WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Custom Fibreglass Manufacturing Co. v. Brian Rommel
Case No. D2006-0514
1. The Parties
The Complainant is Custom Fibreglass Manufacturing Co., Long Beach, California, United States of America, represented by Fulwider Patton LLP, United States of America.
The Respondent is Brian Rommel, Spring, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2006. On April 26, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 26, 2006, eNom transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 5, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�30,�2006. The Response was filed with the Center on May 31, 2006. Complainant submitted a Supplemental Filing on June 6, 2006.
The Center appointed Mark Partridge as the sole panelist in this matter on June�15,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel issued Procedural Order No. 1 on July 11, 2006. Respondent provided a timely response to the Order on July 21, 2006, and the Complainant filed a timely reply on July 28, 2006.
4. Factual Background
Complainant is a manufacturer of fiberglass truck caps and covers. Complainant began using the mark SNUGLID in 1993, and is the owner of an incontestable U.S. Trademark Registration of SNUGLID for “cover for pickup truck bed,” issued September�24,�1996. Complainant registered the domain name in 1996, which is used for a website that promotes various products including the Snuglid pickup bed cover.
Respondent registered the domain name on April 25, 2000. At the time of objection, the domain name was used for a holding page stating, “Welcome to . We have not opened our doors for business just yet, but check back soon.” Below that appeared a banner ad for a web hosting company. Below the banner ad appeared the text “Are you looking for Truck Bed Covers? Please try the following links.” Twenty-three links appeared below that, including a link for Complainant as well as other suppliers of truck bed covers.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is identical to a mark in which it has rights; that Respondent has no relationship with Complainant and no legitimate interest in the disputed name; and that the domain name was registered and used in bad faith because the domain name is the equivalent of Complainant’s mark and leads to a website with an advertisement for web hosting services; because Respondent includes links to Complainant and competitors on its site; and because Respondent registered through a service that masked his identity.
B. Respondent
Respondent contends that he registered the domain name in good faith for use in connection with the sale of hats and headgear without prior knowledge of Complainant’s mark.
6. Discussion and Findings
It is apparent that the domain name is identical in material respects to a mark in which Complainant has rights. It is also apparent having regard to the material in the Complaint and the discussion below, that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, and that Respondent has not rebutted this. The more difficult issue is whether the domain name was registered and used in bad faith. Complainant bears the burden of establishing bad faith registration and use under the Policy.
Respondent claims he registered the domain name with the intent of selling hats or headwear items. It is difficult to assess this intent based on the record presented.
Bad faith registration requires that the Respondent had knowledge of the Complainant’s mark or at least acted in reckless disregard of another’s rights in the mark. Respondent concedes that he was aware of the Snug Top Company, but claims that he “had no knowledge of the Complainant’s registered trademark SNUG LID” until this case. Does this carefully-worded denial mean that Respondent had no knowledge that Complainant used SNUG LID or does it merely mean that Respondent had no knowledge that the mark was registered. In any event, Complainant’s federal registration provides Respondent with notice as a matter of law as to Complainant’s rights.
Mere knowledge of another’s mark is not sufficient on its own to establish bad faith registration. Trademark rights are not absolute; rather, they are appurtenant to the goods or services in connection with which they are used; thus, another may with knowledge of the mark adopt the same or similar mark in good faith for unrelated goods or services.
Although Respondent claims he intends to use the domain name for unrelated goods and services, there is no evidence that Respondent has ever engaged in the business of selling hats or any other clothing. Respondent also acknowledges his website “is not yet open for business and as such has no goods to offer.” Procedural Order No. 1 issued in this proceeding invited Respondent to submit evidence of demonstrable preparation to make bona fide use of the domain name prior to notice of any objection by Complainant. The material submitted by Respondent on this point shows that Respondent prepared pages for a website designed to sell hats in March 2004, well before Complainant gave notice of its objection. This evidence supports Respondent’s claim that he adopted the name in good faith for use in connection with hats, but it is not conclusive. There is nothing provided to show any other preparations to use the name for hats, either before or since that minimal activity. Thus, it is difficult to determine if these efforts were merely a sham to avoid an adverse ruling or if they were bona fide efforts to start an online hat business.
An additional consideration is the selection of the domain name itself. Is it plausible that the name was adopted for hats without knowledge of Complainant’s use? We acknowledge that Snug Lid has a descriptive or suggestive meaning apropos to hats, making it plausible that the name was selected in good faith without regard to Complainant’s use and registration for pickup covers. It does not appear from the evidence presented that Snug Lid is sufficiently famous or distinctive so as to preclude the possibility of good faith adoption. Indeed, the company history submitted by Complainant to prove the fame of its business emphasizes that “the name Snugtop became a household word,” but only mention Snug Lid in passing. Thus, the similarity of the names is not conclusive of bad faith.
Finally, we need to consider Respondent’s display of links to various truck bed cover manufacturers on his www. website. On its face, this supports Complainant’s conclusion that Respondent registered and used the domain name in bad faith to build traffic to his site for commercial gain based on confusing similarity with Complainant’s marks. It is not apparent whether these links provided Respondent with any commercial gain, but it does seem apparent that the effect of these links would be to redirect persons looking for Complainant to sites operated by its competitors and to increase the value of Respondent’s name for potential purchasers of the disputed domain name.
Complainant indicates that it noticed the listings on Respondent’s site in February 2006. Respondent says that these listings were not part of his original intent. Instead, they were added after Respondent received email requests “from time to time” for information about truck bed covers. As a results, Respondent states:
“The websites were listed in good faith and in alphabetical order in an effort to better help the consumer in finding the desired address. The Respondent, acting in good faith, was not aware listing the Complainant’s public website was in violation.”
Procedural Order No. 1 asked Respondent to submit evidence of the email requests he had received. The material submitted shows email messages for truck parts received on April 9, 2006, and May 2, 2006, before and after this proceeding was commenced. As a result of this proceeding, Respondent has removed the links from his site. Significantly, both messages came after the links were added to Respondent’s site, so they do not support Respondent’s claim that the links were added for a “friendly” purpose.
Complainant also cites Respondent’s use of a privacy protection service to register the domain name and Respondent’s registration of an additional domain name as evidence of bad faith. But the private registration alone is not enough to establish bad faith, and matches Respondent’s name and is in use as his email address, so these facts add little or nothing to the claim.
In the final analysis, Respondent’s registration and use of the domain name is suspicious, at least. Given the opportunity to submit additional evidence, Respondent provided minimal and questionable support for his claim of bona fide registration and use. Most significantly, Respondent has not presented evidence to confirm that he added truck bed cover links to his site in good faith. Instead, he provided email messages after the fact. It also seems significant that Respondent did not add any mention of “hats” to his site until after this action was filed. Were that his good faith intent, one might expect that an explanation of the proposed business would have been included, at least at the point where Respondent added links to truck bed cover manufacturers, to avoid association of Respondent’s site with Complainant. Instead, Respondent, with knowledge of Complainant, took steps to increase the association of his site with Complainant.
On balance, based on the record presented, it appears more likely than not (1) that the disputed domain name was registered and used for commercial gain based on its similarity with Complainant’s mark, and (2) that alleged intent to use the name for hats was a pretext. Accordingly, the Panel finds that the domain name was registered and used in bad faith in violation of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Mark Partridge
Sole Panelist
Dated: August 2, 2006
Full & Egal Universal Law Academy