Copperhead Industries, LLC v. MICHAEL SCHMITTINGER
Claim Number: FA1612001706615
Complainant is Copperhead Industries, LLC (“Complainant”), represented by Z. Peter Sawicki of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is MICHAEL SCHMITTINGER (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copperheadwirecable.com>, registered with GoDaddy.com, LLC.
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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2016; the Forum received payment on December 8, 2016.
On December 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <copperheadwirecable.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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@copperheadwirecable.com. Also on December 12, 2016, 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 January 3, 2017.
Complainant’s additional submission was received on January 6, 2017.
On EnterDateAppointed, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 states that it is the owner of the U.S Federal Trademark Registration No. 3,037,927 for COPPERHEAD, which was registered on January, 3, 2006, and is using the trademark in commerce since at least as early as October 14, 2004, in connection with metal wire, namely, pipeline wire.
Complainant argues that its mark has acquired distinctiveness and goodwill for Complainant, associated with premier goods offerings, as it has used the mark in connection with tracer wire and related goods for over 12 years.
Also, Complainant affirms that it is the owner of the domain name <copperheadwire.com> since 2004, which incorporates its COPPERHEAD trademark, in connection with the same term for the goods, “wire”.
Complainant defends that it is identifiable in the market by its trademark COPPERHEAD, which is well-known. Therefore, Complainant argues that its use and registration establishes its rights in the COPPERHEAD mark for the purposes of Policy 4 (a)(i).
Complainant states that the disputed domain name is confusingly similar and substantially identical to its trademark, as it merely adds descriptive terms to Complainant’s COPPERHEAD mark, which are related directly to Complainant’s business.
Moreover, Complainant argues that Respondent’s use of the generic terms “wire” and “cable” does not negate the confusing similarity, because the generic terms are related to Complainant’s business, tracer wires and cables, which increases the likelihood of confusion.
Complainant also states that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent’s use of Complainant’s trademark is unauthorized and Respondent is not and has not been commonly known by the disputed domain name. Additionally, Respondent’s use of the disputed domain name, to compete with Complainant through sale of competing goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In this way, Complainant affirms that Respondent was aware of Complainant when Respondent registered the domain name, as it entered the same competitive market for the same goods. Further, according to webpages viewable through the domain name, Respondent has been in the wire and cable business since 1983.
Complainant alleges that Respondent created the domain name only on April, 5, 2016, over 12 years after Complainant began using its marks and 10 years after Complainant registered its trademark. Therefore, Complainant affirms that Respondent intentionally caused confusion in the marketplace.
Besides, Complainant argues that Respondent has registered the domain name in bad faith, as it has attempted to attract, for commercial gain, Internet users, confusing potential Complainant’s customers. Respondent utilizes the disputed domain name as a directly competing website and benefits from Complainant’s investment and goodwill in its mark by creating a likelihood of confusion with Complainant’s marks.
Complainant alleges that Respondent had actual knowledge of Complainant’s mark at the time of the domain registration, as Respondent has self-admittedly being in the filed related to Complainant, and the domain name directs visitors to a telephone number to call for sales of the same goods. Therefore, Respondent had constructive notice of Complainant’s prior use of the trademark COPPERHEAD and prior registration.
Finally, Complainant argues that Respondent uses the domain name in bad faith, as it hosts a website that utilizes Complainant’s mark COPPERHEAD for the same goods and uses a logo similar to that which can be found in connection with Complainant’s trademarks and goods. This use falsely implies the source of any goods and services available through visiting the disputed domain name originates with Complainant and is further evidence of Respondent’s registration and use in bad faith.
B. Respondent
Respondent states that perhaps the disputed domain name is too similar to the Complainant’s trademark, but alleges that it had no intention to make that so.
Respondent argues that there was no intention to confuse, deceive, or interfere with Complainant’s business in any way, and that it is not a competitor of Complainant, as Complainant sells products that are used to locate or “trace” other products, while Respondent sells cables that are used to power a device.
Respondent affirms that in more than 30 years in the wire and cable business it has never sold tracer wire and has no knowledge of its producers, distributors or customers.
Respondent alleges that in the 8 months that the website has been up, it has received one phone call looking for Complainant‘s business.
Finally, Respondent argues that a Google search of the words “copperhead wire and cable” brings up Complainant four times before Respondent’s business, and a Google search for “copperhead cable” brings up Complainant three times before the Respondent’s business and a number of other wire companies using the “copperhead” name.
C. Additional Submissions
Complainant alleges that Respondent, in its reply, affirmed that actual confusion has occurred with consumers. Also, Complainant states that all the companies indicated in Respondent’s internet search that use the “copperhead” name are actually authorized users of Complainant’s COPPERHEAD trademark, as these companies are distributors of Complainant.
Complainant argues that as Respondent and the disputed domain name are shown as search results related to Complainant, there is not only a likelihood of further confusion, but actual confusion has occurred.
Also, Complainant states that the likelihood is increased as the Respondent utilizes a logo on pages accessible through the disputed domain name that is also similar to Complainant, and alleges that the selling of various wires and cables does not preclude the use of some of these wires and cables as tracer wire, and further, does not preclude the future sale of tracer wire by Respondent.
Finally, Complainant argues that Respondent knew or should have known of Complainant’s rights, and affirms that Respondent uses the disputed domain name to interfere with and divert business from Complainant and has created confusion in the marketplace, which evidences bad faith, as the domain incorporates in the whole Complainant’s trademark and domain name.
Complainant is the owner of the U.S Federal Trademark Registration No. 3,037,927 for COPPERHEAD, which was registered on January, 3, 2006.
Complainant is the owner of the domain name <copperheadwire.com>, which was registered on March, 26, 2004.
The disputed domain name was registered on April, 05, 2016.
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.
It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)).
In the present case, the Panel finds that Complainant has rights to the COPPERHEAD mark through its registration of the trademark with the USPTO and extensive and longstanding use of the mark in commerce since 2004. Also, complainant’s use and registration predate Respondent’s April 05, 2016 registration of the disputed domain name.
The disputed domain name is confusingly similar to Complainant's COPPERHEAD registered trademark, because it incorporates the mark in its entirety and merely adds the generic terms “cable” and “wire”, which are related to Complainant’s business, and the gTLD “.com”. The Panel agrees that neither the addition of generic terms, nor the addition of any generic Top-Level Domain (“gTLD”) suffix in a domain name, serves to serves to adequately distinguish Respondent’s domain name from a complainant’s mark.
On the subject of any generic Top-Level Domain (“gTLD”) suffix in a domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of WIPO Overview 2.0). Therefore, the suffix “.com” in the disputed domain name cannot be taken into account as a distinctive element. See The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491.
Also, the disputed domain name incorporates Complainant’s domain name <copperheadwire.com> in its entirety, which was registered in 2004, and merely adds the generic term “cable”, which is connected to the goods offered by Complainant.
Moreover, Respondent has admitted in its reply that the disputed domain name “perhaps is too similar” to Complainant’s COPPERHEAD trademark, and also that the disputed domain name has resulted in confusion, as Respondent has received at least one phone call from customers seeking Complainant’s products.
Accordingly, the Panel finds that Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy.
In the subject matter case, Complainant has established that it is the owner of the U.S Federal trademark Registration No. 3,037,927 for COPPERHEAD, which was registered on January, 3, 2006, as well as it is using the trademark in commerce since 2004 in connection with tracer wires. Also, Complainant has established that it is the owner of the domain name <copperheadwire.com> since 2004.
Complainant also states that it has not authorized, licensed, permitted or otherwise consented to Respondent’s use of its trademark in the disputed domain name.
In light of this, Complainant has prior rights in the COPPERHEAD trademark which precede the Respondent's registration of the disputed domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
Respondent alleges in its reply that it operates in the wire and cable business for more than 30 years. However, there is absolutely no evidence of record that Respondent has ever been commonly known by either of the disputed domain name or more generally the mark COPPERHEAD.
Besides, Respondent links a confusingly similar domain name to a site offering goods and services which compete with Complainant’s business, and, therefore, is not making bona fide offerings through the domain name, neither a legitimate noncommercial nor fair use. See Global Rental Co., Inc. v. Truck Sales, NAF Claim No. 1498509 (finding a domain advertising the same types of trucks as the complainant was not being used to make bona fide offerings); Computerized Sec. Sys., Inc. v. Hu, NAF Claim No. 0157321 (finding a domain name selling electronic locks similar to those offered by the complainant was not being used to make bona fide offerings).
Further, according to webpages viewable through the disputed domain name, Respondent uses a logo similar to that which can be found in connection with Complainant’s trademarks and goods, which is evidence that Respondent is not making a bona fide offering of goods and services.
Moreover, the WHOIS information associated with the disputed domain name identifies Respondent as, “MICHAEL SCHMITTINGER,” which does not resemble the disputed domain name. Panels have held that a Respondent is not commonly known by a disputed domain name based on a lack of authorization to use a mark, lack of a relationship with a Complainant, WHOIS information, and a lack of information to the contrary. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014).
The Panel finds that Respondent have failed to produce any evidence to establish any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent have no rights or legitimate interests in the disputed domain name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
Based on all arguments provided, the Panel finds that Respondent does not have the right to completely appropriate Complainant’s trademarks, once it would mislead Internet users as to the source or affiliation of the website redirected by the disputed domain name.
The disputed domain name incorporates in the whole Complainant’s COPPERHEAD trademark and merely adds generic terms, which are related to Complainant’s business, and also uses the domain name to sell similar products as the products offered by Complainant. This behavior confuses the consumers and attracts internet users to the illegitimate domain name for commercial gain, which can be considered bad faith.
The Panel verifies that Respondent has admitted that the disputed domain name has resulted in confusion, as Respondent has received at least one phone call from a customer seeking Complainant’s products, which is evidence that, despite the small difference between the products commercialized by the website redirected by the domain name, it can cause confusion for the consumers.
Panels routinely find that using a Complainant’s mark to operate a business in competition with a complainant demonstrates a bad faith attempt to confuse and attract internet users for commercial gain under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Further, the Panel finds that Respondent was aware of Complainant and its trademark at the time of registration of the disputed domain name, as Respondent incorporated the COPPERHEAD trademark in its entirety, and also Complainant’s domain name, merely adding generic terms, and uses the domain name to act in the same market of Complainant.
Moreover, Respondent uses a similar logo to Complainant’s, which also demonstrates that Respondent was aware of Complainant when it registered the disputed domain name.
In view of the above, and considering the totality of the circumstances of the case, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copperheadwirecable.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Rio de Janeiro, January 30, 2017
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