WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apartment Temporaries, Inc. v. AAA Staffing, Ltd.
Case No. D2001-0810
1. Parties
The Complainant in this administrative proceeding is Apartment Temporaries, Inc., a Texas corporation, having a principal place of business at 1425 Greenway Drive, Suite 100, Irving, Texas, U.S.A.
The Respondent is AAA Staffing, Ltd., with an address of 908 Town & Country Blvd., Suite 240, Houston, Texas, U.S.A.
2. Domain Names and Registrar
The domain names in dispute are as follows and . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on June 19, 1999. The domain name was registered by Respondent with NSI on July 12, 1999.
3. Procedural Background
On June 19, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on July 11, 2001.
Respondent filed a Response, which was received by the WIPO Arbitration and Mediation Center via e-mail on July 27, 2001.
The decision of the Panel was due to WIPO on or before September 2, 2001.
4. Factual Background
Complainant is a provider of temporary and permanent personnel to the apartment industry. According to the complaint, Complainant has continuously used the mark APARTMENT TEMPORARIES in interstate commerce in the U.S. since 1986.
Complainant owns U.S. Trademark Registration No. 2,361,494, for the mark APARTMENT TEMPORARIES INCORPORATED THE STAFFING SOURCE FOR THE APARTMENT INDUSTRY and DESIGN (consisting of a five-point star) (the phrases TEMPORARY INCORPORATED and THE STAFFING SOURCE FOR THE APARTMENT INDUSTRY disclaimed). Complainant also filed an intent-to-use application to register the mark APARTMENT TEMPORARIES INCORPORATED (the phrase TEMPORARIES INCORPORATED disclaimed). The application was published for opposition on April 11, 2000. See Complaint, Annex 3.
On or about May 17, 1999, Complainant discovered that Respondent was using the phrase APARTMENT TEMPORARIES "R" US. By letter dated June 3, 1999, Complainant notified Respondent that it was infringing Complainant's mark and requested that Respondent "cease and desist" from its use of the APARTMENT TEMPORARIES mark. Counsel for Respondent responded to the letter by alleging that Respondent did not intentionally infringe any of Complainant's trademark rights and would cease use of the mark APARTMENT TEMPORARIES "R" US until the matter could be resolved. On June 11, 1999, Respondent placed two ads in the "Dallas Morning News" directing customers to its disputed web sites.
As noted above, Respondent registered the domain names in dispute in June and July of 1999.
5. Parties' Contentions
Complainant contends that the domain names in issue are confusingly similar to Complainant's registered mark and virtually identical to the mark that is the subject of Complainant's pending intent-to-use application.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name since Respondent is not a licensee of Complainant and has not received any permission or consent to use the mark APARTMENT TEMPORARIES or apply for the domain names.
Finally, Complainant contends that Respondent registered and uses the domain names in "bad faith." In support of such assertion, Complainant notes that Respondent registered the domain names after receiving Complainant's June 3, 1999 letter. Complainant alleges that the domain names were registered by Respondent "primarily for the purpose of disrupting the business of a competitor," within the meaning of para. 4(b)(iii) of the Policy. According to Complainant, the domain name is set up so that users are redirected to Respondent's web site at , which is being used in connection with temporary and permanent jobs. The domain name currently offers services related to web site creation and maintenance, the Complainant asserts.
In the alternative, Complainant alleges that, by using the domain names in dispute, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location, within the meaning of para. 4(b)(iv) of the Policy.
In its Response, Respondent contends that Complainant does not own a trademark on the common words "apartment temporaries." Complainant's U.S. registration, Respondent contends, confers no rights to the generic words "apartment" or "temporaries."
Respondent further alleges that it is simply using the domain names in dispute to describe the services it offers and that such use is not violative of the Policy, pursuant to para. 4(c)(iii). According to Respondent, "[t]he domain names were acquired by [it] for exactly the same reason, and the only reason, [Complainant] wants them - they describe the services which [Respondent] offers. The domain names were not acquired, and are not used, to trade on the trademarks claimed by [Complainant] or to cause confusion. [Respondent] expended monies in the acquisition of these names and in the preparation of its Internet sites, none of which mention [Complainant] or make any use of the trademark issued to or applied for by [Complainant]. [Complainant's] belated attempt to steal these domain names from [Respondent] is not an attempt to preserve legitimate trademark rights or to prevent confusion of the public. It is simply an attempt to reduce and counteract the success enjoyed by [Respondent] in its competition with [Complainant]." Respondent also alleges that it acquired the domain names at issue with the intent to use the names in connection with a bona fide offering of goods and services.
With respect to Respondent's actions after receipt of Complainant's "cease and desist" letter, Respondent argues that, while it did agree to stop the use of the phrase "Apartment Temporaries `R' Us," it did not agree to discontinue use of the common words "apartment" and "temporaries" to describe its services. Further, Respondent asserts, the newspaper ads were placed prior to the controversy and could not be withdrawn and replaced within the time existing.
Respondent further denies that it is using the domain names "primarily to disrupt the business of a competitor." Respondent submits that "Sec 4(b)(iii) of the Policy is not intended to prevent competition or to be used by one competitor to prevent another from describing services offered on the Internet. Rather, this policy is intended and should be limited, to prevent an offensive use of a domain name which has for its primary purpose the disruption of a competitor's business with its attendant costs and expense." Respondent also argues that it is not its intent to create confusion and that the use of the common words "apartment" and "temporaries" to describe its services does not result in confusion.
6 . Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant has not met all the requirements set forth in para. 4(a) of the Policy.
The Policy requires that the domain name(s) in issue be identical or confusingly similar to a mark in which complainant has rights. The evidence establishes that Complainant has rights in the marks APARTMENT TEMPORARIES INCORPORATED THE STAFFING SOURCE FOR THE APARTMENT INDUSTRY and DESIGN (consisting of a five-point star) (the phrases TEMPORARY INCORPORATED and THE STAFFING SOURCE FOR THE APARTMENT INDUSTRY disclaimed) and APARTMENT TEMPORARIES INCORPORATED (the phrase TEMPORARIES INCORPORATED disclaimed).
The Panel concludes that the domain names in dispute and are at least confusingly similar to Complainant's marks. Both the domain names and the marks feature the term "Apartment Temporaries." While Complainant's registered mark includes a relatively distinctive design, as well as the descriptive phrase "The Staffing Source for The Apartment Industry," the Panel believes, based on its review of the registration certificate, that the phrase "Apartment Temporaries" remains the dominant portion of the mark. And, of course, Complainant's intent-to-use application features even more prominently the phrase "Apartment Temporaries."
The Panel determines, however, that Respondent has rights to and legitimate interests in the domain names. The Panel concludes that Respondent is making a legitimate fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, within the meaning of para. 4(c)(iii) of the Policy. The affidavit submitted by Respondent's secretary and treasurer, John B. Laird, Jr. (see Response, Annex 1), indicates that Respondent "is now and has been continuously engaged in the business of locating and providing temporary personnel to apartment projects." That being the case, the Panel finds that Respondent's use of the terms "apartment" and temporaries" is purely descriptive in character, i.e., used to describe the nature of Respondent's services. Such use is considered to be "fair use." (See 15 U.S.C. �1115(4)). Further, the Panel finds that Respondent use of the term "apartmenttemporaries" in its domain names is not designed to misleadingly divert consumers or to tarnish any of Complainant's trademark rights.
While the Panel's determination on the "fair use" issue is determinative of the outcome of this proceeding, it further concludes that there is no evidence that Respondent registered and uses the domain names in "bad faith." None of the circumstances set forth in para. 4(b) of the Policy appears applicable. The Panel agrees with Respondent that "Sec 4(b)(iii) of the Policy is not intended to prevent competition or to be used by one competitor to prevent another from describing services offered on the Internet" and that the use of the common words "apartment" and "temporaries" to describe its services does not result in confusion. Annex 2 to the Response, which sets forth the results of computerized searches for the query "apartment temporaries," supports the determination that the phrase "apartment temporaries" is used widely within the relevant industry to describe the services offered. Given such widespread, descriptive use of the terms "apartment" and "temporaries," the phrase "apartment temporaries" does not serve to identify source and, thus, there can be no likelihood of confusion.
The Panel further determines that there is no other evidence of "bad faith." While Complainant notes that newspaper ads directing readers to the disputed web sites were published shortly after Respondent received the June 3, 1999, the evidence (see Laird affidavit, para. 4) indicates that Respondent attempted to "pull" such ads, but was unable to do so. Further, the fact that Respondent registered the disputed domain names within weeks of receipt of the June 3 letter does not support a finding of "bad faith" where, as here, the evidence indicates that Respondent is making a fair use of the names.
7. Decision
In view of the above, the Panel denies Complainant's request for transfer to it of the domain names and .
Jeffrey M. Samuels
Sole Panelist
Dated: September 2, 2001
Full & Egal Universal Law Academy