Complainant is PDFFiller, Inc. of Brighton, Massachusetts, United States of America, represented by Hamilton, Brook, Smith & Reynolds, PC, United States of America.
Respondent is Chris Truxaw, d/b/a Red Software of San Diego, California, United States of America, self‑represented. 2. The Domain Name and Registrar
The disputed domain name (the "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 December 3, 2015. On December 4, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2015, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. The Response was filed with the Center on December 28, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 5, 2016. 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 develops and markets computer software designed to allow a user to edit documents in Portable Document Format (widely known as "PDF"), or convert documents into PDF, or perform other activities related to PDFs, facsimile systems, and electronic signatures.
According to the Complaint, Complainant has used PDFFILLER as a mark to identify and distinguish its computer software offerings. Complainant registered the domain name in February 2007. In February 2014, Complainant filed an application with the United States Patent and Trademark Office ("USPTO") to register PDFFILLER as a trademark. The USPTO registered the mark on October 21, 2014. The USPTO registration indicates January 1, 2007 as the date of first use in commerce of the PDFFILLER mark. There is no evidence annexed to the Complaint to substantiate Complainant's allegation that it actually used the mark in commerce prior to April 22, 2007 (This date is the date on which the Domain Name was registered).
According to the Response, Respondent and his father have been providing PDF-related software and services since 2002. In 2003, Respondent registered in the County of San Diego, California to do business as "CTdeveloping". Respondent formed the entity CTdeveloping, LLC in May 2008. Respondent has also traded under the name "Red Software".
As early as 2002, Respondent began to acquire domain names including the term "PDF" with other generic terms (such as ). According to the Response, and as corroborated by some web pages annexed to the Response, Respondent has been offering since 2004 PDF-related computer software and services, including software that allowed the user to add content to an existing PDF document.
As noted above, Respondent registered the Domain Name on April 22, 2007. Respondent denies having had any knowledge of Complainant or its trademark at the time the Domain Name was registered. On that same day, April 22, 2007, Respondent also registered the domain names and . 5. Parties' Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent contends that he has a legitimate interest in the Domain Name, as was involved in the development and marketing of PDF-related software and services for several years before 2007, when Complainant allegedly commenced its similar business activities. Respondent states that he registered the Domain Name for its descriptive, not its distinctive, qualities, as Respondent has done with other PDF-formative domain names. Respondent claims that the terms "pdf" and "filler" aptly describe one of his software offerings, viz., filling out forms in PDF format.
Respondent also denies having any knowledge of Complainant or its mark at the time the Domain Name was registered, and points out that Complainant did not register its mark until October 2014. Respondent also emphasizes that Complainant provided no evidence in the record to establish that it actually used the PDFFILLER mark between January 1, 2007 (the claimed first use in commerce) and April 22, 2007 (the date of the Domain Name registration). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel accepts that Complainant holds a registered trademark for PDFFILLER. The Panel further finds the Domain Name, which is identical to the mark except that it has only one "f" and not two, is confusingly similar to the mark.
The Panel concludes that Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(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 [Respondent] (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; or
(iii) you [Respondent] are 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.
In view of the Panel's finding on the "bad faith" element below, it is unnecessary to decide whether Respondent has rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Based on this record, the Panel cannot conclude that Respondent registered the Domain Name in bad faith. The Domain Name was registered on April 22, 2007, less than four months after Complainant alleges that it began to use its PDFFILLER mark in commerce (January 1, 2007). This mark was not actually registered until October 2014, and hence until that date Complainant was relying entirely on common law rights.
There is absolutely nothing in the record to prove that Complainant made any actual use of the PDFFILLER mark prior to April 22, 2007, much less such substantial use that one would conclude that Respondent more likely than not had Complainant's (then) common law mark in mind when registering the Domain Name.
On the other hand, there is a fair amount of evidence put forth in the Response to suggest that Respondent's motives here, at least in terms of registering the Domain Name, were innocent. It appears clear that, for several years prior to Complainant's alleged first use of the PDFFILLER mark as a source identifier for its PDF-related offerings, Respondent was operating his own business, in a similar field of activity (essentially, ways to create, alter, and manipulate PDF documents). The record shows that some of Respondent's offerings included software allowing the user to add content to (i.e., fill in) PDF documents, including adding data to forms that were in PDF format.
To register a few domain names with "pdf" in them and redirect them to a main website where Respondent features its PDF-manipulation offerings hardly seems remarkable or untoward. As Respondent claims, he registered the Domain Name for its descriptive, not distinctive, qualities. On the same day (April 22, 2007) as Respondent registered the Domain Name, Respondent also registered a few other domain names containing "pdf" and a descriptive word. This fact tends to corroborate Respondent's account of his motives here.
Without evidence that Respondent was aware of Complainant's mark on April 22, 2007, there is no evidence of bad faith registration by Respondent. As such, it is impossible for Complainant to prevail in this proceeding. Whether Complainant has a viable trademark infringement claim against Respondent, and whether Complainant could persuade another tribunal applying standards broader than those set forth in the Policy to order the transfer of the Domain Name here, are questions beyond the scope of this proceeding.
The Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: January 11, 2016
Full & Egal Universal Law Academy