United States Steel Corporation v. Scott Walker / Rhino Ladder Guard
Claim Number: FA1905001842116
Complainant is United States Steel Corporation (“Complainant”), represented by Michael D. Lazzara, Pittsburgh, Pennsylvania, United States of America. Respondent is Scott Walker / Rhino Ladder Guard (“Respondent”), represented by Kerry D. Green of Edward L. White, P.C., Oklahoma City, Oklahoma, United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <ussteelfabricators.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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ussteelfabricators.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 May 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2019 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@ussteelfabricators.com. Also on May 14, 2019, 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 June 13, 2019.
On June 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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
a. Complainant, United States Steel Corporation, has offered goods and services in connection with the U.S. STEEL mark since as early as December 31, 1930.
b. Complainant asserts trademark rights in the U.S. STEEL mark through its registration with in the United States of America, in international class 6 to identify: “Flat-rolled, flat-rolled coated, and tubular steel products, namely, steel coils, sheets, and pipes”, in international class 40 to identify: “Custom rolling and fabrication of steel products, namely, the rolling and fabrication of flat-rolled, flat-rolled coated, and tubular steel products to the order and specification of others”, with Registration Number 4714744 since April 7, 2015 and in international class 6 to identify: “steel products, namely, steel coils” with Registration Number 2469301 since July 17, 2001.
c. Complainant owns the ussteel.com domain name since 1997.
d. Complainant trademarks are famous and widely recognized by the general consuming public of the United States of America as a source identifier for the goods offered by Complainant.
e. Complainant’s trademarks have acquired secondary meaning.
f. Respondent’s disputed domain name <ussteelfabricators.com> is confusingly similar to Complainant’s trademark U.S. STEEL as the disputed domain name reproduces it entirely.
g. Respondent has no rights or legitimate interests in the disputed domain name <ussteelfabricators.com>.
h. Complainant has not authorized Respondent to use Complainant’s trademarks for any purpose, neither has license them in any way to Respondent.
i. Respondent is not commonly known by the disputed domain name.
j. Respondent’s use of the disputed domain name is not made in connection with a bona fide offering of goods or services or noncommercial or fair use. Instead, the disputed domain name resolves to a parked page.
k. Respondent registered and uses the disputed domain name in bad faith.
l. Respondent attempted to intentionally attract for commercial gain internet users to its web site by creating a likelihood of confusion with Complainant’s marks.
m. Respondent had actual knowledge of Complainant’s rights in the U.S. STEEL mark prior to registration of the disputed domain name.
B. Respondent
a. Respondent’s domain name is not identical nor confusingly similar to Complainant’s trademark U.S. STEEL.
b. Complainant’s trademark consists of descriptive terms, and Complainant disclaimed “steel”.
c. The disputed domain name is distinguishable from Complainant’s mark in that “fabricators” is appended and therefore not identical.
d. Complainant has failed to present any evidence of actual confusion related to Respondent’s disputed domain name and Complainant’s trademarks.
e. Respondent has legitimate interests in the disputed domain name.
f. Respondent chose the disputed domain name to describe the type of metal they would be using and to distinguish from other metal buildings construction companies.
g. Respondent was not aware of Complainant before receiving the notice.
h. Respondent’s business is different from Complainant’s business.
i. Respondent owns METROPLEX FACILITY MAINTENANCE.
j. Respondent’s son is an independent contractor for IRON COWBOY WELDING LLC.
k. Respondent told his son that he would create a company called US STEEL CONSTRUCTION LLC as a part of METROPLEX FACILITY MAINTENANCE.
l. Respondent has been unable to build a website for his business due to lack of time and costs limitations.
m. Respondent intends to make commercial use of the disputed domain name but has decided to delay until after this matter is resolved.
n. Respondent did not register or use the disputed domain name <ussteelfabricators.com> in bad faith as Respondent had no intent to sell, rent, or otherwise transfer the domain name.
o. Respondent did not acquire the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name or has not shown such a pattern of conduct.
p. Since Respondent has not built the website, it has not intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark.
1. Complainant owns the trademark U.S. STEEL in the United States of America, in international class 6 to identify: “Flat-rolled, flat-rolled coated, and tubular steel products, namely, steel coils, sheets, and pipes”, in international class 40 to identify: “Custom rolling and fabrication of steel products, namely, the rolling and fabrication of flat-rolled, flat-rolled coated, and tubular steel products to the order and specification of others”, with Registration Number 4714744 since April 7, 2015 and in international class 6 to identify: “steel products, namely, steel coils” with Registration Number 2469301 since July 17, 2001; that is, since before the disputed domain name was registered by Respondent.
2. Respondent has never been commonly known by the disputed domain name or the trademark U.S. STEEL.
3. Respondent is not affiliated with Complainant in any way.
4. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
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 contends to be the owner of the trademark U.S. STEEL in the United States of America to cover goods within international class 6 and services within international class 40.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark U.S. STEEL (Exhibits 3 and 4 to the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark U.S. STEEL for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark U.S. STEEL.
In the first place, before establishing whether or not the disputed domain name <ussteelfabricators.com> is confusingly similar to Complainant’s trademark U.S. STEEL, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
“The 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, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
Defendant argues that there is no evidence of confusion, that Complainant’s trademark disclaimed the word “steel” and that the disputed domain name is distinguishable from Complainant’s mark in that “fabricators” is appended and therefore not identical.
Firstly, the Policy never requires for Complainant to demonstrate the confusion. On the contrary, applies when the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Secondly, Defendant’s statement about Complainant’s disclaimer is nor accurate. As per the U.S. STEEL trademark registration: “no claim is made to the exclusive right to use "steel" apart from the mark as shown”. Which means that there is an exclusive right when the trademark is taken as a whole.
Finally, the word “fabricators” is a descriptive word for the allege services to be provided with the disputed domain name. In fact, the expression “fabricators”, according to the Merriam Webster Dictionary is an noun from fabricate, which means, ones who fabricates, and fabricate means: “to construct from diverse and usually standardized parts”[iii] which simply described the services to be provided with the trademark U.S. STEEL as it can be extracted from the disputed domain name that the owner, fabricates U.S. STEEL. Consequently, the expression “fabricators” lacks distinctiveness to avoid creating confusion with the trademark U.S. STEEL. Hence, consumers are likely to expect the disputed domain name to be related to U.S. STEEL products and services.
Thus, the Panel believes that the disputed domain name <ussteelfabricators.com> is confusingly similar to the trademark U.S. STEEL as per the typical UDRP criteria. The Panel considers that the total reproduction of the trademark U.S. STEEL, by the disputed domain name <ussteelfabricators.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iv]. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the manufacturer of U.S. STEEL goods.
In addition, the Panel agrees with Complainant on the conclusion that including the term “fabricators” as a suffix of the disputed domain name is not sufficient to make the disputed domain name different from the trademark U.S. STEEL.
Respondent merely adds a descriptive expression “fabricators” to the distinctive trademark U.S. STEEL. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to it[v]. Hence, the disputed domain name should be deemed as confusingly similar to Complainant’s registered trademark[vi].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name <ussteelfabricators.com> is confusingly similar to Complainant’s trademark U.S. STEEL and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[vii].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[viii]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <ussteelfabricators.com> because of the following: i) Complainant has not authorized Respondent to use Complainant’s trademarks for any purpose, neither has license them in any way to Respondent; ii) Respondent is not commonly known by the disputed domain name; iii) Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services; and iv) Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, 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 or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial 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.
Respondent argues to be the owner of METROPLEX FACILITY MAINTENANCE and to have created the a company called US STEEL CONSTRUCTION LLC as a part of METROPLEX FACILITY MAINTENANCE for his son to operate and that Respondent has been unable to build a website for his business due to lack of time and costs limitations.
The Panel did not find evidence of current existence of the company METROPLEX FACILITY MAINTENANCE, since Exhibit 4 to the Response, states that the company METROPLEX, INC was formed in 1993, and that METROPLEX FACILITY MAINTENANCE LLC, was notified in 2012 of the Employer Identification Number. However, there is not a certificate of good standing or any other kind of evidence to convince the Panel of the existence of the company METROPLEX FACILITY MAINTENANCE (either INC or LLC) and its relationship with Respondent.
Moreover, Exhibit 5 to the Response, which according to Respondent is Metroplex Facility Maintenance’s Umbrella Companies is merely a list, without any support, such as the minutes of incorporation or a certificate of good standing. Exhibit 6 of the Response is a check to James Walker which merely proves that on May 25, 2019, IRON COWBOY WELDING LLC., issued a check for USD$799, date in which Respondent was already aware of the existence of this proceeding; nonetheless, there is no proof of who is James Walker and why did he received a check from IRON COWBOY WELDING LLC.
Exhibit 9 to the Response shows an Employer Identification Number for a company called METROPLEX-US STEEL CONSTRUCTION LLC and Exhibit 10 to the Response shows a Certificate of Liability Insurance, for METROPLEX- US STEEL CONSTRUCTION LLC. Nonetheless, neither of those documents establish a relationship between METROPLEX-US STEEL CONSTRUCTION LLC., and the Respondent herein.
Additionally, Exhibit 11 to the Response is a confusing chain of forwarded emails which originates in receipt sent from the email: <receipts+acct_1BGwnACsXNJs3ZCS@stripe.com> to <redeemedhomes1@gmail.com> of an alleged payment to Capital Steel Industries, LLC. Notwithstanding, the emails do not clarify the motive of the payment, the relationship between the emails and the disputed domain name or the relationship between James Walker and Respondent. Furthermore, given the initial email address “@stripe.com”, the Panel cannot even validate the source of the emails.
Finally, the Panel cannot accept Respondent’s word to have purchased the disputed domain name for his son to grow under the umbrella of METROPLEX, when Respondent proved in Exhibit 7 to the Response that all of Respondent’s domain names use the same structure, that is, including the METROPLEX word at the beginning.
Thus, Respondent’s alleged preparations to use the disputed domain name in connection with a bona fide offering of goods or services, were not demonstrated. The Panel did not find any indicia regarding use or intention to use the disputed domain name. The statement that: “due to the time and cost limitation, Respondent has been unable yet to take the next steps with the domain and build websites for his businesses”, is not acceptable to demonstrate preparations to use the disputed domain name.
Likewise, Respondent neither proved to be commonly known by the disputed domain name not to be making a legitimate noncommercial or fair use of the disputed domain name.
Quoting a list of trademarks including the word STEEL or the particle US (Exhibit 3 to the Response), or even the combination of both words US STEEL, without indicating the owner or status of said trademarks, does not grant Respondent legitimate interest in the disputed domain name.
Also, the allegations concerning Complainant’s trademark having disclaimed “steel” are deceiving as the registration states: “no claim is made to the exclusive right to use "steel" apart from the mark as shown”; thus, the word STEEL is not disclaimed but Complainant does not have rights concerning the word steel, individually considered.
Consequently, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, as:
There has been no evidence produced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the trademark U.S. STEEL in its business operation.
There has been no evidence filed to show that Complainant has licensed or otherwise permitted Respondent to use the trademark U.S. STEEL or to apply for or use any domain name incorporating the trademark U.S. STEEL.
There has been no evidence to show that Respondent has been commonly known by the disputed domain name.
There has been no evidence to show that Respondent has any registered trademark rights with respect to the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s trademark U.S. STEEL.
There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The plan to use the disputed domain name once this proceeding is finalized is not demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Respondent claimed that “due to the time and cost limitation, Respondent has been unable yet to take the next steps with the domain and build websites for his businesses”.
As stated by the panel in State Farm Mut. Auto. Ins. Co.[ix], the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action. The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[x].
Thus, the Panel considers that Respondent obtained and is using the disputed domain name, primarily for the purpose of disrupting the business of a competitor, attracting Internet users by creating confusion and preventing the owner of the trademark from reflecting its sign in the disputed domain name.
Respondent proved in Exhibit 7 to the Response that all of Respondent’s domain names use the same structure, that is, including the METROPLEX word at the beginning. Thus, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s trademark and website as to the source, sponsorship, affiliation, or endorsement of his website.
The argument that the election of the words US STEEL were to describe the origin of the goods, lacks support, especially since the use of the U.S. STEEL trademark dates back to 1930, which makes to the Panel hard to believe that Respondent ignored the existence of said trademark in the market of products of international class 6 and services of international class 40 in the United States of America, given Respondent’s commercial activities.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes bad faith usage under paragraph 4(b) of the Policy.
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to the disputed domain name.
Reverse Domain Name Hijacking
Finally, as per Paragraph 15(e) of the Rules, the Panel is entitled as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As per Paragraph 1 of the Rules: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Regarding Reverse Domain Name Hijacking, there must be sufficient evidence for the Panel to conclude that Complainant has filed the Complaint in bad faith.
Reverse Domain Name Hijacking would succeed when Respondent’s use of the disputed domain name has not constituted bad faith and weaknesses in the Complaint are revealed during the proceeding[xi], such as, Complainant’s knowledge of: (i) its lack of relevant trademark rights, (ii) Respondent's rights or legitimate interests in the disputed domain name, or (iii) Respondent's lack of bad faith in the disputed domain name.
As Complainant duly proved the three elements of the Policy, Respondent’s allegation of Reverse Domain Name Hijacking could not succeed.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name <ussteelfabricators.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: June 25, 2019
[i] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[ii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iii] https://www.merriam-webster.com/dictionary/fabricators#other-words
[iv] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2011).
[v] See LEGO Juris A/S v. Wyntergreen.ca, D2010-2101 (WIPO Feb. 1, 2011) (“The disputed domain name <legodeal.com> is confusingly similar to the LEGO trademark in that Complainant adds only the generic term ‘deal’ as a suffix. The addition of ‘deal’ does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the website is related to Complainant.”). Prior cases have held that the incorporation of the term ‘deal(s)’ into a domain name is non-distinctive and does not avoid confusing similarity. See, e.g., Red Bull GmbH v. Euinet Corporation, D2007-0771 (WIPO July 24, 2007) (finding that the domain name <redbulldeals.com> is confusingly similar to the RED BULL trademark because ‘deals’ ‘refers to a commercial activity’ and refers specifically to “redbull”, suggesting a commercial activity relating to “redbull”, thereby confirming the trademark function of the “redbull” element of the disputed domain name’); see also QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc., D2009-0135 (WIPO May 6, 2009) (finding that the ‘deals’ portion of the disputed domain name <qvcdeals.com> ‘may tend, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name by Complainant’, owner of the QVC mark.”)
[vi] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO Apr. 24, 2008) (“[W]hen a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”); see also Bayer Aktiengesellschaft v. H. Monseen, D2003-0275 (WIPO May 30, 2003).
[vii] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO Apr. 24, 2012).
[viii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 1, 2000).
[ix] See State Farm Mut. Auto. Ins. Co. v. Sotelo d/b/a Toltec, FA1008269 (Forum July 17, 2007).
[x] See State Farm, supra note 10; see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000).
[xi] See Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, Case No. D2005-0309 (WIPO July 19, 2005) (Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151)). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.) See also Prime Pictures LLC v. DigiMedia.com L.P. Case No. D2010-1877 (WIPO Feb. 2, 2011).
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