Complainant is Witmer Public Safety Group, Inc. of Coatesville, Pennsylvania, United States of America, represented by Belles Katz LLC, United States of America.
Respondent is Domains by Proxy Inc. / JTRE LLC of Scottsdale, Arizona, United States of America and Sunbury, Ohio, United States of America, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2010. On November 26, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On November 29, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 2010. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The Response was filed with the Center on December 31, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 12, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 7, 2011, Complainant filed a document entitled “Complainant’s Reply to Respondent’s Answers.” On January 11, 2011, Respondent filed a rebuttal letter, responding to certain matters addressed in Complainant’s supplemental filing. Following its customary practice, the Center acknowledged receipt of each party’s supplemental filing and referred them to the Panel for consideration.
The Policy allows each party a single pleading, a protocol that is consistent with the Policy’s objective of a prompt and efficient resolution of a limited class of proceedings. Paragraph 12 of the Rules states expressly “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”1 With respect to unsolicited filings, the WIPO Overview reports no consensus, providing both a majority view and a minority view (WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.2):
“Majority view: While panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. . . .
Minority view: Unless the panel specifically solicits a supplemental filing, it will not consider a supplemental filing in its decision.”
In this Panel’s opinion, subsequent to the publication of the current Overview there has been progress toward reaching consensus on when is appropriate to accept an unsolicited filing.2 Borrowing language from paragraph 10(c) of the Rules, most panels will allow an unsolicited supplemental filing (by either party) only “in exceptional cases.” The most common ground for finding exceptional circumstances is a matter raised in the response that complainant could not have reasonably have anticipated, usually a factual matter. See, for example, Edward G. Linsky Jr. v. Brian Valentine,WIPO Case No. D2006-0706.
This case contains nothing exceptional, and as is all too often the case each party’s supplemental filing merely reiterates arguments made in its initial pleading. The Panel will take neither supplemental filing into account in rendering his Decision in this matter.3 4. Factual Background
Although the parties dispute some factual matters, and certainly dispute the legal conclusions to be drawn from the factual background in this proceeding, the facts necessary to the Panel’s decision set out in this section are more or less agreed.
Complainant sells and services products used by first responders such as emergency medical technicians, military, and firefighters. It holds a figurative trademark, registered on the principal registrar of the United States Patent and Trademark Office (USPTO), for THEFIRESTORE.COM. This mark was duly registered by the USPTO in 2008 based upon a claimed first use in commerce of 1999. Complainant’s principal website is .
Respondent, based in Sunbury, Ohio, registered the disputed domain names in March 2010. Since then it has operated a website under this name, selling some firefighters’ products and providing consulting and teaching services related to firefighting, first responders, and rescue servicers. Respondents’ principal website is ; an Internet user who enters any of the disputed domain names into her browser is automatically redirected to . All of the disputed domain names consist of the word firestore preceded by either the name of a state (for example, Alabama) or common initials used to identify a state (for example, NH for New Hampshire). 5. Parties’ Contentions A. Complainant
In its amended Complaint Complainant contends as follows:
Complainant holds rights in THEFIRESTORE.COM by virtue of its USPTO registration of that mark. Each disputed domain name is confusingly similar to this mark, substituting only the name of the state or an abbreviation for the name of the state for the definite article THE.
“The Respondent should be considered as having no rights or legitimate interest in respect to the domain names…because Respondent has adopted domain names that are confusingly similar to the Complainant’s trademarks and creating confusion in the marketplace with consumers who are likely to believe that the goods being offered on the webpages at the complained of domain names are sponsored by or originate from Complainant.” Complainant sites Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F. 3d 1036 (9th Cir. 1999), in support of this contention.
Respondent’s use of Complainant’s mark in the disputed domain name capitalizes upon the fame of Complainant’s mark and brand to generate traffic to Respondent’s website. Respondent’s redirection from every other disputed domain name to the disputed domain name illustrates this because the state name “[has] no relevance at all to the goods and services being offered.” Accordingly Respondent’s use of the disputed domain names fall squarely within the example of evidence of bad faith set forth in paragraph 4(b)(iv) of the Policy. B. Respondent
Complainant has rights only to the design and not the design of Complainant’s logo and the words individually; Complainant’s rights extend only to the exact combination THEFIRESTORE.COM. Complainant is not licensed to do business in Ohio.
The goods and services offered by Respondent overlap only slightly4 with those offered by Complainant. Most of Respondent’s business comes from technical services not offered by Complainant. Unlike Complainant, Respondent does not sell goods or services at retail and has no intention of doing so.
Redirection of each disputed domain name to a website at is a common business practice, one in fact undertaken in some instances by Complainant itself. As Respondent intends to do business in as many states as possible, incorporation of state names into its registered websites is simply good business and not evidence of bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar.
Complainant has met its burden of proof on this Policy element. It holds a USPTO-registered mark in THEFIRESTORE.COM, and for the reasons contended by Complainant the disputed domain names are all confusingly similar to that mark. Determination of confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to those of Complainant’s marks. MasterCard International Incorporated, MasterCard Europe SPRL v. IT Manager/ Crosspath,WIPO Case No. D2009-1714. Unlike trademark law in the United States, actual confusion need not be proven to satisfy this provision. B. Rights or Legitimate Interests.
This Policy element requires Complainant to prove a negative. This is usually done by complainant’s making a prima facie case that no right or legitimate interest exists, at which point the burden of production shifts to respondent to overcome that showing. See WIPO Overview, paragraph 2.1. Paragraph 4(c) of the Policy includes a non-exclusive list of items that, if proven by a preponderance of the evidence, will demonstrate a right or legitimate interest. Respondent seeks refuge within two of these safe havens:
“(i) before any notice to you [Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”
Complainant acknowledges Respondent’s business name corresponds to the principal disputed domain name , but contends that this is not legitimate under the Policy “because the Respondent has adopted domain names that are confusingly similar to the Complainant’s trademarks and creating confusion in the marketplace with consumers”. The Brookfield case cited by Complainant lends some support to this contention, at least as a matter of infringement under United States trademark law. There is an analogous Policy precedent; panels have held that in certain circumstances the mere ownership of a corporate name identical to the disputed domain name does not meet the requirements of paragraph 4(c)(ii) and that use solely to ride free on the goodwill of a complainant’s mark does not meet the requirements of paragraph 4(c)(i). In UDRP cases in which either of these matters is at issue – and all other Policy elements have been satisfied – panels have found respondent’s actions pretextual and not legitimate under the Policy.
In this case, however, Respondent has done considerably more than adopt a business name similar to Complainant’s mark, and demonstrated considerably more than setting up a business intentionally designed to take advantage of that mark. Respondent’s business exists independently of the disputed domain names, unlike the situation in many cases in which a paragraph 4(c) defense was not established. Its site does not ape Complainant’s in look and feel, layout, or general impression, and there is no other indication of copying or playing off of Complainant’s mark. As Respondent notes, competition between the parties is limited, with the overlap only a small percentage of Respondent’s business. Respondent’s site is oriented toward services, Complainant’s toward products.
Moreover Complainant’s mark consists of three very common words that make up a very common phrase, plus “.com”. Complainant provides no evidence of association of “firestore” or “the firestore” uniquely or primarily with Complainant,5 and the Panel’s cursory investigation of the term indicates that “firestore,” as one word or two, is commonly used by many other vendors of products to firefighters and for many other fields, particularly firearms. Particularly as there is no evidence that Respondent selected the disputed domain names to target Complainant, as discussed below, the Panel finds that Complainant has failed to establish that Respondent lacks rights or a legitimate interest in the disputed domain names. C. Registered and Used in Bad Faith.
Paragraph 4(a)(iii) of the Policy is conjunctive; both registration and use in bad faith must be established. Illustrating another aspect of Policy precedent that differs from United States trademark law, to establish registration in bad faith in a UDRP proceeding a complainant must ordinarily show that respondent actually knew of complainant and its mark, and that it targeted complainant or its products at that time, selecting the disputed domain name to take advantage of those marks. The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS,WIPO Case No. DAM2010-0001; Sophia’s Heritage Collection, Inc. v. Beverly Danusis,WIPO Case No. D2009-1752. The presumption in American trademark law of constructive notice, arising from trademark registration alone, rarely applies in Policy proceedings, WIPO Overview, paragraph 3.4, and the facts in this case offer no reason to depart from that Consensus View.
No evidence in the record indicates that in March 2010 Respondent knew of Complainant or its marks. As for a basis for the Panel to infer actual knowledge, there is only the statement in the Amended Complaint that “[Complainant’s] trademark is very well known and it is extremely unlikely that the Respondent would not have been aware of this fact.” Complainant offers no evidence in support of this statement, or of similar allegations of “excellent reputation,” “persons in the industry all recognize as a brand name associated with [Complainant],” or “widespread use and reputation of [Complainants] trademark.” As stated in Western Research 3000, Inc. v. NEP Products, Inc.,WIPO Case No. D2004-0755 (emphasis in original; citation omitted), “The Policy requires the Complainant to prove each of the three elements” of paragraph 4(a). Without proof the unsupported allegations of Complainant’s counsel are of no moment in this proceeding and there is nothing in the record before the Panel that would allow the Panel to make an inference to this effect.6 Especially is that so in respect to the renown of Complainant’s mark, as supporting evidence (if it exists) is a matter entirely within Complainant’s control.
Even if the Panel were to infer from the fact that to some extent Respondent competes with Complainant, or the fact that Respondent’s employees are all firefighters, that Respondent was aware of Complainant,7 there is no basis at all for an inference of targeting. As in the Sophia’s Heritage case supra, it is just as likely that Respondent chose the disputed domain names as descriptive of its own goods and services as to take advantage of Complainant’s mark.
In the circumstances, the Panel fails to grasp how Respondent’s registration of multiple domain names, each prefaced by the name of or initials for a state, itself demonstrates bad faith. As Respondent’s principal website incorporates the name of one state, registration of multiple domain names would be a logical and prudent marketing step if as Respondent alleges its business has expanded from state to state. The same may be said of re-direction of Internet traffic to a single website, a practice commonly used in web-based commerce. Only if the initial registration targeted Complainant, which the Panel has found not to have been proven, would any of the other registrations or the automatic redirection be tainted.8
As the Panel has noted things may turn out differently in an infringement action, in which the substantive law may differ and each party will have the opportunity to develop a complete record through discovery and confrontation. And Respondent in both its filings has indicated a willingness to discuss compromise. While of course he has only seen the tip of the iceberg as to the issues between the parties, to this Panel the complexity of this case, involving dozens of domain names and thorny issues of trademark law, strongly suggests that anything the parties can work out between themselves as responsible business people may well be preferable to what might (or might not) be determined by a judge or jury after lengthy legal proceedings. 7. Decision
Complainant has not carried its burden of proof under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. For these reasons the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: January 17, 2011
1 Complainant begins its proposed supplemental filing by stating “While a reply is not necessarily typical in WIPO domain disputes, neither is it prohibited…” On a literal reading paragraph 12, that statement is simply not correct. Furthermore, as set out in the text above, Policy precedent has greatly limited the circumstances under which a panel will exercise its discretion even to consider a supplemental filing.
2 There have been exceptions; see, for example, Esquire Innovations, Inc. v. I c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator,WIPO Case No. D2007-0856.
3 The Panel has followed his customary practice of reading the supplemental filings before deciding whether or not to accept them. Again as is commonly the case, nothing in either party’s supplemental filing, even if that filing were accepted by the Panel, would have altered the outcome of this proceeding.
4 According to Respondent less then fifteen per cent of its business comes from product sales.
5 As noted in the following section, Complainant’s unsupported allegations are not evidence.
6 On this point, see Kellwood Company v. Onesies Corporation,WIPO Case No. D2008-1172, a proceeding involving a far more distinctive and far better known trademark than the one at issue in the present proceeding.
7 As noted, the Panel finds neither such inference appropriate.
8 Even if the Panel were to find, following the reasoning of the Brookfield court, that any use by Respondent of firestore in any domain name infringed Complainant’s trademark, that would not by itself establish bad faith. See, e.g., Toronto Star Newspapers Limited v. Capital Networks Limited,WIPO Case No. DTV2001-0002 (“It may be that the subject domain name violates the intellectual property rights of the Complainant, but that is not a matter to be resolved in this domain name dispute process. The focus of this proceeding is narrow and specific.”) Moreover, for purposes of the Policy, Brookfield is distinguishable from the facts of this case because defendant there knew of plaintiff and selected its domain name expressly to compete with plaintiff. Here there is no proof Respondent knew of Complainant or Complainant’s mark or satisfied the additional Policy requirement of targeting.
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