration.
FINDINGS
The Panel finds that Complainant's references
to the Registrar here are irrelevant and have not been considered. The Panel finds that Complainant has not introduced
evidence of the acquisition of secondary meaning for the SANI-TRED
trademark. However, the Panel finds that
such acquisition is not required due to federal registration of the trademark,
as discussed below. The Panel finds that
Respondent has not introduced evidence of its transfer of domain names to
holders of trademarks and that such facts have not been considered. Otherwise, the Panel accepts the factual
contentions of Complainant and Respondent.
DISCUSSION
Rule 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
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 finds that Complainant has established
trademark rights in the SANI-TRED trademark, through introduction of the
certificate for its
The Panel finds that the domain name at issue is confusingly similar to that trademark, being identical except for addition of the generic top-level domain ".com." See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The website being operated by or for
Respondent using the domain name in dispute includes links to other websites
offering coatings of the type for which the SANI-TRED trademark has been
protected. The instances of actual
confusion evidenced by the declarations submitted by Complainant, although
hearsay, support this conclusion.
The Panel finds that Complainant has met its
burden under Paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The facts here do not establish the circumstances of Paragraphs 4(c)(ii) or Paragraph 4(c)(iii). There is no contention that Respondent has been commonly known by the domain name, and Respondent concedes (and in fact emphasizes) that it is making commercial use of the domain name at the website operated by or for Respondent.
The circumstances
of Paragraph 4(c)(i) are also not established.
Respondent makes much of the fact that it obtained the domain name at
issue before registration of the
trademark. Although Complainant makes
little of the fact in its Complaint, the application for
As of April 30,
2002 (the filing date of the application for
Respondent argues
that computers operating without human intervention do registrations and use of
its domain names. By Respondent's own
admission, this computer search assesses popular, unregistered keywords and
then automatically obtains domain name registrations for those found in the
search. Respondent does do another
search when given actual notice of another's trademark. Why does Respondent not program its computers
to disregard keywords that are the subject of pending applications for
The Panel finds that Complainant has met its burden under Paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of
the Policy lists four circumstances in particular, without limitation, that
demonstrate evidence of the registration and use of a domain name in bad faith
under Paragraph 4(a)(iii) of the Policy.
The circumstances of
Paragraphs 4(b)(ii) and (iv) appear to be pertinent:
(ii) you
have 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,
provided that you have engaged in a pattern of such conduct; or...
(iv) By using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website 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 your website or location or of a product or service on your
website or location.
Respondent's bad faith registration is evidenced by 1) its
registration of the domain name at issue well after the effective date (the
application filing date) of the trademark SANI-TRED (see the cases cited above) and 2) its pattern of conduct in other,
similar cases as reported by Complainant and not contested by Respondent. See Armstrong Holdings,
Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that
the respondent violated Policy Paragraph 4(b)(ii) by registering multiple
domain names that infringe upon others’ famous and registered trademarks); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug.
30, 2000) (finding that the respondent engaged in a pattern of conduct of
registering domain names to prevent the owner of the trademark from reflecting
the mark in a corresponding domain name, which is evidence of registration and
use in bad faith).
Respondent's bad faith use is evidenced by the
operation of a website by or for Complainant that includes links to other
manufacturers of coatings. Respondent
admits that the site is for commercial gain.
Since Complainant has no control over that website, the net result is a
likelihood of confusion with the SANI-TRED trademark as to the source,
sponsorship, affiliation, or endorsement of the website by Complainant. See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent
directed Internet users seeking the complainant’s site to its own website for
commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain). Respondent cannot duck its responsibility for
the site by saying that others choose the content. Passive holding of a domain name is neither
evidence of or against bad faith, and must be evaluated in light of all of the
circumstances relating to the domain name.
See Telstra Corporation Limited
v.NuclearMarshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Panel
thus finds that Complainant has met its burden under Paragraph 4(a)(iii) of the
Policy.
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 <sani-tred.com> domain name be TRANSFERRED
from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: November 26, 2006
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