Icon Technologies Ltd. v. MIKE WAUMANS / MIKE WAUMANS JR.
Claim Number: FA2001001879244
Complainant is Icon Technologies Ltd. (“Complainant”), represented by Troy Harwood-Jones of Icon Technologies Ltd, Manitoba, Canada. Respondent is MIKE WAUMANS / MIKE WAUMANS JR. (“Respondent”), represented by Zachary T. Gordon of Howard & Howard Attorneys PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icondirectinc.com>, registered with Fastdomain Inc..
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2020; the Forum received payment on January 16, 2020.
On January 16, 2020, Fastdomain Inc. confirmed by e-mail to the Forum that the <icondirectinc.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@icondirectinc.com. Also on January 20, 2020, 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 February 10, 2020.
On 18 February 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low 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 is a manufacturer and retailer of after-market motorhome parts, recreational vehicle parts, and accessories. Complainant argues that it has common law rights in the ICON and ICONDIRECT.COM marks. Additionally, Complainant has rights in the ICON and ICONDIRECT.COM marks through its registration of the marks with the United States Patent and Trademark Office ("USPTO") and the Canadian Intellectual Property Office ("CIPO") (e.g., USPTO Reg. No. 5,144,213, registered Feb. 21, 2017). Respondent’s <icondirectinc.com> domain name is confusingly similar to Complainant’s marks as Respondent merely adds the term “inc” to Complainant’s marks.
Respondent has no rights or legitimate interests in the <icondirectinc.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of services, nor a legitimate noncommercial or fair use, as Respondent is merely redirecting Internet users to Respondent’s legitimate website.
Respondent registered and used the <icondirectinc.com> domain name in bad faith. Specifically, Respondent is disrupting Complainant’s business and attracting Internet users for commercial gain by redirecting Internet users to Respondent’s legitimate website.
B. Respondent
While Complainant’s statutory rights in the ICON marks date back to April 27, 2015 and may have used one of the ICON marks as early as July 14, 2010, Respondent registered the disputed domain name on June 15, 2010. Additionally, Complainant’s marks are weak and exist in a crowded field of similar marks. Furthermore, Respondent’s <icondirectinc.com> domain name is not identical or confusingly similar to Complainant’s ICON marks.
Respondent has rights and legitimate interests in the <icondirectinc.com> domain name as Respondent is commonly known by the disputed domain name. Respondent formed a corporation “Icon Direct, Inc.” under the laws of the State of Michigan on March 10, 2010, in which Respondent serves as President and Registered Agent. Respondent uses the <icondirectinc.com> domain name for a bona fide offering of goods or services as a central website for customers to find Respondent’s various brands and products. Respondent has no knowledge of Complainant prior to receiving a demand letter on October 8, 2019. Finally, Complainant is abusing the purpose of the Policy to settle a trademark dispute.
Respondent did not register and use the disputed domain name in bad faith, as the disputed domain name predates Complainant’s ICON marks. Complainant makes conclusory statements without providing any evidence of Respondent’s alleged bad faith.
Complainant has established that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; but has failed to establish Respondent has no rights or legitimate interests in the domain name, or that the domain name has been registered and is being used in bad faith. Thus, Complainant has failed to establish each of the elements required under paragraph 4(a) of the Policy. Accordingly, the domain name at issue shall remain with Respondent.
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.
The Panel finds in favor of Complainant under this element.
Complainant claims rights in the ICON and ICONDIRECT.COM marks through its registrations of the mark with CIPO and USPTO (e.g., CIPO Reg No. TMA958192, registered Dec 16, 2016, USPTO Reg. No. 5,144,214, registered Feb. 21, 2017). Having a trade mark registration is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has rights in the ICON and ICONDIRECT.COM marks under Policy ¶ 4(a)(i).
Given this finding, it is not necessary for the Panel to rule on whether Complainant also possesses common law rights in the ICON and ICONDIRECT.COM marks. The Panel however observes that apart from printouts of its <www.icondirect.com> website, Complainant has not produced other evidence to support its assertions in relation to the history of use of the ICON and ICONDIRECT.COM marks, advertising expenditures, acquired secondary meaning, etc.
The Panel accepts Complainant’s argument that Respondent’s <icondirectinc.com> domain name is confusingly similar to Complainant’s ICONDIRECT.COM mark as the only difference is the term “inc” in the disputed domain name. The addition of a generic or descriptive term generally is not sufficiently to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).
The Panel also notes that the fact that the disputed domain name may have been registered before Complainant’s relevant trademark registrations does not by itself preclude the Panel’s finding of identity or confusing similarity under this first element.
The Panel considers that Complainant has not established this element.
Respondent has produced credible evidence that he formed a corporation under the name “Icon Direct, Inc.” back in March 2010 (which pre-dates Complainant’s trademark registrations and before any notice of this domain name dispute). The disputed domain name corresponds with this corporation name. In the absence of evidence contradicting the relationship between Respondent and this corporation (such issues would in any event very likely go beyond the scope of the Policy), the Panel finds it difficult to conclude that Respondent does not have the requisite rights or legitimate interests under Policy ¶ 4(a)(ii) – in particular by virtue of the criterion that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Since Complainant fails under Policy ¶ 4(a)(ii), it is not necessary for the Panel to consider this element. But for completeness, the Panel considers that Complainant also fails to satisfy this bad faith element.
The Respondent’s registration of the <icondirectinc.com> domain name, and Respondent’s formation of a corporation under the name “Icon Direct, Inc.”, both pre-date Complainant’s registration rights in the ICON and ICONDIRECT.COM marks. While Complainant asserts common law rights in the ICON and ICONDIRECT.COM marks dating back to 1997, Complainant has failed to convince the Panel as to the extent and history of such use and that Respondent had knowledge of Complainant’s marks at the time of registration of the domain name. Whereas Respondent has registered a domain name which corresponds with the name of a corporation which he set up. Thus, Respondent’s registration of the disputed domain name, in the absence of any contrary evidence, seems to have a legitimate basis.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <icondirectinc.com> domain name REMAINS WITH Respondent.
Eugene I. Low, Panelist
Dated: February 27, 2020
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