WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RUGGEDCOM, Inc. v. James Krachenfels Case No. D2009-0119 1. The Parties
1.1 The Complainant is RUGGEDCOM, Inc. of Ontario, Canada, represented by Riches, McKenzie & Herbert LLP of Canada.
1.2 The Respondent is James Krachenfels of California, United States of America represented by Berliner Cohen of United States of America. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 30, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On February 2, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 9, 2009. 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response March 3, 2009. The Response was filed with the Center March 3, 2009.
3.3 The Center appointed Matthew S. Harris, James A. Barker and Diane Cabell as panelists in this matter on March 24, 2009. The Panel finds that it was properly constituted. Each member of 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
4.1 The Complainant is a corporation incorporated in the province of Ontario and carrying on business in Canada and the United States. It is engages in the business of designing and manufacturing computer peripheral equipment including communication switches, gateways, computers and modems and has done so since early 2001. It has since April 2002 spent approximately USD4 million on advertising and marketing. However, most of that advertising spend has been in the last 4 years (expenditure prior to March 2005 was USD 400,000).
4.2 The Complainant has used the term RUGGEDSWITCH as a mark in relation to some of its products since at least January 2002 and describes it as one of the “two principle” (sic) marks of the company (the other presumably being RUGGEDCOM). It does not distinguish between how its marketing spend has been split between its various “marks”.
4.3 The Complainant is the owner of the following registered trade marks:
(i) Canadian registered trade mark registration no. TMA641723 filed on April 8, 2002 and registered on June 1, 2005 in the following form:
This mark is also subject to the following disclaimer:
“The right to the exclusive use of the word SWITCH is disclaimed apart from the trade-mark”.
(ii) United States service mark registration no. 3400556 in the Principal Register filed on October 25, 2005 and registered on March 25, 2008 for the word mark “RUGGEDSWITCH”; and
(iii) United States trade mark registration no. 3350474 in the Supplemental Register filed on October 25, 2005 and registered on December 4, 2007 for the word mark “RUGGEDSWITCH”.
4.4 The Respondent is an individual but is the general manager of LANStore Inc (“LANStore”) and the manager of marketing programs of GarrettCom Inc (“GarrettCom”). Both of these companies are sellers of heavy-duty industrial networking products for industrial automation, outdoor transportation, power utility transmission and distribution, mining, military, and other harsh environments. The products sold include switches, routers, media converters, device servers, and terminal servers. The companies are under common ownership and LANStore is a retailer of GarrettCom's products.
4.5 The Complainant and GarrettCom are competitors in the industrial ethernet market. GarrettCom was in existence prior to the Complainant.
4.6 In July 2005, the Complainant brought proceedings against LANStore before Nominet in relation to the domain name and before the Center in relation to the domain name .
4.7 The Respondent registered the Domain Name on September 20, 2005.
4.8 The web page operating from the Domain Name as at September 2008 comprised a number of distinct elements. Moving from top to bottom these elements were as follows:
(i) The heading ;
(ii) A picture comprising a montage of what appear to be various electronic components or products;
(iii) Some paragraphs of text commenting upon a previous decision of the United States Patent and Trademark Office (“USPTO”) refusing to register an application by the Complainant to register RUGGEDSWITCH as a trade mark in the United States principal register. There is a link to a decision dated May 31, 2004 in this respect. This decision would appear to relate to the trade mark that eventually was registered in the United States Supplemental Register with registered number 3350474 (i.e. the mark which is described in paragraph 3.6(iii) above);
(iv) Some further paragraphs of text giving what purports to be “a few examples of some rugged switches” and then listing a number of companies that are said to supply those products with links to their web sites. The first of the companies listed is GarrettCom;
(v) An advertisement for a switch sold by LANstore; and
(vi) A page footer with the text “©2006 Rugged Switch listings and information. All Rights Reserved”
4.9 The source code for this webpage also contained the meta name keywords “ruggedswitch, industrial, ruggedrouter, harsh environment”.
4.10 This web page continues to operate from the Domain Name at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant refers to its registered trade marks. It asserts that it had rights in the mark RUGGEDSWITCH prior to the registration of the Domain Name by reason of its Canadian trade mark registration and also relies on its United States trade marks.
5.2 It claims that the Domain Name is identical to all three of its marks and also confusingly similar to each of these marks. Reference is made in this respect to the decision in Covance, Inc. and Convance Laboratories v. The Covance Campaign, WIPO Case No. D2004-0206.
5.3 The Complainant asserts so far as rights and legitimate interests are concerned, inter alia, that none of the factors set out in paragraph 4(c) of the Policy apply in this case. It also refers to its submissions on the issue of bad faith, which are said to support its assertions regarding rights and legitimate interests.
5.4 On the issue of bad faith, reference is made to the competing nature of LANstore and GarretCom's activities. It claims that the Respondent has used and continues to use the Domain Name to re-direct Internet users to LANstore's website operating from the domain name . It also claims that the Complainant is using the Domain Name for the purposes of operating a “quasi-information site”.
5.5 It asserts that the Respondent is using the Domain Name to disrupt the business activities of the Complainant and asserts that the link to the USPTO decision is “outdated and misleading”. It also refers in this respect to the use of “Ruggedswitch” as a meta name which is claimed to have been with a view to directing customers looking for the Complainant to the web page operating from the Domain Name.
5.6 The Complainant also contends that LANstore has in the past engaged in a pattern of registering domain names that correspond to the trade marks of the Complainant. It refers in this respect to RuggedCom, Inc. v. LANstore, Inc.,WIPO Case No. D2005-0760 (November 15, 2005) in relation to the domain name and Nominet Appeal Panel decision RuggedCom, Inc. v. LANstore, Inc., DRS 02802 (February 1, 2006) in relation to the domain name . The Complainant was ultimately successful in both of these cases. B. Respondent
5.7 The Respondent contends that the Complainant has no valid trade mark rights in the term . The rights that the Complainant claims are said to be invalid because the term “rugged switch” is a commonly used generic name for a particular type of products sold in the industry in which the parties operate. Reference is made in this respect to United States case law. The Respondent also provides evidence in the form of web pages and other documents in which the words “rugged”, “rugged switch” or similar terms have been used in relation to these products.
5.8 Reference is also made to the decision of the USPTO cited on the webpage operating from the Domain Name. In that decision the examining attorney concluded that the term “ruggedswitch” was “clearly designed and intended to be readily read and perceived as the wording ‘rugged switch' [and] directly and unambiguously described the goods and/or a feature of the goods”.
5.9 The Respondent then turns specifically to the marks relied upon. So far as the Complainant's Canadian mark is concerned the Respondent asserts that the mark has “substantial design elements” and refers to the mark's disclaimer.
5.10 So far as the United States marks are concerned, reference is made to the fact that one of these is on the United States supplemental register. He asserts that in such a case it is clear from the decisions of previous panels that for a mark in the supplemental register to be treated as a trade mark for the purposes of the Policy, the Complainant must show that the relevant mark has subsequently acquired distinctiveness for the Complainant's goods and services.
5.11 The Respondent for the most part deals with the issues of rights or legitimate interests and bad faith together. The Respondent contends that previous decisions have held that a respondent has a right to register a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to a mark of the complainant. Cases cited in support of that proposition are National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424, p. 5, citing Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
5.12 The Respondent also contends that the scope of the Policy is limited in that it is “designed to curb the abusive registration of domain name in circumstances where the registrant is seeking to profit from and exploit the trademark of another” and that “[i]t is not a per se breach of the UDRP to register the trade mark of another as a domain name where the trade mark is a generic word”. Reference is made in this respect to the decisions in Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc.,WIPO Case No. D2002-0658 and M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. This approach is said to be consistent with the United States trade mark doctrine of fair use and United States case law is cited in this respect.
5.13 Further, the Respondent maintains that his registration of the Domain Name was not in bad faith in any event. He contends that the Domain Name was purchased by the Respondent on behalf of LANstore and GarretCom as part of a number of purchases of domain names in 2004 and 2005 that are said to comprise common industrial networking terms. These domain names are said to include , , , , , , , and . The Respondent asserts that he did not register the Domain Name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant. The Respondent also asserts that he did not register the Domain Name in order to profit from any goodwill that the Complainant might claim in the term “Ruggedswitch”.
5.14 So far as the other domain name cases that the Complainant has brought against LANstore are concerned, the Nominet case is said to be distinguishable from the present case because of the specific findings of the Panel as to the non-generic nature of the term “Ruggedcom”. The WIPO decision cited is said to have been “decided in large measure under a similar rationale”.
5.15 Lastly, the Respondent claims that if the Complainant were to contest the Respondent's evidence as to the “genericness” of the term embodied in the Domain Name, then this would be a case where there was significant conflicts of fact and evidence and the therefore the Policy should be exercised with caution or not at all. Reference is made in this respect to the Nominet decision Glue Dots International v. Fantes-Tak Ltd [2003] DRS 1159 and Policy decisions TAM Communications, Inc. v. 3DNet, Inc., WIPO Case No. D2002-1136 and accord Tough Traveler, Ltd. v. Kelty Pack, Inc., Mike Scherer, and Inkling Pen Co.,WIPO Case No. D2000-0783. 6. Discussion and Findings
6.1 What follows represents the views of the majority of the Panel in this case. The dissenting panelist has set out the reasons for her dissent at the end of this decision.
6.2 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 The Panel will address each of these issues in turn. However, before doing so it is convenient to briefly address two preliminary issues. The first is the Respondent's contention that the alleged complexities of this case are such that the conflicts of facts and evidence in this case are such that the Policy should be applied with “caution, or not at all”.
6.4 When faced with a similar argument in IFA Hotels & Resorts FZE v. Jaffar Sharif, WIPO Case No. D2008-0895 the panel stated:
“the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. In the context of that examination it may become apparent that there is a substantive factual dispute between the parties that cannot be resolved under the Policy and/or is being addressed and/or can be better determined in another forum. Only at this stage does the question raise its head whether the Panel should decline to consider that issue further.”
6.5 The Panel proposes to adopt a similar approach in this case.
6.6 The second issue is that the Domain Name is registered in the name of an individual, i.e. Mr. Krachenfels. However, both parties' submissions in this case proceed on the basis that Mr. Krachenfels can for the purposes of the Policy be equated with the companies LANStore Inc and GarretCom Inc. Accordingly, the Panel will also proceed on this basis. A. Identical or Confusingly Similar
6.7 The Complainant relies on three registered trade marks. One of these is registered on the United States Supplemental register. The Panel accepts the Respondent's contention that marks on this register will not be treated as a mark for the purposes of the Policy unless the Complainant can show that the mark has subsequently acquired distinctiveness in relation to the Complainant's goods and services. The Respondent cites a number of decisions in this respect. There are many others (see, for example, America's Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting Inc.,WIPO Case No. D2000-1780, Doheny Plumbing, Inc. v. PAO Industries, Inc.,WIPO Case No. D2007-1827 and Richard L. Dubnow v. International Brains Center S.L.WIPO Case No. D2008-1537).
6.8 Another of the marks is the Complainant's Canadian device mark. There are different views as to what extent it is appropriate to consider the non-textual elements of a mark when assessing the issue of confusing similarity1. The mark also has a disclaimer but this is unlikely to be a significant factor in that assessment since it disclaims the word “switch” alone. Here it is not “switch” alone that appears in the Domain Name but “switch” in combination with and preceded by the word “rugged”.
6.9 Nevertheless, it is not necessary to consider these issues further. This is because the Respondent also relies upon a third mark that is registered in the United States principal register. That is United States service mark registration no. 3400556. That mark comprises simply the text “RuggedSwitch”. It does not matter that this mark was registered after the date of registration of the Domain Name (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). In the circumstances, the Domain Name is for the purposes of the Policy essentially identical to a mark in which the Complainant has rights. The Complainant has thereby made out the requirements of paragraph 4(a)(i) of the Policy.
6.10 The Respondent appears to contend that registered mark no. 3400556 is also invalid because that mark also incorporates a generic term. However, that is not a matter for the Panel. The mark has proceeded to registration and in the circumstances of this case it is neither appropriate nor is the Panel properly equipped to second guess the determination of the USPTO in this respect. If the Respondent believes that this mark was wrongly granted, then its remedy is to take such steps to invalidate the mark as may be open to it under United States law.
6.11 That is not to say that the Respondent's submissions as to the alleged generic nature of the term “Rugged Switch” is irrelevant to these proceedings. They may well be highly relevant to the issue of the motives of the Respondent so far as registration and use of the Domain Name are concerned. This is something to which the Panel will return in its assessment of rights or legitimate interests and bad faith. B. Rights or Legitimate Interests
6.12 This is a case where there is not much difference in the analysis between the assessment of rights and legitimate interests and bad faith. Both parties appear to recognise this. The Complainant makes the usual declarations to the affect that the Respondent cannot show any of the examples of rights or legitimate interests under paragraph 4(c) of the Policy but otherwise for the most part simply refers to its assertions under the heading of bad faith. The Respondent's approach is slightly different in that he makes some contentions under a combined heading of rights or legitimate interests and bad faith, and then makes others under a separate heading of bad faith alone. However, even this approach appears to accept that the issues are intertwined.
6.13 In short, and notwithstanding the large number of cases cited by the parties, the assessment of both rights and legitimate interests and bad faith boils down to two factual questions. These are (i) did the Respondent register the domain name with the complainant's mark in mind; and (ii) has he deliberately used it to take unfair advantage of the reputation of that mark?
6.14 For the reasons that the Panel will explain in greater detail, the Panel believes that the Complainant has shown on the balance of probabilities that the answer to each of those questions is ‘yes'. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.15 The Response has been skilfully drafted and the majority of it focuses on one issue. That is the alleged “generic” nature of the term “rugged switch”. However, there is no absolute right to register a domain name simply because it has a potential generic use. What matters are a respondent's motives when it comes to registering and using that domain name. If he intends to use it for generic purposes, then that is legitimate. The respondent will have both a legitimate interest in the domain name and will not have registered it in bad faith. If the intention is to use the domain name in a way that takes commercial or other unfair advantage of the domain name's trade mark associations, then the registration will not be legitimate.
6.16 An obvious case would be the registration of a domain name that incorporated the word “apple” with a view to taking advantage of the association of that term either with computers or the well known music publishing company. The fact that the domain name might also have been capable of being used in connection with fruit would not matter.
6.17 Matters become factually more complex where, as here, the marks relied upon contain a significant descriptive element. But the complication is one of fact and evidence not principle. The question will still be, was it with the descriptive meaning of the terms in the domain name or with that term's associations with the complainant's mark that the domain name was registered?
6.18 None of the many Policy cases cited by the Respondent really say anything different. The Panel accepts the proposition put forward by the Respondent that it is legitimate to register a domain name because of its descriptive meaning even if the domain name is also confusingly similar to another's trade mark. However, it is quite a different matter if the domain name is registered and used in a manner which intends to take advantage of that confusing similarity.
6.19 The Respondent further contends that there are analogies here with the United States law fair use doctrine. Whether or not this is the case, the Panel is unconvinced that further exploration of this issue is that useful. There are inherent problems in reliance upon local law trade mark law principles when it comes to an assessment of either rights or legitimate interest and bad faith. Different legal systems approach questions of “fair use” in different ways. More fundamentally, local trade mark law and the Policy may overlap but ultimately they do different things and have a different basis (see for example the comments of the Panel in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De SouzaWIPO Case No. D2003-0372). To transport principles or to analogise from one to the other is fraught with danger and the Panel will not attempt to do so. Ultimately, the Panel is required to apply only the Policy.
6.20 So this leads on to the fundamental question in this case. What were the Respondent's motives in registration? A number of things are quite clear. One is that by the date of registration of the Domain Name the Respondent was well aware of the use by the Complainant of the term “RuggedSwitch” for its products. They both operated in the same or similar industries and the Complainant had at that point already commenced two sets of domain name proceedings against LANStore. The other is that the Respondent was and is aggrieved and affronted by the Complainant's use of the term “RuggedSwitch” as a name for its products. The Respondent strongly believed and believes that the Complainant is seeking to unfairly monopolise ordinary English words that can be used to describe products that are dealt in by LANStore and GarrettCom.
6.21 He maintains that the Domain Name was registered as part of a series of registrations for generic terms in 2004 and 2005 and that the Domain Name itself was registered so that LANstore and GarrettCom could “offer information concerning industrial networking products and companies that supply them” and would “remain free for companies and persons in the networking industry to use”.
6.22 The Panel can understand why it is that the Respondent might have seen things this way. However, looking at the website that appeared at the Domain Name this strikes the Panel as a somewhat partial characterisation of how the Domain Name has been used. The website is a not a neutral “information” website for the purposes of promoting the products of all “rugged switches”. Links to both LANstore and GarrettCom are particularly prominent and there are no links to the Complainant's products. The Panel is not saying that if the words in the Domain Name were being used in some generic sense that that the Respondent would have been obliged to be in any way neutral in presentation. Simply, that the web page should be seen for what it actually is; i.e. a site that seeks to promote products in competition to those of the Complainant.
6.23 Next, there is the prominent placing of the paragraphs of text that are intended to bring to the attention of the reader the alleged determination by the USPTO of the “generic nature” of the term “RuggedSwitch”. If the Respondent believed that visitors to the web page would have arrived there because of the alleged generic nature of the term “RuggedSwitch”, the placing of this text in what is the most prominent part of the web page is somewhat odd. It strikes the Panel that a more likely explanation is that the Respondent placed that text there in an attempt to “re-educate” visitors arriving at the page who might have thought that the term related to the Complainant's products.
6.24 Next, there is the use of the meta name or keyword “ruggedswitch”. Significantly, the term “ruggedswitch” rather than “rugged switch” is used. The Respondent has put before the panel extensive evidence as to why it thinks that the term “rugged switch” in the form of two separate words should be considered generic, but does not bring forward any evidence to suggest that the two words are commonly combined together into one word for any purposes other than to refer to the Complainant's products.
6.25 The omission of a space in a domain name is usually of little significance since ordinary domain names cannot incorporate spaces. There is no such obvious explanation for the omission of a space in a meta name. Therefore, the most likely explanation for the selection of the “ruggedswitch” term is that it was and is being used to direct Internet users (via the use of search engines and other programs that use such meta data to influence search results) searching for the Complainant. This is turn throws light on the Respondent's motives for registration.
6.26 Notably, even though the meta name issue was expressly raised in the Complaint, the Respondent has not sought to offer any explanation for the use of this term.
6.27 Ultimately, the Panel has reached the conclusion that on the balance of probabilities the Respondent registered the Domain Name because of associations between the term “ruggedswitch” and the Complainant, and with the intent of diverting users looking for information on the Complainant to the web page operating from the Domain Name. That was at least partially driven by intent for commercial gain on the part of LANstore and GarrettCom. Even if the Respondent honestly thought that this was legitimate given the alleged generic content of the Domain Name, it nevertheless constituted bad faith registration and use within the meaning of the Policy (falling within the ambit of the example of circumstances indication bad faith set out in paragraph 4(b)(iv) of the Policy).
6.28 The Panel is reinforced in its conclusions in this respect by the earlier decisions involving the parties cited by the Complainant; i.e, RuggedCom, Inc. v. LANstore, Inc.,WIPO Case No. D2005-0760 Nominet and Appeal Panel decision DRS 02802. The Respondent seeks to distinguish those cases from the present case on the grounds that both of the relevant domain names incorporated the term “ruggedcom”. This, it is asserted, is far less descriptive or generic than the term “ruggedswitch”. This may well be right, but the significance of these decisions for present purposes does not lie in the degree of distinctiveness of the terms embodied in the relevant domain names. It lies in the fact that they provide evidence of the fact that the Respondent had previously registered domain names with a view to taking advantage of the association of those domain names with the business of the Complainant. This is something that the Panel is entitled to take into account when it comes to an assessment of the motivations of the Respondent when registering the Domain Name.
6.29 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy 7. Decision
7.1 For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders (by majority) that the domain name be transferred to the Complainant.
Matthew S. Harris
Presiding Panelist
James A. Barker
Panelist
Diane Cabell
Panelist (Dissenting)
Dated: March 31, 2009
Full & Egal Universal Law Academy