WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allegra Holdings, LLC v. Jamie Quint/Domains By Proxy, Inc.
Case No. D2008-0972
1. The Parties
The Complainant is Allegra Holdings, LLC, of Northville, Michigan, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Jamie Quint/Domains By Proxy, Inc., of Crown Point, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2008. On June 27, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, GoD, Inc. transmitted by email to the Center its verification response indicating that the registrant of the disputed domain name is Jamie Quint and providing the contact details. On July 3, 2008, the Center invited the Complainant to amend the Complaint to reflect the registrant as identified by the registrar.1 Subsequently on July 8, 2008, the Complainant filed an amendment to the Complaint. 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 July 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on August 11, 2008. 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.
4. Factual Background
The Complainant is in the business of providing custom sign design, manufacturing, installation and related services through a network of franchisees operating in the United States of America (“United States”), Canada, and the United Kingdom of Great Britain and Northern Ireland. The Complainant is the owner of several U.S. trademark registrations for the SIGNS NOW, and licenses the use of the mark to more than 200 franchised Signs Now businesses operating in the United States.
The Complainant has used the SIGNS NOW mark in commerce in the United States since as early as November 1983. In addition, the Complainant has registered the domain name , which the Complainant has used since 1996 with a website providing Internet visitors with information regarding the services offered by the Complainant and its franchisees under the SIGNS NOW mark.
The record reflects that the Respondent also is in the business of offering sign design, manufacture and related services.2 On September 11, 2007, the Respondent registered the disputed domain name through Domains By Proxy, Inc.'s proxy services, and thereafter began using the domain name to redirect Internet users to a commercial website related to the Respondent sign business.
After becoming aware of this situation, the Complainant demanded that the Respondent cease all use of the SIGNS NOW mark or any similar designations, and agree to surrender or cancel any domain names incorporating the SIGNS NOW mark or the Custom Signs Now designation. The Respondent thereafter adopted Custom Online Signs as a trade designation, and set up a website at the corresponding domain name . Nevertheless, the Respondent is using the disputed domain name to redirect Internet traffic to the Respondent's website.
5. Parties' Contentions
A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to its SIGNS NOW mark, which the Complainant contends has become well known by virtue of its extensive use and promotion. According to the Complainant, it has no relationship with the Respondent and did not authorize the Respondent to use the Complainant's mark or register domain names incorporating that mark.
According to the Complainant, after receiving the Complainant's notice letter the Respondent orally agreed to discontinue all uses of the trade name and mark CUSTOM SIGNS NOW, in consideration of which the Complainant provided the Respondent a reasonable period in which to cease using this designation and establish a new website using a different domain name. The Complainant alleges that the Respondent selected a new trade name – Custom Online Signs – and set up a new website using the domain name . According to the Complainant, however, the Respondent has continued to use the disputed domain name to redirect Internet visitors to the Respondent's new website, and has refused to cancel the registration for the disputed domain name despite repeated demands by the Complainant.
In view of the foregoing, the Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name, but instead has registered and is using the disputed domain name in a bad faith attempt intentionally to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or products and services offered on the website. The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) of the Policy, shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Complainant has presented uncontested evidence of its registration and use of the SIGNS NOW mark in the United States. At a minimum, the Complainant's marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant's mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. In this case, the disputed domain name incorporates the Complainant's SIGNS NOW mark in its entirety. The inclusion in the disputed domain name of the common and descriptive term “custom”, particularly in the context of the Respondent's use of the domain name, does not serve to dispel confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent is using the disputed domain name, which incorporates the Complainant's mark in its entirety, to redirect Internet users to the Respondent's commercial website, where products and services directly competing with those of the Complainant are offered for sale. It is uncontested that the Respondent has not been licensed to use the Complainant's mark or otherwise appropriate the mark for use with domain names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.3 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
There is no evidence that the Respondent has been commonly known by the disputed domain name, or any evidence of the Respondent's use of any trade name or other designation corresponding to the domain name prior to its registration. It is undisputed that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant's SIGNS NOW mark. The disputed domain name incorporates the Complainant's mark in its entirety, is confusingly similar to the Complainant's mark, and the Respondent is using the disputed domain name to redirect Internet users to the Respondent's website, from which the Respondent offers for sale products and services competing directly with those of the Complainant's. Under such circumstances, the Respondent's registration and use of the disputed domain name does not constitute use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the totality of circumstances demonstrates the Respondent's bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds from the relevant circumstances that the Respondent registered and is using the disputed domain name in a bad faith attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Dated: August 25, 2008
1 At the time of the filing of the Complainant, the domain name registrant as identified in GoD Inc.'s Whois database was the privacy protection service Domains By Proxy, Inc.
2 The term “Respondent” as used herein is a reference to Jamie Quint unless otherwise indicated. It appears from the record that the Respondent in the past has done business under the names Quint Studios, Inc. and Quint Signs Overnight.
3 Some panels have held that a respondent's lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., DoThe Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
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