Main Line Print Shop, Inc. v. Melanie Ende / Allen & Goel Marketing Company
Claim Number: FA1310001524452
Complainant is Main Line Print Shop, Inc. (“Complainant”), represented by Jeffrey Racho, Texas, USA. Respondent is Melanie Ende / Allen & Goel Marketing Company (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mainlineprintshop.com>, registered with GoDaddy.com, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2013; the National Arbitration Forum received payment on October 15, 2013.
On October 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mainlineprintshop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mainlineprintshop.com. Also on October 17, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 25, 2013.
Complainant admitted an Additional Submission dated October 30, 2013. Respondent submitted a supplemental response on November 5, 2013. All submissions have been considered by the Panel.
On October 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Main Line Print Shop, Inc. (“Complainant”) seeks recovery of the domain name <mainlineprintshop.com> from Respondent Melanie Ende / Allen & Goel Marketing Company (“Respondent”). Complainant contends that it has used the trademark MAIN LINE PRINT SHOP continuously since February 1973 for printed goods and print related services for customers and clients for States including Pennsylvania, New Jersey and Delaware, and continues to use said mark in commerce. On September 17, 2013 Complainant filed a U.S. Service Mark application for the mark MAIN LINE PRINT SHOP with the United States Patent and Trademark Office (“USPTO”) for printing services in International Class 40, claiming a date of first use in commerce as early as February 28, 1973. Complainant further contends that the domain name <mainlineprintshop.com> is identical or confusingly similar to its trademark MAIN LINE PRINT SHOP. Complainant contends that Respondent’s business name is Allen & Goel Marketing Company, and has no rights or legitimate interests in the domain name that is the subject of the Complaint. Complainant contends that Respondent’s Allen & Goel mark is used throughout its website where the <mainlineprintshop.com> resolves and Respondent has no intention of using Main Line Print Shop as a brand, Complainant contends that Respondent registered the disputed domain name on March 27, 2013 on behalf of Allen & Goel Marketing Company, and does not engage in business using the mark that is the subject of the domain name. Complainant contends that Respondents’ registration and uses of the disputed domain name are in bad faith. The disputed website and domain exist to intentionally attempt to attract Internet users to further Respondents’ business at Complainant’s expense. Complainant further contends that Respondent has engaged in a continuous pattern of cybersquatting by registering hundreds of domain names which Respondent has no relationship to, but are substantially similar to the names and trademarks of firms competing with Respondent.
B. Respondent
Respondent contends that their printing company has been in business since it was formed in 2003, and is located in King of Prussia, Pennsylvania. Respondent contends that the disputed domain name was registered because it is descriptive of the Main Line region of Philadelphia and otherwise generic. Respondent contends that Complainant does not have a registered trademark to the mark Main Line Print Shop, and Complainant’s trademark filing with the USPTO is pending and has not issued. Respondent contends that because the trademark is descriptive, Complainant has no rights under the Policy to enforce the trademark. Respondent further contends that Complainant cannot demonstrate the requisite secondary meaning needed for protection. Finally, Respondent contends that Complainant has engaged in reverse domain name hijacking and has no bonafide basis for commencing this proceeding under the UDRP.
C. Additional Submissions
Complainant submits an Additional Submission setting forth contentions of common law trademark rights to the mark dating back over forty years, including submission of various advertising and marketing materials over the last ten years. Complainant also submits a Dun & Bradstreet report showing its business as Main Line Print Shop since 1973 with revenues of $440,000 in the past year, and several awards recognizing Main Line Print Shop brand in the industry over the last ten years. Complainant contends that even though its application was not filed until September of 2013, its common law trademark rights began to accrue in February of 1973 and its common law rights predate Respondent’s March 2013 registration. Complainant further contends that there is no evidence that Respondent intends to do business using Main Line Print Shop as its name, and that Respondent’s business is operating under an entirely different name. Complainant also submits further detail regarding Respondent’s possession of numerous domain names substantially similar to the business names and trademarks of its direct competitors. Complainant further contends that it has met the burden of the three elements under the Policy, and there is no basis for a claim of reverse domain name hijacking.
Respondent’s supplemental Response is considered. Respondent contends that many of its registered domain names are geographically descriptive and thus not in bad faith. Respondent further contends that Main Line Print Shop is geographically descriptive, and not protectable.
The Panel concludes that Complainant has established all three elements required under the Policy, and the domain name <mainlineprintshop.com> shall be transferred to Complainant. The Panel further finds no merit to Respondent’s claim of reverse domain hijacking.
Paragraph 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 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.
Complainant asserts that it has rights in the MAIN LINE PRINT SHOP mark. While trademark registration is one way to establish rights in a mark under the Policy, common law trademark rights may also be established and considered. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that it uses its mark for identifying its production of printed goods and provision of printing and print-related services. Complainant claims that it has used the mark continuously since February, 1973 when Complainant was organized as a Pennsylvania corporation with the name “Main Line Print Shop, Inc” and was assigned entity number 216080 by the Pennsylvania Department of State. See Complainant’s Annex 1. Complainant states that it has produced printed goods and provided printing and print-related services for clients in Pennsylvania, New Jersey, and Delaware, and Respondent has accrued substantial trademark rights in the mark given the past forty years of use. Complainant notes that it has applied for a registration with the USPTO for the MAIN LINE PRINT SHOP mark (Serial No. 86,067,404 filed Sep. 17, 2013). See Complainant’s Annex 7. In determining whether common law rights have been developed, the panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. The Panel finds that Complainant has common law rights in the MAIN LINE PRINT SHOP mark under Policy ¶ 4(a)(i) dating back prior to Respondent’s registration of the domain name.
Complainant asserts that the <mainlineprintshop.com> domain name is identical to Complainant’s mark. The disputed domain name is a combination of Complainant’s mark, less the spacing between words, and the generic top-level domain (“gTLD”) “.com.” Such changes are immaterial in an analysis of confusing similarity. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that the <mainlineprintshop.com> domain name is identical under Policy ¶ 4(a)(i).
While Respondent contends that the <mainlineprintshop.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant notes that Respondent’s business name is “Allen & Goel Marketing Company” and Respondent uses the <allengoel.com> domain name to host its main marketing website. The WHOIS record for the <mainlineprintshop.com> domain name lists “Melanie Ende / Allen & Goel Marketing Company” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Respondent has failed to establish its use of the <mainlineprintshop.com> domain name is a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). The Panel finds that Respondent is not commonly known by the <mainlineprintshop.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is a cybersquatter with a pattern of bad faith. According to Complainant, Respondent has registered domain names which are confusingly similar to the brand names of a number of different printing companies, and Respondent’s websites hosted at these domain names are identical to the website hosted at the disputed domain name. Patterns of bad faith are generally only accepted when there have been prior adverse UDRP proceedings against the respondent or where the respondent has registered numerous domain names incorporating the complainant’s mark. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel is without relevant information on the circumstances surrounding Respondent’s registration of domain names unrelated to Complainant.
Complainant alleges that Respondent’s website is disruptive to Complainant’s business. According to Complainant, Respondent dilutes Complainant’s trademark and diverts Complainant’s customers by having registered and using the <mainlineprintshop.com> domain name. The disputed domain name resolves to a website which offers printed goods and printing and print-related services in direct competition with Complainant’s business. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel determined that hosting a competing website via a confusingly similar domain name is disruptive. Respondent’s registration and use of the <mainlineprintshop.com> domain name are disruptive and in bad faith under Policy ¶ 4(b)(iii).
Complainant next contends that the <mainlineprintshop.com> domain name was registered in order to intentionally attract Internet users to the disputed domain name in order to further Respondent’s business at Complainant’s expense, evidencing bad faith. According to Complainant, Respondent is attempting to profit from maintaining a commercial website at a confusingly similar domain name and creating a likelihood of confusion with Complainant’s mark. Respondent’s registration of a confusingly similar domain and subsequent use of the domain to host a competing website demonstrates bad faith. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Respondent registered and uses the <mainlineprintshop.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ seeking Complainant by creating a likelihood of confusion with Complainant’s mark. Therefore, <mainlineprintshop.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mainlineprintshop.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: November 19, 2013
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