DECISION

 

Richard Beilstein / Heavy Duty Ramps, LLC v. Kevin Jakopin / Landsport

Claim Number: FA1601001657777

 

PARTIES

Complainant is Richard Beilstein / Heavy Duty Ramps, LLC (ďComplainantĒ), represented by Benjamin Imhoff of Andrus Intellectual Property Law, LLP, Wisconsin, United States.† Respondent is Kevin Jakopin / Landsport (ďRespondentĒ), represented by David Jakopin of Pillsbury Winthrop Shaw Pittman LLP, California, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hdramp.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Carol Stoner, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 22, 2016; the Forum received payment on January 22, 2016.

-1-

On January 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hdramp.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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

On January 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to postmaster@hdramp.com.† Also on January 27, 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 Respondentís registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on February 22, 2016.

 

On February 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.

 

 

-2-

 

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name <hdramp.com>, be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a Wisconsin Limited Liability Company that has used the HD RAMPS mark in connection with its business of design, manufacture, and sales of ramps since at least January 1, 2005. Complainant registered the HD RAMPS mark with the United States Patent and Trademark Office (ďUSPTOĒ) (Reg. No. 4,835,023, registered October 20, 2015), which demonstrates Complainantís rights in its mark. The Panel is directed to Attached Annex J for a copy of Complainantís USPTO registration. Complainant also owns common law rights in the mark. The <hdramp.com> domain is confusingly similar to Complainantís mark as it wholly incorporates Complainantís mark, removes the letter ďsĒ from Complainantís mark, eliminates the spacing between the words of Complainantís mark, and adds the generic top-level domain (ďgTLDĒ) ď.com.Ē

 

-3-

 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainantís mark. Second, Respondent is not licensed or authorized to use Complainantís mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use.

 

Complainant recites that Complainant and Respondent have a long and bitter history; Canaramp, a predecessor company to Heavy Duty Ramps, was owned by Complainant and supplied products to Landsport. Complainant discovered that his partner at Heavy Duty Ramps had conspired with Landsport to form a new operation, Black Hills Engineering, to cut Canaramp sales and supply Landsport with Complainantís designs. Complainant founded Heavy Duty Ramps in 2005. In 2007, Respondent took over operations of Landsport. In 2010 and 2013, Complainant and Respondent were involved in patent litigation proceedings. Complainant further alleges that because of the bad blood between them, that †Respondent registered the disputed domain and †uses its domain to sell products and services that compete directly with Complainantís business. The Panel is directed to screenshots of Respondentís resolving webpages.

 

Complainant lastly alleges that Respondent has registered and is using the disputed domain name in bad faith through the following actions. First, Respondentís use of the domain disrupts and competes with Complainantís business because Respondent uses the domain to sell products and services that compete with Complainantís business. Second, Respondent has intentionally attempted to attract, for commercial gain, Internet users to

 

-4-

 

Respondentís webpage by creating a likelihood of confusion with Complainantís mark. Third, the look and feel of Respondentís resolving website makes it clear that it is attempting to pass itself off as Complainant. Fourth, Respondent has engaged in the tactic of typosquatting. Finally, Complainant alleges that Respondent has been aware of Complainantís existence for years and, as such, registered the disputed domain with actual knowledge of Complainantís mark.

 

B. Respondent

Respondent alleges that its registered domain name of <hdramp.com> is not identical or confusingly similar to Complainantís mark. Complainant asserts common law rights in the HD RAMPS mark since 2005, but it fails to provide any evidence of such common law use. Specifically, Complainantís Attached Annexes E and K make no mention of the HD RAMPS mark. Moreover, the disputed domain name is comprised of common and generic terms and thus cannot be deemed identical or confusingly similar to Complainantís mark.†

 

Respondent alleges that Respondent has rights and legitimate interests in the domain, through bona fide usage of the mark. The term ďHD rampsĒ is commonly used in Respondent and Complainantís industry to refer to ďheavy duty ramps.Ē

 

Respondent contends that Respondent did not register and is not using the domain name in bad faith. Respondent manufactures and sells aluminum ramps, which are used for heavy duty applications onto which products such as cars, trucks, and helicopters can be placed. Respondent alleges that competition between the two corporations is not alone evidence of bad faith. The term ďHDĒ is not exclusively descriptive of Complainantís business.

 

-5-

 

Respondent lastly alleges that Complainant has made a bold face attempt to obtain Respondentís legitimate domain name of <hdramp.com> in a case of Reverse Name Hijacking under Rule 15 of the UDRP rules.

 

 

FINDINGS

(1)  The domain name <hdramp.com> 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.

 

DISCUSSION

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.

-6-

 

Identical and/or Confusingly Similar

 

Panel is charged with the twin determinations of whether Complainant has rights in a trademark, as well as a determination of whether Respondentís disputed domain name of <hdramp.com> is identical or confusingly similar to Complainantís trademark.

 

The HD RAMPS marks have been continuously used by Complainant in connection with its business of design, manufacture, and sales of ramps since at least January 1, 2005. As persuasive evidence in support of its contention, Complainant has provided its LLC registration (Attached Annex B), which shows a ďregistered effective dateĒ of March 23, 2005, and its USPTO registration for the HD RAMPS mark (Attached Annex J), which reflects a first use in commerce date of January 1, 2005. †This continued usage demonstrates Complainantís common law rights in the mark for the purposes of Policy ∂ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ∂ 4(a)(i), as a result of complainantís continuous use of the CAM4 mark since 1999). Accordingly, the Panel finds that Complainant has demonstrated common law rights to the HD RAMPS mark per Policy ∂ 4(a)(i).

 

Panel has reviewed Complainantís registration of the HD RAMPS mark with the USPTO (Reg. No. 4,835,023, registered October 20, 2015) as evidenced by Attached Annex J.† Panel finds that trademark registrations with the USPTO

 

 

-7-

suffice to demonstrate a complainantís rights in its mark for the purposes of Policy ∂ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainantís rights in a mark under Policy ∂ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ∂ 4(a)(i).

 

Panel next assesses whether the disputed domain name of <hdramp.com> is identical or confusingly similar to Complainantís trademark.

 

In the case at issue, the <hdramp.com> domain name wholly incorporates Complainantís mark, removes the letter ďsĒ from Complainantís mark, eliminates the spacing between the words of Complainantís mark, and adds the gTLD ď.com.Ē Previous panels have found evidence of confusing similarity pursuant to Policy ∂ 4(a)(i) where a respondent removes the letter ďsĒ from a complainantís mark or eliminates the spacing between the words of a complainantís mark. See Keystone Publíg., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainantís UTAHWEDDINGS.COM mark because the domain name simply lacked the letter ďsĒ); see also Bond & Co. Jewelers, Inc. v. Tex. Intíl Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainantís mark under Policy ∂ 4(a)(i)). Previous panels have also determined that the affixation of the gTLD ď.comĒ is irrelevant to a Policy ∂ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys.,

 

 

-8-

 

FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (ďgTLDĒ) ď.comĒ was irrelevant). For these reasons, the Panel finds that Respondentís disputed domain is confusingly similar to Complainantís mark under Policy ∂ 4(a)(i).

 

While Respondent contends that the domain is comprised of common and descriptive terms and as such cannot be found to be identical or confusingly similar to Complainantís mark, the Panel finds that such a determination is not necessary under Policy ∂ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainantís mark. †See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondentís generic terms arguments only under Policy ∂ 4(a)(ii) and Policy ∂ 4(a)(iii) and not under Policy ∂ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondentís disputed domain name was identical to complainantís mark under Policy ∂ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ∂∂ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ∂ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.† See Hanna-Barbera Prods., Inc. v. Entmít Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a

 

 

-9-

prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ∂ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (ďComplainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.Ē).

 

Complainant has propounded a convincing argument that Respondent has no rights or legitimate interests in the disputed domain name. †The Panel notes that Complainantís Attached Annex H of the WHOIS information, merely lists ďKevin Jakopin / LandsportĒ as registrant. Further, Complainant has not granted Respondent any license or authorization to use Complainantís mark. And in fact, Respondent is a competitor of Complainant, as evidenced by their dueling websites. †As such, the Panel finds no basis in the available record to find that Respondent is commonly known by the disputed domain names pursuant to Policy ∂ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating ďnothing in [the respondentís] WHOIS information implies that [the respondent] is Ďcommonly known byí the disputed domain nameĒ as one factor in determining that Policy ∂ 4(c)(ii) does not apply).

 

††††††††† Panel thus finds that Complainant has made a prima facie case and so the onus

††††††††† shifts to Respondent to show that it has rights or a legitimate interest in the

††††††††† disputed domain name.

 

-10-

 

Respondent has not provided any evidence that Respondent is commonly known by the disputed domain name or any variant of Complainantís mark.

 

Respondent has provided no reliable evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Panelís view of

screenshots of Respondentís resolving webpages† (Attached Annexes K and L) show that Respondent uses its disputed domain name to sell products and

services that compete directly with Complainantís business. Previous panels have held that a respondentís use of a domain to sell products and/or services that compete directly with a complainantís 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (ďThe Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ∂ 4(c)(i) or a noncommercial or fair use pursuant to Policy ∂ 4(c)(iii).Ē). This Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ∂ 4(c)(i) and Policy ∂ 4(c)(iii). Therefore, Respondent has not satisfied its resultant burden to show that it does have rights and legitimate interests in the domain name of <hdramp.com.>

 

 

-11-

 

 

 

Registration and Use in Bad Faith

 

†††††††††† Complainant has provided compelling evidence that Respondent and

†††††††††† Complainant are competitors in the circumscribed ramp market and have been†††††††

†††††††††† aware of each otherís existence for years. For example, Complainantís actions†

†††††††††† against Respondent for patent and copyright infringement exemplify their

†††††††††† contentious history. And contemporaneous to the registration and use of the

†††††††††† <hdramp.com> domain name, Respondent expressly identified Complainant as

†††††††††† ďHD RampsĒ as shown by Complainantís Attached Annex C1.

 

The Panel has also reviewed Attached Annexes A, E, F, I, K, and L of copies of Complainantís declaration, screenshots of Complainantís resolving webpages, and screenshots of Respondentís webpages, respectively. As a result, Panel has concluded that Complainantís and Respondentís competitive and litigious history is proof indeed that Complainant and Respondent were well acquainted players †in the limited ramp market, well before Respondent registered the confusingly similar domain name of <hdramp.com> on March 7, 2014.† Past panels have held that a respondent demonstrated bad faith pursuant to Policy ∂ 4(a)(iii) where the respondent was well-aware of the complainantís mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was ďwell-awareĒ of the complainantís YAHOO! mark at the time of registration). Accordingly, this Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainantís mark, thereby violating Policy ∂ 4(a)(iii).

 

 

-12-

 

Respondentís domain name of <hdramp.com> resolves to a splash page that advertises the same type of goods offered under Complainants mark, according to Panelís view of Complainantís Attached Annex F. This splash page directs the consumer to the Respondentís website at Landsport.com, as shown by Panelís view of Complainantís Attached Annex I. Thus, Respondentís use of the domain disrupts and competes with Complainantís business because Respondent uses the domain to sell products and services that compete with Complainantís business. Previous panels have concluded that a respondentís use of a domain to sell products and/or services that compete directly with a complainantís business constitutes bad faith registration and use under Policy ∂ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ∂ 4(b)(iii) by redirecting Internet users to the respondentís competing website). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ∂ 4(b)(iii).

 

Panel notes, from a review of the screen shots of both Complainant and Defendant, that competing goods of heavy duty ramps are offered by both

vendors. These dueling screen shots are evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís webpage by creating a likelihood of confusion with Complainantís mark. Past panels have determined that the use of domain by a respondent to sell competing products and services is evidence of bad faith registration and use

per Policy ∂ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25,

 

-13-

 

 

2006) (finding that the respondentís use of the <arizonashuttle.net> domain name, which contained the complainantís ARIZONA SHUTTLE mark, to attract Internet traffic to the respondentís website offering competing travel services violated Policy ∂ 4(b)(iv)). For this reason, the Panel finds that Respondent registered and is using the disputed domain in bad faith pursuant to Policy ∂ 4(b)(iv).

 

Panel concurs with Complainant that the look and feel of Respondentís resolving website makes it clear that it is attempting to pass itself off as Complainant. The Panelís attention was directed to pages 9 and 10 of Complainantís Attached Amended Complaint, wherein Complainant provided a side-by-side comparison of Complainant and Respondentís resolving webpages. Here, it is obvious that Respondentís top banner, top banner colors, pictures, and text are strikingly similar to Complainantís. Prior panels have held that a respondent demonstrates bad faith registration and use where it attempt to pass itself off as a complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ∂ 4(a)(iii).

 

Respondent has engaged in the tactic of typosquatting by simply removing the letter ďsĒ from Complainantís HD RAMPS mark, in order to register its domain name of <hdramp.com>. †Previous panels have decided that a respondentís mere removal of a letter from a complainantís mark is considered typosquatting and is evidence of bad faith. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA

 

-14-

 

328127 (Nat. Arb. Forum Oct. 28, 2004) (ďBy engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ∂ 4(a)(iii).Ē). Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use under Policy ∂ 4(a)(iii).

†††††††††† Reverse Domain Name Hi-jacking

†††† †††††

††††††††† Respondent has asserted that Complainantís within Complaint constitutes an ††††

††††††††† effort to engage in reverse domain name hi-jacking of <hdramp.com>. As Panel

††††††††† has ruled that Complainant has legitimate rights in Respondentís confusingly

††††††††† similar domain name, which wholly incorporates Complainantís trademark,

††††††††† Respondentís claim is denied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hdramp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Further, Respondentís request that Complainant be adjudged liable for reverse domain name hi-jacking under the UDRP Rules, is denied.

 

Carol Stoner, Esq. Panelist

Dated:† March 09, 2016

 

-15-

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page