Complainant is Connor Sport Court International, LLC of Salt Lake City, Utah, United States of America, represented by Thorpe North & Western, United States of America.
Respondent is Ariel Rivas Productions ("ARP") of Cayey, Puerto Rico, Unincorporated Territory of the United States, United States of America (the "United States"). 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 November 10, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2016, the Registrar transmitted by email 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 November 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 8, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 19, 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 is owner of registration for the word trademark PORTAFLOOR on the Principal Register of the United States Patent and Trademark Office ("USPTO"), registration number 2,002,892, registration dated September 24, 1996, in international class ("IC") 19, covering "plastic tile treads in the nature of portable roll out flooring for use on indoor and outdoor ground services", and in IC 27, covering "hard surface coverings for floors".
Complainant is in the business of manufacturing and marketing flooring surfaces for a variety of industries. Among the products offered by Complainant is a line of portable temporary flooring products sold under the PORTAFLOOR trademark. According to Complainant, it has invested hundreds of thousands of dollars in marketing and promoting its portable temporary flooring products, and its PORTAFLOOR products have sold successfully in the United States and foreign markets.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on August 11, 2010, and Respondent has been the registrant since at least that date.
In 2010, Respondent was appointed by Complainant as sales representative for certain PORTAFLOOR products in Central America.1 Pursuant to that appointment, it was agreed that Respondent could make use of Complainant's PORTAFLOOR trademark while it represented Complainant, but that Complainant would retain ownership of its trademark. Respondent registered the disputed domain name in 2010 and created a website to market specific PORTAFLOOR products. In 2011, Complainant terminated its representation arrangement with Respondent, and Respondent no longer represents Complainant. At some unspecified time, Complainant requested that Respondent transfer the disputed domain name to it, and Respondent offered to undertake the transfer upon payment of USD 9,000.
As of the date of this proceeding, Respondent's Spanish-language website addressed by the disputed domain name predominantly advertises and offers for sale Complainant's PORTAFLOOR products. In addition, there is a scrolling banner at the bottom of each website page that identifies other services offered by entities affiliated with Respondent. These relate to video production, music and lighting. There are no links or references to flooring products other than to Complainant's PORTAFLOOR products. Respondent's website identified by the disputed domain name is headed with the terms "PORTAFLOOR CentroAmerica". There is no apparent disclaimer of formal affiliation with Complainant.
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant alleges that it owns rights in the trademark PORTAFLOOR and that the disputed domain name is identical to its trademark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: (1) the disputed domain name is no longer used in connection with a bona fide offering of goods or services, inter alia, because Respondent's website does not accurately disclose Respondent's relationship with Complainant, giving the false impression that Respondent's website is the official website for Complainant's products; (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and; (3) Respondent attempted to profit from the disputed domain name by requesting USD 9,000 from Complainant for its transfer.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because Respondent is intentionally attempting for commercial gain to attract Internet users to its website location by creating a likelihood of confusion as to Complainant as the source, sponsor, affiliate or endorser of Respondent's website or products or services on its website, including attracting Internet users in order to promote products or services of its affiliated companies.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in the record of registration for the disputed domain name. The express courier service was unable to complete delivery to Respondent's physical address. However, the records indicate that the fax transmission was successful, and the records do not indicate a problem with email transmission. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark PORTAFLOOR based on registration at the USPTO and use in commerce. Respondent has not challenged Complainant's ownership rights in that trademark. The Panel determines that Complainant owns rights in the trademark PORTAFLOOR.
The disputed domain name directly incorporates Complainant's trademark adding the generic Top-Level Domain ("gTLD") ".net". Under the circumstances present here, the disputed domain name is identical to Complainant's trademark.
The Panel determines that Complainant has rights in the trademark PORTAFLOOR and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
As reflected in section 6.C. below, the Panel determines that Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith. As a matter of administrative panel efficiency, the Panel does not address Complainant's contention that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes, however, that the factors that go against a finding of bad faith on the part of Respondent may also have been sufficient to demonstrate Respondent's rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In order to demonstrate abusive domain name registration and use, a complaining party must demonstrate pursuant to paragraph 4(a)(iii) of the Policy that "the disputed domain name has been registered and is being used in bad faith". Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
The text of paragraph 4(a)(iii) is in the conjunctive. A prerequisite for an adverse finding is that the domain name "has been registered" in bad faith, in addition to being used in bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") notes that a "small number" of panels have chosen to overlook the conjunctive text and find bad faith notwithstanding an absence of evidence that an act of registration was undertaken in bad faith.2 That view is not, however, accepted by a preponderance of UDRP panels, and it is not accepted by this Panel.3
Certain facts in this proceeding are undisputed. Respondent registered the disputed domain name as an authorized representative of Complainant and established a commercial website addressed by the disputed domain name with the knowledge and consent of Complainant. Complainant has not presented evidence from which the Panel might reasonably infer that Respondent undertook registration of the disputed domain name more than six years ago with an intent to take unfair advantage of Complainant.
In the circumstances where a domain name registrant has undertaken no legitimate action with respect to a subject domain name, a subsequent demand from a trademark owner for payment substantially in excess of out-of-pocket expenses may be sufficient to establish an inference of bad faith at the time of domain name registration.
Those are not the circumstances in this proceeding. Here Respondent was appointed the authorized representative of Complainant with the acknowledged right to register the disputed domain name and to operate a website advertising and selling Complainant's trademark products. According to Complainant, at some indeterminate point following termination of its representative capacity, in response to a request from Complainant, Respondent requested a USD 9,000 payment from Complainant for transfer of the disputed domain name. In light of the fact that Respondent registered the disputed domain name in the context of a legitimate commercial relationship, and that Respondent developed and implemented a sophisticated website advertising Complainant's products, Respondent's request for payment does not provide the basis for an inference that Respondent registered the disputed domain name more than six years ago primarily with the intent of taking financial advantage of Complainant by selling the disputed domain name to Complainant for an amount in excess of its out-of-pocket expenses directly related to the disputed domain name.4 The Panel has not been presented with facts regarding the business relationship between Complainant and Respondent, or its termination, sufficient to establish such an attenuated inference.
Complainant has argued that Respondent is using its PORTAFLOOR trademark to attract Internet users to Respondent's website so that it can promote its other products and services. However, Respondent's other products and services are at most tangentially related to Complainant's flooring products. It seems unlikely to the Panel that Respondent's advertisement of Complainant's flooring products would be undertaken with the substantial objective of promoting Respondent's other services, such as video production services, through a modest banner placement at the bottom of its webpages.
The Panel determines that Complainant has failed to demonstrate that Respondent "registered" the disputed domain name in bad faith. The Panel determines that Respondent did not register and use the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Policy was developed to address abusive domain name registration and use. The Panel recognizes that civil litigation, including trademark infringement litigation, may be costly and inefficient. Whether or not Complainant may have a valid cause of action against Respondent for trademark infringement, Complainant does not have a valid claim against Respondent for abusive domain name registration and use within the terms of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: January 2, 2017
1 This summary of facts is based on a declaration by the International Business Manager for Complainant who has been in that position since 2008. Respondent has not responded to the complaint. The Panel accepts the statements in the declaration as facts for purposes of rendering its determination.
2 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 2011 ("WIPO Overview 2.0"), at para. 3.1.
3 See also a recent decision of this Panel, FlowJo, LLC v. PRIVATE REGISTRANT, A HAPPY DREAMHOST CUSTOMER / Qianjun Zhang,WIPO Case No. D2016-1896, involving similar circumstances.
4 Complainant has not specified the date on or about which the request for payment by Respondent for transfer of the disputed domain name was made, nor was there any written correspondence furnished by Complainant.
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