Complainant is Integrated Print Solutions, Inc. of Bridgeport, Connecticut, United States of America (“US”), represented by Rosensteel Law, US.
Respondents are Kelly Davidson of Redmond, Washington, US and Integrated Print Solutions, Everett, Washington, US. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent “Kelly Davidson” is listed as the registrant and providing the contact details.
The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on February 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on March 1, 2013.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 12, 2013. 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
Complainant, Integrated Print Solutions, Inc., is a professional printer incorporated in 1998. Complainant is the owner of the following trademarks, registered for use in connection with printing services.
- INTEGRATED PRINT SOLUTIONS (U.S. Supplemental Registration No. 2863854, registered 2004)
- IPS Integrated Print Solutions & Design (U.S. Registration No. 2763427, registered 2003)
- THINK IPS (U.S. Registration No. 2604844, registered 2002).
Complainant claims use of the above-referenced marks since 1998. Complainant neglected to mention in the Complaint that its registration for the word mark INTEGRATED PRINT SOLUTIONS (Registration No. 2863854) exists only on the Supplemental Register. As will be discussed below, such registration is evidence of the descriptiveness of the mark.
Complainant is also the registrant of the domain name which it has owned since 1998.
Respondents are engaged in the same service industry as Complainant, namely, printing services. Respondents first registered the corporate name, Integrated Print Solutions, in February of 2010. Then, on April 11, 2010, Respondents registered the disputed domain name, . Finally, Respondents use on their website a logo incorporating the acronym IPS. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to Complainant’s registered trademark, that Respondents have no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well accepted that fanciful, arbitrary, and suggestive marks (or inherently distinctive marks) are registrable on the Principal Register. Conversely, marks that are merely descriptive and lacking a showing of acquired distinctiveness may only be registered on the Supplemental Register. USPTO, Trademark Manual of Examining Procedure (TMEP) § 1209.01. Unlike registration on the Principal Register, registration on the Supplemental Register creates neither a presumption of the registrant’s exclusive right to use the mark, nor a presumption of validity. McCarthy on Trademarks, 4th Edition, §19: 36. Supplemental Registration is evidence of nothing except that the registration actually issued. Copperweld Corp. v. Arcair Co., 200 U.S.P.Q. 470 (T.T.A.B. 1978). Registration of an application on the Supplemental Register is an implied admission that the term is descriptive. McCarthy on Trademarks, 4th Edition, §19: 43.
The disputed domain name incorporates Complainant’s registered trademark in its entirety. However, Complainant’s mark for the words “Integrated Print Solutions” exists only on the Supplemental Register. Thus, the mark has not necessarily acquired distinctiveness in order to be afforded exclusive trademark protection. In this case, Complainant has not provided this Panel with the evidence of acquired distinctiveness sufficient to prove that its registration is entitled to full and exclusive trademark protection.
Accordingly, the Panel finds that Complainant has failed to satisfy its burden of proof that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant concedes that Respondents provide basic printing services in connection with their domain name. Complaint Section B Paragraph II. Complainant notes that “Respondents’ website reveals only the most basic commodity printing services such as printing of business cards, door hangers, post cards, matches and napkins….“
Therefore, while Respondents’ printing services may be limited, there is evidence in the record that Respondents have some rights or legitimate interests in the use of disputed domain name in connection with printing services. Accordingly, the Panel finds that Complainant has failed to meet its burden of showing that Respondents have no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant proffers no evidence that Respondents demanded any payment for the disputed domain name or that Respondents are using the disputed domain name in connection with the non bona fide offering of services, such as a “pay per click” website with links to competitor sites.
To support its bad faith claims, Complainant alleges that Respondents had actual and/or constructive knowledge of Complainant’s trademark(s) and relies on the case of Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806. In that case, however, the complainant’s registered trademarks were not on the Supplemental Register, and second, the complainant’s marks were found to be “well known worldwide.” In the instant case, there is no evidence that Complainant’s mark, registered only on the Supplemental Register, is well known worldwide.
Next Complainant relies on the case of Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679. That opinion, however, states the following:
“Respondent received two cease and desist letters from Complainant, and did not reply to them. Although generally considered Respondent’s silence does not necessarily equal to bad faith, in the circumstances of the present case it certainly does not allow to infer the contrary.”
In the instant case, the Panel declines to infer bad faith from Respondents’ failure to respond to Complainant’s cease and desist letters.
Finally, to support its bad faith allegations, Complainant alleges that, in addition to using the same name as Complainant, Respondents also use a logo which is substantially similar to Complainant’s registered IPS Logo. As has been recognized by previous WIPO panels, UDRP panelists should avoid making decisions on matters that “impinge on the field of competence of national courts or trademark registries,” such as trademark infringement. See e.g., BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298. Complainant’s allegation of similarity between Respondents’ and Complainant’s stylized use of IPS, which is an acronym for “Integrated Print Solutions” is not at issue here. The disputed domain name is , not “IPS”.
The Panel finds that Complainant has not satisfied its burden of showing that Respondents have registered and used the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Sole Panelist
Date: April 2, 2013
Full & Egal Universal Law Academy