WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION USA Enterprises Inc. v. Xie Hui Case No. D2009-1704 1. The Parties
The Complainant is USA Enterprises Inc. of Ohio, United States of America represented by Benesch, Friedlander, Coplan & Aronoff, LLP of United States of America.
The Respondent is Xie Hui of Beijing, the People's Republic of China, represented by Phyllis Neff of United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2009. On December 14, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2009, the Registrar 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 December 17, 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” or “UDRP”), 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 December 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2010. The Response was filed with the Center on January 18, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 26, 2010. 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 case papers filed by the parties demonstrated material inconsistencies. The Panel issued a procedural order on February 2, 2010 addressed to the Complainant, to which the Complainant responded on February 4, 2010. The Respondent was given an opportunity to reply by way of a procedural order issued by the Panel on February 5, 2010 to which the Respondent responded on February 9, 2010. The time for issuing a decision was extended first to February 17, 2010 and subsequently, at the instance of the Panel, to February 20, 2010. 4. Factual Background
From the papers put before the Panel it has not been easy to decipher what is established fact and what is not. However, the Panel accepts as fact the following:
1. The Complainant was incorporated in Ohio on April 19, 1985 and, as its name implies, is engaged in the insulation industry.
2. On July 14, 1999 the Domain Name was acquired via Network Solutions Inc. by Outtasites, Phyllis Neff (“Ms. Neff”) who is named as the “Billing Contact”. She used her personal credit card for the purchase.
3. In the mid-to-late 1990s and possibly into the early 2000s (the dates are disputed) Ms. Neff's brother, James Turner, was employed by the Complainant. Mr. Turner is now based in Beijing.
4. On August 20, 1999 Ms. Neff and her brother formed a company named Web Central Limited, a website design company, although from a webpage on a website connected to the domain name, , also associated with Ms. Neff and her brother, it would appear that the business of Web Central Limited may have commenced in 1998 prior to the incorporation of the company.
5. From at least as early as August 17, 2000 the website connected to the Domain Name was an “Insulation, Insulation Contractors and Insulation Information Directory”. The website featured a 1999 copyright notice. The text at the top of the homepage reads “Now that Insulation has a Home On The Internet, finding insulation contractors and information is easy!”. From documentary evidence filed by the Respondent it appears that while the detail of the website changed as the directory grew, the general format of the website was the same until at least February 6, 2003.
6. On June 4, 2001 the Complainant registered its trade name, USA Enterprises, Inc., with the office of the Secretary of State of Ohio claiming first use of that trade name from December 1, 2000.
7. As at August 21, 2001 the Domain Name was registered in the name of O according to an historical record emanating from DomainTools.
8. On September 19, 2006 a Mr. Pitrone emailed Ms. Neff in the following terms:
“Hello Phyllis,
Thank you for speaking with me today. There are 2 points in which [sic] I would like to resolve:
1. www. - Please refrain from using USA Insulation's products (ex. Tripolymer Foam Insulation), USA Insulation/USA Energy Consultants locations (Ex. Hilliard), and any claims associated with USA Insulation's products and services. I understand that the original intent of the site was to help USA Insulation, however we want all information about our companies and products to come from USA Insulation's home office.
2. I would like to make an offer to purchase the domain name www. for the price of USD500.00.
Thanks again for your time and I will follow up with you by weeks end.
Regards
PJP”
9. On September 26, 2006 Ms. Neff responded acceding to the request that all references to the Complainant and its services be removed from the website and declining the offer to purchase, indicating that she would however consider a serious offer where the purchase price reflected “that this is an established business that has been several years in development”.
10. As at April 5, 2007 the Domain Name was registered in the name of Web Central Limited according to another historical record emanating from DomainTools.
11. On a subsequent date unknown, but believed to have been in 2007, the Domain Name was transferred to the Respondent, who is based in Beijing.
12. On January 29, 2008 the Complainant filed an application at the United States Patent and Trademark Office for registration of USA INSULATION as a service mark for the installation of building insulation in class 37. The application matured into a registration on September 2, 2008. The Complainant claimed first use from January 1, 1985.
13. From a date unknown to the Panel, but seemingly in 2008 or 2009 the format of the website connected to the Domain Name changed, but it remained and remains a directory site concerned with insulation contractors in the United States of America.
14. At some stage (November 11, 2008 according to the Respondent and December 1, 2009 according to the Complainant) the Complainant or its representative wrote to the Respondent offering to purchase the Domain Name for the latter's out-of-pocket expenses. The Respondent ignored the approach. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent admits the existence of the Complainant's service mark registration, but denies the substance of the Complainant's primary contentions, particularly as to the Respondent's bona fides in relation to the Domain Name. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
For the purposes of paragraph 4(a)(i) of the Policy the date of acquisition of the Complainant's trade mark or service mark rights is immaterial provided that those rights were in existence at the date of the Complaint.
The Complainant's registered service mark, USA INSULATION, registered in the United States of America in class 37 on September 2, 2008 (application filed January 29, 2008) predates the Complaint.
The Domain Name comprises the Complainant's registered service mark (absent the space) and the generic “.com” domain suffix. For the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, spaces and the like may be ignored as may the domain suffix.
The Panel finds that the Domain Name is identical to a service mark in which the Complainant has rights. C. Rights or Legitimate Interests
In light of the Panel's finding under the next head, it is unnecessary for the Panel to address in any detail the issue as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name. Suffice it to say that on the evidence before the Panel, the Panel is in no position to hold that the Respondent has no such rights or legitimate interests. D. Registered and Used in Bad Faith
A fundamental problem facing the Complainant in this case is that its contentions are supported by two materially inconsistent declarations sworn “under penalty of perjury” by the presidents of two separate entities, one being the Complainant and the other being an affiliate of the Complainant, both doing business as “USA Insulation”. In each declaration the declarant asserts personal knowledge of the facts and matters contained in his declaration.
However, ignoring the inconsistencies and adopting some of the corrections introduced by the Respondent, it has been possible for the Panel to piece together the Complainant's case, which is essentially as follows:
1. The Complainant was incorporated in 1985 and has since 1985 continuously used the trading name “USA Insulation”. It built up a significant reputation and goodwill in respect of the name, “USA Insulation” sufficient to give it common law rights in respect of that name.
2. In about 1994 a Mr. Turner began working for the Complainant.
3. In about 1999 the Complainant directed Mr. Turner, an employee of the Complainant, to purchase the Domain Name for the benefit of the Complainant on the basis that the Complainant would reimburse him.
4. Mr. Turner then instructed his sister, a Ms. Neff, to purchase the Domain Name either in her own name or in the name of a company, Outtasites, in which they both had an interest.
5. Mr. Turner then designed a website for the Complainant, using the Domain Name.
6. In around 1999/2002 Mr. Turner's employment with the Complainant ceased. Mr. Turner (and/or his sister) retained the Domain Name and never sought recompense for the cost of registration.
7. Thereafter the Domain Name was used for a pay-per-click directory site devoted to the installation of insulation in the United States of America.
8. In 2007 the Domain Name was transferred to the Respondent, a person based in Beijing, where Mr. Turner now resides. The Domain Name is still in use connected to a directory site devoted to the installation of insulation in the United States of America.
9. The Domain Name was registered with the Complainant and its well-known “USA Insulation” trading name in mind and has been used for commercial gain, deriving pay-per-click revenue resulting from Internet users being attracted to the site as a result of the Complainant's well-known name.
10. Even if the Respondent is unconnected with Mr. Turner/Ms Neff, given the nature of the website (i.e. entirely devoted to insulation contractors in the United States of America) and the fame of the Complainant's trading name (a United States registered service mark since 2008), the Respondent cannot be treated as if he is entirely divorced from the bad faith behaviour of his predecessors in title and must be taken to have acquired the Domain Name with knowledge of the Complainant's trade mark/service mark rights.
Crucial to the Complainant's case are two basic factors, namely the circumstances leading up to the registration of the Domain Name and the fame of the Complainant's “USA Insulation” trading name as at July 14, 1999, the date of registration of the Domain Name.
The Respondent has filed a declaration of Mr. Turner in which Mr. Turner admits that he was employed by the Complainant until 1999, but asserts that his employment terminated prior to registration of the Domain Name. He also asserts that as at the date of registration of the Domain Name he only knew of the Complainant as USA Energy Consultants. He further asserts that prior to his registration of the Domain Name his employer was aware that he was planning a national directory website for the insulation industry.
The Complainant has produced no documentation to demonstrate the dates of Mr. Turner's employment with the Complainant. The Complainant has produced no documentation to demonstrate the existence (actual or planned) of a website connected to the Domain Name. The Complainant has produced no documentation to establish the fame of the Complainant's trading name, “USA Insulation”, other than a Google search conducted on February 4, 2010.
The Complainant has complained that the Panel's procedural order seeking some of this documentation gave the Complainant insufficient time to unearth it. The Panel is unimpressed. As can be seen from the factual background set out in section 4 above, the Complainant was in touch with the Respondent back in 2006 seeking transfer of the Domain Name. The Complainant has had several years in which to marshal its evidence.
Other documents arguably having a bearing on the Complainant's use of its trading name are (a) a Trade Name Registration certificate in the name of the Complainant showing that it registered the trading name, USA Insulation Company, Inc. on June 4, 2001 claiming first use from December 1, 2000 (this document was put in evidence by the Respondent) and (b) the Complainant's service mark registration certificate claiming first use since January 1, 1985. The problem with this latter document is that first use claims on United States Trademark registration certificates are of doubtful validity on their own without supporting documentation and, in the case of this one, it predates the incorporation of the Complainant by several months.
The Panel has no basis on which to conclude that the first registrant of the Domain Name registered the Domain Name at a time when the Complainant was using the trading name, “USA Insulation”, nor that any of the subsequent transfers (see section 4 above) were made at a time when the Complainant's trading name was well-known.
On the documentation before the Panel it seems entirely plausible that the Domain Name was registered by Mr. Turner's sister on behalf of the two of them and/or one or more of their businesses for a national directory site for the insulation industry and at a time when Mr. Turner's employment with the Complainant had ceased and before the Complainant's use of the name, “USA Insulation”, had commenced. In other words, it may very well have been that the Domain Name was registered in good faith and that its subsequent use, which has been a continuous use in relation to a directory site for the insulation industry in the United States of America, has all along been a good faith use.
If the Panel has put that somewhat tentatively, it is that the Respondent (and/or those representing him) were being less than entirely open with the Panel when the Response was filed in terms which were calculated to lead the Panel to assume that Mr. Turner and his sister were unconnected. Inevitably, the Panel is left wondering why that was felt to be necessary.
On the evidence before the Panel the fact that Mr. Turner and Ms. Neff are brother and sister is of no moment in the context of this dispute. Nor would it be of any moment if Mr. Turner (like the Respondent, resident in Beijing) and/or his sister (the Respondent's representative in this proceeding) are connected. As indicated above, there is nothing before the Panel to suggest that the use of the Domain Name since date of registration has been anything other than a continuous good faith use.
For completeness, it should be stated that the Panel accepts the Respondent's evidence that the Respondent's site which is a commercial site does not derive income in the form of pay-per-click revenue, but from companies paying fees to appear on the site.
The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: February 20, 2010
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