ThermaCote, Inc. v. Shahrukh Qurashi
Claim Number: FA2112001978253
Complainant is ThermaCote, Inc. (“Complainant”), represented by Jacob S. Wharton of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Shahrukh Qurashi (“Respondent”), represented by Law Offices of Kenneth M. Diesenhof, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermacoat.world>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2021, and the Forum received payment on December 23, 2021.
On December 24, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <thermacoat.world> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC, has verified that Respondent is bound by the Network Solutions, 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 29, 2021, the Forum, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thermacoat.world served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2022, by which Respondent could file a Response to the Complaint. Also on December 29, 2021, Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was delivered to Respondent via post and fax, and 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 24, 2022.
On January 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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, operating under the name and mark THERMACOTE, produces and markets a line of weather barriers and protective coating products, and has done so since 1987.
Complainant holds a registration for the THERMACOTE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3311719, registered October 16, 2007, and renewed as of June 19, 2017.
Since 2000, Complainant has employed the domain name <thermacote.com> to resolve to its main website in support of its business.
Respondent registered the domain name <thermacoat.world> on October 22, 2017.
The domain name is confusingly similar to Complainant’s THERMACOTE mark.
On June 29, 2017, the USPTO refused to register the mark THERMA*COAT in favor of Respondent on grounds of: “a likelihood of confusion with the mark [ ] in U.S. Registration No[ ]. 3311719 … for THERMACOTE ….”
Respondent is not affiliated with Complainant in any way.
Complainant has not licensed Respondent to use the THERMACOTE mark.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent, for its profit, purports to offer products on the website resolving from the domain name in direct competition with the business of Complainant.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the THERMACOTE mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
The <thermacoat.world> domain name is not confusingly similar to Complainant’s THERMACOTE mark.
Respondent has rights to and legitimate interests in the domain name.
Respondent used the domain name for over five years before Complainant brought this proceeding.
Complainant has not provided any evidence of actual confusion between the domain name and Complainant’s mark among Internet users.
Complainant’s assertion that the USPTO has made a final ruling on Respondent’s application for registration of the mark THERMA*COAT is untrue.
Respondent has not registered or used the domain name in bad faith.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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, to obtain an order that a domain name should be cancelled or transferred, Complainant must prove each of the following three elements:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the THERMACOTE trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Ecolab USA Inc. v. (name redacted), FA 1888902 (Forum April 20, 2020):
Complainant’s ownership of a USPTO registration for … [its mark] … is sufficient to demonstrate its rights in … [that] … mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <thermacoat.world> domain name is confusingly similar to Complainant’s THERMACOTE trademark. The domain name consists of a slightly differently spelled, but phonetically identical, copy of Complainant’s mark, with only the addition of the generic Top Level Domain (“gTLD”) “.world.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Bare Escentuals Beauty, Inc. v. Moniker Privacy Services, FA 1572771 (Forum September 1, 2014) (finding confusing similarity between a UDRP complainant’s mark and a respondent’s domain name where the domain name <bearminerals.com> replaced “BARE” in Complainant’s trademark with its homonym, “BEAR,” and appended the gTLD “.com.”). See also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Forum July 15, 2004):
Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, we take note of the fact that the USPTO, in assessing the question of confusing similarity under its own standards, concluded that Respondent’s proposed trademark THERMA*COAT must be refused registration because of the likelihood of confusion in the relevant marketplace with Complainant’s previously registered mark THERMACOTE, finding that the two marks were “substantially similar in appearance, sound and meaning.” Respondent attempts to counter Complainant’s evidence on this point by contending that the USPTO’s rejection of its trademark application for THERMA*COAT was not “final.” Respondent is correct in this assertion. The USPTO rejection was preliminary, so that Respondent was free to continue to prosecute its application upon submission of additional supporting evidence. Instead, as is reflected in the public record, Respondent abandoned its mark registration application on July 24, 2018.
For all of these reasons, we find that Complainant has satisfied the requirements of Policy ¶ 4(a)(i) that it establish standing to pursue its Complaint in this forum.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <thermacoat.world>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must present a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. We will therefore examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has no affiliation with Complainant and that Complainant has not licensed Respondent to use the THERMACOTE mark. Moreover, both the Complaint and the Response filed in this proceeding identify Respondent only as “Shahrukh Qurashi,” which does not resemble the domain name, while the pertinent WHOIS information for the contested domain name identifies its registrant only as “REDACTED FOR PRIVACY.” On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record of that proceeding showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent, for its profit, purports to offer products on the website resolving from the <thermacoat.world> domain name which are directly competitive with those of Complainant. In assessing the contending views of the parties on this aspect of Respondent’s claimed rights to and legitimate interests in the domain name, we find particularly noteworthy the chain of events spelled out in the parties’ submissions and relevant public records, which may be summarized, in pertinent part, as follows:
a. Complainant first used the mark THERMACOTE in commerce on November 12, 1987;
b. since 2000, Complainant has deployed the domain name <thermacote.com> to resolve to its main business website;
c. Complainant filed with the USPTO an application for registration of the THERMACOTE mark on May 25, 2005;
d. that mark became registered with the USPTO, as Registry No. 3311719, on October 16, 2007;
e. nearly ten years later, on March 29, 2017, Respondent filed with the USPTO an application for registration of the mark THERMA*COAT;
f. as of June 19, 2017, Complainant renewed its mark registration for THERMACOTE;
g. on June 29, 2017, the USPTO refused to register the proffered mark THERMA*COAT in favor of Respondent on grounds of: “a likelihood of confusion with the mark[ ] in U.S. Registration No[ ]. 3311719 … for THERMACOTE ….;”
h. less than four months later, on October 22, 2017, Respondent registered the domain name <thermacoat.world>; and
i. Respondent abandoned its trademark registration application for THERMA*COAT on July 24, 2018.
It is plain from the record before us that Respondent has, apparently in pursuit of an upper hand in the market for weather barriers and protective coating products, long struggled to overcome Complainant’s prior ownership of the THERMACOTE trademark. It is also evident that, as of June 29, 2017, when the USPTO rejected Respondent’s mark application for the mark THERMA*COAT, Respondent knew that it could not win the contest by resort to a confusingly similar mark. Respondent therefore promptly registered the <thermacoat.world> domain name and put it to work in direct competition with the business of Complainant. In these circumstances, we are forced to conclude that Respondent’s registration and use of the domain name constitutes neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute 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).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are convinced by the evidence that Respondent’s registration and use of the challenged <thermacoat.world> domain name, which we have found to be confusingly similar to Complainant’s THERMACOTE trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, OneWest Bank N.A. v. Matthew Foglia, FA1611449 (Forum April 26, 2015) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website operating in competition with the business of a UDRP complainant was evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
We are also persuaded by the evidence that, when Respondent registered the domain name here under scrutiny, Respondent knew of Complainant and its rights in the THERMACOTE mark (a fact conspicuously mentioned in the official document by which the USPTO rejected Respondent’s application to register a mark confusingly similar to the one much earlier registered by Complainant). This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a complainant’s rights in a mark which a UDRP respondent had mimicked in a confusingly similar domain name, and, therefore, that respondent’s bad faith in registering the domain name] through the name used for the domain and the use made of it.
See also JUUL Labs, Inc. v. han shun fei, FA 1916071 (Forum November 11, 2020), finding a respondent’s prior knowledge of a UDRP complainant’s rights in a mark incorporated in a confusingly similar domain name, and, therefore, that respondent’s bad faith registration of the domain name, where the domain name resolved to a website offering for sale products competing with the business of that complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <thermacoat.world> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 8, 2022
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