Custom Modular Direct LLC v. Custom Modular Homes Inc. a/k/a Custom Modulars Direct, Inc.
Claim Number: FA0801001140580
Complainant is Custom Modular Direct, LLC (“Complainant”), represented by Karen
J. Bernstein, of The Law Offices of Karen J. Bernstein, LLC,
of New York, USA. Respondent is Custom
Modular Homes Inc. a/k/a Custom Modulars Direct, Inc., represented by Celia
A. Barlow, of Blackwell, Tarantine & Certo, P.C. of
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <modularsdirect.com>, registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com, and <custommodularsdirect.com>, registered with Wild West Domains, 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.
Alan L. Limbury, Esq., as Panelist.
Complainant submitted a Complaint to the
On February 8, 2008, Brandon Gray Internet Services, Inc. d/b/a Namejuice.com confirmed by
e-mail to the
On February 19, 2008, Wild West Domains, Inc. confirmed by e-mail to
On February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on the respective registrations as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on March 14, 2008.
A timely Additional Submission was received from Complainant and determined to be complete on March 19, 2008. A timely Additional Submission was received from Respondent and determined to be complete on March 24, 2008.
On March 25, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant designs and sells
custom made modular homes across
Complainant’s trademark applications were filed with the USPTO on December 22, 2005 and the marks were registered on May 22, 2007. Exclusivity was disclaimed in relation to the words ‘Custom Modular’ in the CUSTOM MODULAR DIRECT mark and ‘Modular’ in the MODULAR DIRECT mark. First use in commerce was claimed as at April 1, 2001. The amended Complaint contains no evidence of trademark use.
As to legitimacy, Complainant contends Respondent is utilizing the disputed domain names to operate an online business for profit in direct competition with Complainant and that it is not commonly known by the disputed domain names it has registered. A search of the WHOIS information reveals that the <modularsdirect.com> domain name was registered to Custom Modulars Direct, Inc., which Complainant contends is different from the disputed domain name. The WHOIS record for the <custommodularsdirect.com> domain name reveals that it was registered to Custom Modulars Direct, Inc., however, Complainant contends that this name is misleading. Moreover, Complainant has not licensed or authorized Respondent to use any of Complainant’s marks.
As to bad faith, Complainant contends Respondent is a direct competitor using confusingly similar domain names to divert Internet users to its websites so as to profit from and disrupt Complainant’s business. Complainant also urges the Panel to find that because Respondent is a competitor, it had constructive knowledge of Complainant’s rights in the CUSTOM MODULAR DIRECT and MODULAR DIRECT marks perhaps as early as 2001 and at latest by December 22, 2005, when Complainant filed its trademark applications with the USPTO.
Respondent contends that, in order to succeed under the Policy, a complainant must have rights in a trademark which antedate the date when the domain name in issue was registered (citing, inter alia, Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001).
Respondent says its registration and use of the disputed domain names predates Complainant’s registration as a business entity, trademark applications, and registration of the <modulardirect.com> domain name and that Complainant has provided insufficient evidence to support its claims of rights in the marks that date back to January 4, 2001.
The Principal of Respondent is Mr. Mark Pupilli. On August 20, 1999, Mr. Pupilli applied in his own name to register CUSTOM MODULAR HOMES as a Federal trademark in respect of residential and commercial building construction. The application was abandoned in 2001 in the face of an examiner’s objection that those words were merely descriptive.
On February 16, 2000, Mr. Pupilli
Mr. Pupilli registered in his own name the domain names <custommodularhomes.com> on October 8, 2002 and <custommodularhomes.net> on December 6, 2002.
On January 22, 2003 Custom Modular Homes Inc. registered in the
Articles of incorporation of Custom
Modulars Direct, Inc. were signed by Mr. Pupilli on November 8, 2004 and
that company was incorporated in
Respondent produces evidence of Complainant’s incorporation in
Respondent does not dispute that the domain names are confusingly similar to Complainant’s marks.
As to legitimacy, Respondent contends that it has been exercising its own superior rights in the disputed domain names in connection with marketing modular homes for sale for at least six years prior to Complainant’s registration as a business. Respondent contends that it has established rights and legitimate interests in the disputed domain names by both registering the domain names and obtaining state service mark rights in the CUSTOM MODULARS DIRECT and MODULARS DIRECT marks in the state of North Carolina prior to Complainant filing its federal trademark applications.
contends that Custom Modulars Direct, Inc. has been commonly known by that business name since at least November
11, 2004, when it was incorporated in
As to bad faith, Respondent contends that its registration of the disputed domain names predated both Complainant’s formation and Complainant’s rights in its marks. Accordingly, Respondent could have had no bad faith in registering the disputed domain names.
Respondent seeks a finding of Reverse Domain Name Hijacking against Complainant.
C. Additional Submissions
While the Forum’s Supplemental Rules
permit the filing of submissions in addition to the Complaint and Response,
they cannot require the Panel to consider them because to do so would be
inconsistent with paragraph 12 of the Rules, which does not contemplate
unsolicited submissions after the Complaint and Response and gives the Panel
the "sole discretion" as to acceptance and consideration of
additional submissions. See Eskimos, Inc. v. Phillips, FA 105950
(Nat. Arb. Forum May 15, 2002); Am.
Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002); Pierret v.
Sierra Tech. Grp., LLC, FA 472135
(Nat. Arb. Forum July 1, 2005) and Darice, Inc. v.
In this case, Complainant’s Additional Submission seeks to rebut Respondent’s claim of Reverse Domain Hijacking and, in addition, attaches an Exhibit in furtherance of Complainant’s contention that it has established common law trademark rights from at least 2000. This latter material was clearly available to Complainant when filing the Complaint. Its inclusion in the Additional Submission involves Complainant in splitting its case and amounts to an amendment to the Complaint, in violation of the Forum’s Supplemental Rule 7(f). However, since Respondent has responded to that material, the Panel exercises its discretion to admit both Additional Submissions.
Additional Submission, Complainant says Respondent has failed to rebut the
presumption of the validity of Complainant’s trademarks. It exhibits documents
on which it relies to establish trademark use in January, 2001, namely copies
of two Home Purchase Agreements, dated 5th January 2001 and 31st
January, 2001, in which the seller is “Custom Modular Direct a division of
Heritage Construction Associates, Inc, a corporation existing pursuant to the
laws of the State of
contends that Respondent’s
Respondent’s Additional Submission exhibits documents establishing that Mr. Pupilli was in business supplying modular homes under the name Custom Modular Homes in August and November, 1999. Respondent questions the authenticity of the Home Purchase Agreements dated in 2001, pointing out that they display the web address <www.modulardirect.com>, yet that domain name was not created until January 2003. Further, it says there is no evidence of any nexus between Complainant and Heritage Construction Associates, Inc., nor of any assignment or license agreement such as to enable Complainant to rely on use by the latter in this proceeding.
Complainant has failed to establish all the elements necessary in order to obtain the relief it seeks.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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, with respect to each of the domain names at issue, the Complainant must prove the following three elements to obtain an order that the domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Although Complainant’s registered marks postdate the disputed domain name registrations, this panelist adopts the prevailing view, contrary to Respondent’s submission and the cases on which Respondent relies, that paragraph 4(a)(i) of the Policy embodies no requirement that a complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited. The question whether Complainant established common law rights prior to Respondent’s disputed domain name registrations arises in connection with the other elements required to be proved.
It is common ground that the disputed domain names are confusingly similar to Complainant’s registered trademarks and the Panel so finds.
Complainant has established this element.
The burden of proof of the absence of rights or legitimate interests in the disputed domain name on the part of Respondent lies on Complainant, as it does with the all three elements required to be established in order to entitle Complainant to any relief. However, once a complainant establishes a prima facie case against a respondent, the burden shifts to the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: see for example Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) and Cassava Enters. Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
To succeed in a Complaint under the Policy in relation to an unregistered mark, Complainant must produce evidence proving that it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with Complainant and not with others not authorized by Complainant to use the mark. That is to say, Complainant must prove that it has acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Found. v. Meyer, AF0957 (eResolution, Nov. 13, 2001).
Here the only evidence of use prior to the registration of the disputed domain names upon which Complainant relies is the documents exhibited to its Additional Submission. In considering whether this evidence supports a finding of common law rights in CUSTOM MODULAR DIRECT and MODULAR DIRECT, it must be borne in mind that the words ‘custom’, ‘modular’ and ‘direct’ are ordinary descriptive words. In combination they are descriptive in the field of modular homes of the direct sale or delivery of custom-made modular homes. In the field of modular homes the marks are therefore inherently weak, as evidenced by Complainant being required to disclaim ‘Custom Modular’ and ‘Modular’ in its registrations. Accordingly substantial evidence of use and reputation is required to show distinctiveness at common law.
Even assuming for present purposes that the Home Purchase Agreements are authentic, despite the criticism made of them by Respondent, the documents evidence at most three transactions in 2001 in circumstances in which the name CUSTOM MODULAR DIRECT appears to have been used as the name of a division of a company, Heritage Construction Associates, Inc., not shown by any evidence in these proceedings to be associated with Complainant.
The Panel is not satisfied that Complainant has demonstrated that it acquired common law trademark rights prior to the registration of the disputed domain names. Since those domain names were both registered before Complainant applied to register its marks and before Complainant was incorporated, Complainant cannot rely on its subsequently registered marks to establish that Respondent was aware of Complainant or it marks such as to disentitle them to rights or legitimate interests in the disputed domain names.
Complainant has accordingly failed to establish a prima facie case of absence of rights or legitimate interests in the disputed domain names on the part of Respondent.
Except in the most unusual case, such as eGalaxy Multimedia Inc. v. T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001), a complainant cannot succeed under the Policy in reliance on trademark rights created after the registration of the disputed domain name. Those unusual cases involve advance knowledge on the part of the respondent of the complainant or of its plans to acquire a trademark. There are no such circumstances here. Complainant was not in existence when the disputed domain names were registered.
registration in January 2003 of its
There is no place for constructive notice under the Policy: The Way Int’l Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) and Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005). In any event, Complainant did not exist and, as the Panel has found, its trademarks did not exist when those domain names were registered, factors militating against a finding of either actual or constructive notice of either Complainant or its marks.
Complainant has failed to establish this element.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Nov. 8, 2000); see also Goldline Int’l Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 8, 2001); or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: See Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 21, 2000); or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: See Zuckerman v. Peeris, DBIZ2002‑00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).
Complainant’s failure to provide any evidence, prior to its Additional Submission, to establish common law rights indicates strongly that Complainant knew, when bringing this Complaint, that it had no common law rights on which it could rely to establish absence of legitimacy or bad faith on the part of Respondent and nevertheless brought this Complaint in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and the Panel declares that, in bringing this Complaint, Complainant has engaged in Reverse Domain Name Hijacking.
Alan L. Limbury, Esq., Panelist
Dated: April 8, 2008.
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