The Complainant is Rae Jensan, EZ UPC of Cheyenne, Wyoming, United States of America ("United States").
The Respondent is James Johnson, EASYUPC of Denver, Colorado, United States / Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 the Respondent of the Complaint, and the proceedings commenced on November 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2016. The Response was filed with the Center on December 5, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on December 12, 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
The Complainant is a UPC and EAN barcode reseller. The Complainant has traded as EZ UPC since July 2007, when the Complainant registered the domain name and launched its EZ UPC website. In 2010 the Complainant acquired the domain name , which the Complainant since has used with the EZ UPC website. Since 2007 the Complainant has sold UPC and EAN barcodes to thousands of customers, many of whom have submitted testimonials that are posted on the Complainant's website.
The Respondent registered the disputed domain name on March 2, 2014, according to the concerned Registrar's WhoIs records. The disputed domain name resolves to a website at "www." (hereinafter the "Respondent's website"), where UPC and EAN barcodes are offered for sale. The WhoIs registrant information for the disputed domain name was changed on or about March 1, 2016, to a privacy protection service, Whoisguard, Inc., of Panama. The Registrar identified James Johnson/EZUPC as the registrant when responding to the Center's registrar verification request on November 10, 2016. 5. Parties' Contentions A. Complainant
The Complainant asserts common law trademark rights in EZ UPC, based on long and substantially exclusive use as a designation of source for the Complainant's products and services The Complainant submits that the EZ UPC mark has been used with the online sale of UPC and EAN barcodes since as early as July 2007, including the taglines "It's Easy with EZ UPC" and "We're your UPC Easy Button." The Complainant offers as evidence the registration of and an archived screen capture documenting the first use of this domain name with the Complainant's website in July 2007. The Complainant also submits an archived screen capture reflecting the Complainant's updated website in September 2009 after the Complainant acquired the domain name .
The Complainant represents itself as one of the earliest online resellers of verified, authentic and unique UPC and EAN barcodes, and relates that the Complainant has conducted more than 20,000 transactions involving some 12,000 customers. According to the Complainant, over 40 percent of these transactions involve repeat customers. The Complainant contends that by virtue of the longstanding use and promotion of the EZ UPC mark, the Complainant's mark has become well known and exclusively associated with the Complainant's products and services.
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant's EZ UPC mark. The Complainant explains that the disputed domain is the phonetic equivalent of the Complainant's mark, and that "EZ" is commonly used as an abbreviation for the word "easy." The Complainant submits that the substitution of "easy" for "ez" in the disputed domain does not serve to distinguish it from the Complainant's mark. The Complainant observes that the Respondent registered the disputed domain name some seven years after the Complainant's first use of the EZ UPC mark in commerce, and that the Respondent is using the disputed domain name with a commercial website offering UPC and EAN barcodes in direct competition with the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, or otherwise using the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainant asserts that the Respondent without the Complainant's consent has registered a domain name that is the phonetic equivalent of the Complainant's mark, and which the Respondent is using to misleadingly divert consumers to the Respondent's website offering products and services identical to those of the Complainant. The Complainant further argues that the Respondent's registration of the disputed domain name involved a blatant violation of paragraph 2 of the Policy as incorporated into the Registrar's registration agreement.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant, after discovering the Respondent's registration of the disputed domain name, was suspicious that the WhoIs contact information provided to the Registrar was false and incomplete. The Complainant represents that after submitting a complaint to ICANN, the Respondent engaged a privacy protection service in a bad faith attempt to prevent discovery of the Respondent's true identity.
The Complainant maintains that the Respondent almost immediately upon purchasing the disputed domain name published a website that was essentially a clone of the website one of the Complainant's primary competitors, Instant UPC Codes, LLC. Based on a comparison of archival screen captures of these websites, the Complainant submits that the Respondent's website differed from the Instant UPC Codes website only by the insertion of "Easy UPC" for "Instant UPC Codes." The Complainant suggests that the Respondent is in fact Instant UPC Codes, LLC, and that the name "James Jones" is an alias for Jacob James Alifraghis, the owner of Instant UPC Codes, LLC, who was charged by the Federal Trade Commission (FTC) with attempted price collusion involving several other UPC barcode resellers.
The Complainant submits that the Respondent acquired the disputed domain name, which is confusingly similar to the Complainant's mark, to launch a website offering products and services competing directly with the Complainant. The Complainant asserts that given the strong reputation of the Complainant/s EZ UPC mark and the Complainant's substantially exclusive and prior use of the mark for seven years, the Respondent registered the disputed domain name in order to exploit or otherwise take advantage of the Complainant's rights. The Complainant further asserts that bad faith can be found based on the Respondent's clear violation of paragraph 2 of the Policy. B. Respondent
The Respondent asserts that the disputed domain name was chosen because of its descriptive qualities in relation to the sale of UPC barcodes. The Respondent explains that EasyUPC.com provides UPC codes to customers in an easy form – namely instant delivery ordered in 30 seconds. The Respondent thus submits that "EasyUPC exactly describes the business." According to the Respondent, other competitors in the industry have similar ways of describing their service, using terms like "quick", "speedy", and "instant". The Respondent notes that the term "EZ" is the phonetic equivalent of the descriptive word "easy", and asserts that EasyUPC and EZupc both are merely descriptive terms and thus do not function as trademarks. The Respondent contends that the Complainant cannot assert exclusive common law rights in EASY UPC or EZ UPC because there are some 1,700 third parties using the term "easy" either alone or associated with another word.
The Respondent represents that prior to acquiring the disputed domain name in 2014 a trademark search was conducted, which indicated that no one owned or had registered EasyUPC as a mark. The Respondent maintains it had no knowledge of the Complainant when registering the disputed domain name. The Respondent disputes the Complainant's claim to be well known in the industry, and represents it became aware of the Complainant only recently, when the Complainant began attempting to acquire the disputed domain name.
The Respondent represents that in the more than two (2) years of EasyUPC.com's existence none of its customers have ever mentioned being confused with . The Respondent maintains that 95 percent of the traffic to its website comes from UPC-related keywords not involving "ez" or even the word "easy". According to the Respondent, Internet traffic in the relevant industry is driven by search engines and social marketing, with more than 90 percent coming from searches such as "upc codes" or "where to buy upc codes." Thus, the Respondent disputes the Complainant's allegations the disputed domain name was registered because of any propensity of "Easy UPC" or "EZ upc" to drive Internet traffic, and submits that no consumer confusion is created for the reasons stated above.
The Respondent maintains no confusion arises from the Respondent's website, as it looks entirely different than the Complainant's and uses entirely different logos, site layouts, ordering processes, and colors. The Respondent disputes any affiliation with Instant UPC Codes, LLC and represents the reference to Jacob James Alifraghis in the Complainant was the "first time we've heard of that name." The Respondent submits that the archived screenshot captured by the Complainant and described in the Complaint as a clone the Instant UPC Codes website was merely a design template that was never active, and only remained up for a few days while the Respondent was building the current template.
The Respondent denies that any false or fictitious information was provided to the Registrar when registering the disputed domain name, and submits there is nothing untoward or improper regarding the use of a privacy protection service affiliated with the Registrar. The Respondent complains that false statements have been posted on the Complainant's on its website representing that the Respondent is operating a fraudulent site selling fake UPC codes and infringing on the Complainant's trademark. The Respondent denies the allegations, and submits that such statements are defamatory. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark rights EZ UPC for purposes of paragraph 4(a)(i) of the Policy. The term "trademark or service mark" as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
The Complainant does not hold a trademark registration for EZ UPC. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant's goods and services from those of others. When the mark is descriptive in nature a showing of acquired distinctiveness (or secondary meaning) is required.
The Panel finds that the Complainant has demonstrated common law rights in EZ UPC under U.S. trademark law principles. The record reflects the Complainant's continuous and substantially exclusive use of EZ UPC in commerce by the Complainant for more than seven (7) years, advertising and promotion on the Internet, and a significant volume of customer testimonials posted on the Complainant's website. The Panel finds this a sufficient showing that a relevant segment of the public has come to recognize EZ UPC as a symbol that distinguishes the Complainant's goods and services from those of others. In other words, the Panel concludes that the Complainant's mark, to the extent descriptive in nature, has acquired secondary meaning in the minds of the relevant purchasing consumers. The Panel notes under U.S. trademark law that substantially exclusive and continuous use of a descriptive mark for as few as five (5) years can be deemed prima facie evidence of acquired distinctiveness, making the mark eligible for registration on the principal registry of the United States Patent and Trademark Office (USPTO). Further, common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.7 (UDRP affords protection in civil law jurisdictions equivalent to trademark protection under the tort of passing off).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. See WIPO Overview 2.0, paragraph 1.2. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. The Respondent's use of "easy" instead of "EZ" in the disputed domain name does not serve to dispel confusing similarity. The Complainant's mark is plainly recognizable in the disputed domain name, as "EZ" and "easy" are phonetical equivalents and convey an identical meaning.
Although the Top-Level Domain ("TLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's mark, which the Respondent is using in direct competition with the Complainant as a reseller of UPC and EAN barcodes.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent claims to have been unaware of the Complainant and the Complainant's EZ UPC mark when registering the disputed domain name, although this occurred more than seven (7) years after the Complainant's first use of the EZ UPC mark in commerce. The Panel finds this a dubious proposition at best. While there is no conclusive evidence in the record that the Respondent is affiliated with Instant UPC Codes, LLC, the Respondent's initial "template" beyond doubt was a copy of the Instant UPC Codes website, modified by the substitution of "Easy UPC" for "Instant UPC Codes." Instant UPC Codes, LLC is a prominent reseller of UPC and EAN barcodes. Regardless of whether the Respondent is affiliated with Instant UPC Codes, LLC, the Respondent's "cloning" the website of a prominent UPC and EAN barcode reseller reflects the Respondent's knowledge of the industry. In view of the foregoing, the Respondent's asserted lack of knowledge of the Complainant and the Complainant's rights in the EZ UPC mark when registering the disputed domain name lacks credibility.
Based on the totality of circumstances reflected in the record, the Panel considers that the Respondent more likely than not was aware of the Complainant and had the Complainant's EZ UPC mark in mind when registering the disputed domain name. The Respondent has used the disputed domain name, which is confusingly similar to the Complainant's mark, to resell UPC and EAN barcodes in direct competition with the Complainant. This strongly evinces the Respondent's intent to pass off such services as those of the Complainant. Internet visitors to the Respondent's website could easily expect that the website they have arrived at is affiliated with or endorsed by the Complainant.
Consequently, the foregoing does not constitute use or preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor does such male fide use qualify as a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy, or support any claim by the Respondent to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the Panel concludes that the Respondent more likely than not was aware of the Complainant and had the Complainant's mark in mind when registering the disputed domain name. The Panel finds from the record that the Respondent's primary motive in relation to the registration and use of the disputed domain name most likely was to capitalize on or otherwise take advantage of the Complainant's rights, by intentionally creating a likelihood of confusion with the Complainant's EZ UPC mark as to sponsorship, endorsement or affiliation with the Respondent's website and the services offered thereon.
The record also supports an interference that the disputed domain name was registered by the Respondent in bad faith with the purpose of disrupting the Complainant's business under paragraph 4(b)(iii) of the Policy. Further, in the attendant circumstances, the Respondent's initial provision of incomplete WhoIs registrant information and subsequent use of a privacy protection service are consistent with a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 26, 2016
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