W.H. Simon & Company,
P.A. v. Marsico Enterprises Inc.
Claim Number: FA0704000972341
PARTIES
Complainant is W.H. Simon & Company, P.A. (“Complainant”), represented by Joseph
J. Weissman, of Johnson, Pope, Bokor, Ruppel & Burns,
LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <whsimon.com> and <whsimoncpas.com>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 27, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 30, 2007.
On April 27, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <whsimon.com> and <whsimoncpas.com> domain names are
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the names. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 7, 2007, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 29, 2007 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@whsimon.com and postmaster@whsimoncpas.com by
e-mail.
A timely Response was received and determined to be complete on May 29, 2007.
On June 4, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it owns common law rights in “W.H. SIMON,”
“whsimon-cpas,” and “WHS,” and that Respondent’s domain names <whsimon.com> and <whsimoncpas.com> are confusingly
similar to Complainant’s trademarks; that Respondent does not have any rights
or legitimate interest with respect to the domain names; and that the domain
names have been registered and used in bad faith.
B. Respondent
Respondent argues that Complainant owns no valid trademark rights in
the term “W.H. SIMON” as of the date the two domain names were registered,
because the Complainant owns no federal or state applications or registrations
for the mark, and because the Complainant submitted insufficient evidence to
establish that the proper name, W.H. SIMON, had acquired secondary
meaning.
Respondent argues that it did not act in bad faith and denies that the
disputed domain names were utilized to promote services similar to
Complainant’s services.
FINDINGS
Complainant owns no federal or state
trademark applications or registrations for “W.H. SIMON” or “W.H. SIMON
CPAS.” Complainant registered the domain
name <whsimon-cpas.com> on December 26, 2000, and has promoted its
financial services through that website since that time. The website prominently features
Complainant’s company name, W.H. Simon & Company, P.A.
Four years after the registration of
Complainant’s domain name, Respondent registered the domain names <whsimon.com> and <whsimoncpas.com> on October 21,
2004.
Respondent’s <whsimon.com> and <whsimoncpas.com>
sites list many “pay-per-click” links which resolve to third party
websites, including some sites for tax services. These tax service sites, evidently, have the
potential of providing services that compete with Complainant’s services.
Respondent,
Marisco Enterprises Inc., is an
entity created by tax attorney Darrin T. Mish of
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 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;
(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.
Complainant is a public accounting firm. Complainant’s founder and president, William H. Simon, Jr., is an authority in the field of taxation. Complainant asserts that it has used “W.H. SIMON” as a trademark since at least 1990. To document its rights in the trademark “W.H. SIMON,” Complainant submits copies of several advertisements that feature the trade name “W.H. Simon & Company.” Complainant does not own a federal or state trademark registration for the W.H. SIMON mark.
This Panel concludes Complainant has established enforceable common law trademark rights and that a trademark registration is not necessary under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant’s common law rights have arisen by virtue of Complainant’s use of the W.H. SIMON mark and tradename in connection with the provision of tax and accounting services since 2001 and by virtue of the use of the W.H. SIMON mark by Complainant’s predecessors-in-interest since 1990. Complainant’s “whsimon-cpas.com” website also evidences its common law rights in the mark. Complainant spends an average of $100,000 per year advertising its services under the W.H. SIMON mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent argues in its Response that Complainant has failed to submit sufficient evidence of secondary meaning in the W.H. SIMON term. However, Respondent effectively admitted that Complainant owned sufficient rights in the term W.H. SIMON when Mr. Mish, Respondent’s representative, signed a letter of agreement in December 2004 agreeing to cease all use of the similar domain name <whsimon-cpa.com>. In response to Complainant’s 2004 cease and desist letter, Respondent signed the agreement acknowledging Complainant’s rights and made no argument that the W.H. SIMON term was unprotectable.
The disputed domain names both
omit the periods after the “W” and “H” of Complainant’s mark and add the
generic top-level domain (“gTLD”) “.com.”
As compared to Complainant’s tradename, the disputed domain names also
omit “& Company, P.A.,” which is generic terminology in the context of a
tradename. The foregoing minor
discrepancies do not sufficiently distinguish the disputed domain names from Complainant’s
mark under Policy ¶ 4(a)(i). See Dow
Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth “w” or the omission of periods or other such “generic”
typos does not change the respondent’s infringement on a core trademark held by
the complainant); see also Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb.
Forum Aug. 28, 2001) (finding the domain name confusingly similar where a
period was omitted from the “I.Memoirs” mark and the gTLD “.com” was added); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar).
Complainant is a public accounting firm and employs
certified public accountants who respond to various tax issues. The term “certified public accountant” is
often abbreviated with the letters “cpa.”
Respondent’s <whsimoncpas.com> domain name adds the
descriptive term “cpas” to Complainant’s mark and is merely Complainant’s
<whsimon-cpas.com> domain name with the hyphen omitted. The addition of the abbreviation “cpas” that
describes Complainant’s business does not alleviate the likelihood of confusion
created by <whsimoncpas.com>. See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb.
Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity); see also Parfums Christian Dior v. 1
Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark).
Currently, neither of the disputed domain names resolves to an operational website. In the past, the disputed domain names both resolved to websites that displayed the heading “IRS Tax Problems,” along with links to several third-party commercial websites. Respondent is profiting through click-through fees for each consumer it diverts to competing websites through these links. Such use is neither 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Respondent does
not assert that it is commonly known by the <whsimon.com>
and <whsimoncpas.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent’s <whsimon.com>
and <whsimoncpas.com>
domain names are essentially identical to Complainant’s W.H. SIMON mark and
Complainant’s <whsimon-cpas.com> domain name. Both of the websites for the disputed
domain names have contained the inaccurate copyright notice
“Copyright 2006 by W.H. Simon, All Rights Reserved” at the bottom of each
webpage. As a result, consumers
accessing Respondent’s domain names may become confused as to Complainant’s
affiliation with the resulting websites.
Such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s
principal website is <century21.com>, many Internet users are likely to
use search engines to find Complainant’s website, only to be led to
Respondent’s website at the <century21realty.biz> domain name, which
features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
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 <whsimon.com> and <whsimoncpas.com> domain names be TRANSFERRED
from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: June 12, 2007
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