Complainant is Terracon Consultants, Inc., United States of America (“United States”), represented by Husch Blackwell LLP., United States.
Respondent is Steven Dye, Off The Wall, United States, represented by Neustel Law Offices Ltd., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 27, 2019, 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 August 30, 2019. The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. Pursuant to an agreement between the Parties, the Center extended the due date for Response to October 10, 2019, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center October 10, 2019. On October 15, 2019, the Complainant filed a Supplemental Filing for the Panel’s consideration. The Center appointed Georges Nahitchevansky, Michael A. Albert, and Christopher J. Pibus as panelists in this matter on November 8, 2019. The Panel finds that it was properly constituted. Each member of 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, Terracon Consultants, Inc., is an engineering consulting firm. Complainant has used the name and mark TERRACON in connection with its engineering consulting services, and owns a United States trademark registration for a stylized version of the TERRACON mark that issued to registration on June 5, 2012 (Registration No. 4,153,917). Complainant also owns and uses the domain name While the disputed domain name is registered under the name of Steven Dye, Off the Wall, the party that appears to actually own the disputed domain name, and which both parties agree is the ultimate party in interest, is Taracon Precast LLC (hereinafter referred to as “Respondent”). Respondent is a manufacturer and supplier of precast concrete components for use as structural or architectural elements in building construction. Respondent uses the name and mark TARACON PRECAST in connection with its products and services. Respondent registered the disputed domain name on May 31, 2016 and has used it with a website promoting its products and services. On August 14, 2018, Complainant sent Respondent a cease and desist letter regarding Respondent’s adoption and use of the TARACON name and mark in connection with Respondent’s services. Respondent, through its attorney, sent a non-substantive response on August 23, 2018 and thereafter Respondent made a small alteration on its website to remove a reference to engineering services from a list of services provided by Respondent. The disputed domain name currently resolves to a website promoting Respondent’s products and services. 5. Parties’ Contentions A. Complainant Complainant contends that it has used the TERRACON name and mark in connection with its engineering consulting firm since 1980 and has operated a website at the domain name Complainant argues that the disputed domain name is confusingly similar to Complainant’s TERRACON mark as it is phonetically and visually similar. In that regard, Complainant maintains that the disputed domain name consists of a slight deviation in the spelling of the TERRACON mark with the non-distinguishing term “precast.” Complainant also argues that the disputed domain name is confusingly similar given that it has caused actual confusion among consumers as evidenced by misdirected invoices and communications Complainant has received from unrelated third parties. Complainant also maintains that the confusion is heightened because Respondent has used a logo on its website that is similar to a logo used by Complainant for its services. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name years after Complainant had established trademark rights in the TERRACON mark, (ii) was fully aware of Complainant’s rights in the TERRACON mark when Respondent registered the disputed domain name, and (iii) has used the disputed domain name with a website to promote Respondent’s engineering services in direct competition with Complainant’s services, which, in turn, has resulted in instances of actual confusion by consumers. Lastly, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith as Respondent registered the disputed domain name after Complainant had established rights and notoriety in the TERRACON mark in the engineering consulting industry and then began using the disputed domain name to promote Respondent’s engineering services. Complainant further asserts that because Respondent was or should have been aware of Complainant’s prior rights in TERRACON, Respondent acted in bad faith by registering the disputed domain name. Finally, Complainant contends that Respondent is acting in bad faith as Respondent continues to use the disputed domain name with a website promoting Respondent’s services after receiving Complainant’s August 14, 2018 demand letter, which has resulted in further instances of consumer confusion. B. Respondent Respondent rejects Complainant’s contentions. Respondent maintains that it is using the disputed domain name in connection with a bona fide offering of goods and services and is commonly known by the disputed domain name. Respondent describes its business as manufacturing and supplying precast concrete components for use as structural or architectural elements in building construction (a “precast” is a concrete structure cast in a form before being erected into a construction). Respondent asserts that it is known in the precast market as it is certified as a high-quality precast manufacturer by the principal technical institute and trade association in the precast concrete structures industry. Respondent further asserts that it does not offer any engineering services and that it does not compete directly or indirectly with Complainant and its engineering services. Respondent asserts that the disputed domain name is not identical or confusingly similar to Complainant’s TERRACON mark. Respondent rejects Complainant’s contention that the disputed domain name is an intentional misspelling of the TERRACON mark. Respondent also asserts that the disputed domain name is not confusingly similar because it contains the distinguishing word “precast,” which relates directly to Respondent’s business. Respondent rejects Complainant’s alleged evidence of actual confusion as none of the individuals in the alleged evidence appear to be a relevant consumer of the parties’ respective goods and services and there is no evidence that the alleged confusion resulted from Respondent’s use of the disputed domain name with its website. Respondent contends that it has legitimate interests in the disputed domain name as the disputed domain name correlates to Respondent’s business name, which was adopted well before Complainant complained about the disputed domain name. Respondent maintains that it has used the disputed domain name legitimately with a website that solely relates to Respondent’s business and its precast products. Respondent argues that there is no evidence that Respondent has used the disputed domain name unfairly and to take advantage of Complainant’s rights in the TERRACON mark. In that regard, Respondent asserts that Respondent’s precast business is distinct from Complainant’s geotech engineering services and that there would be no benefit to Respondent in trading on Complainant’s TERRACON mark given that Complainant has no experience in manufacturing precast components which involve a high level of sophistication. Lastly, Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking as Respondent maintains that there was no basis for Complainant’s Complaint. In particular, Respondent contends that Complainant made false statements in its Complaint by asserting that Respondent made use of a logo that is similar to a logo used by Complainant for its services and which consists of the letter “T” made from a combination of two separate “Ts”. Respondent claims that it uses a completely different logo shaped like a pyramid on the home page and throughout Respondent’s website, but admits that on one page of its website it did use an icon that looked like a “T” made from a combination of two “Ts.” Respondent further asserts that Complainant failed to disclose in its Complaint that Respondent is in the precast business and simply portrayed Respondent as competing with Complainant’s engineering services. 6. Complainant’s Supplemental Submission Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, Panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In the instant case, the Panel is willing to accept Complainant’s supplemental filing which consists of evidence showing alleged misdirected communications meant for Respondent that were received by Complainant after the filing of the Complaint. 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for a stylized version of its TERRACON mark that issued to registration before Respondent registered the disputed domain name. With Complainant’s rights in the TERRACON mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical or a confusingly similar mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, for purposes of the first element the Panel is willing to conclude that the disputed domain name is confusingly similar to Complainant’s TERRACON mark as the “taracon” portion of the disputed domain name is arguably close phonetically to Complainant’s TERRACON mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s TERRACON mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Given that Complainant has not established the third element of bad registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name. Complainant’s entire argument that Respondent has registered and used the disputed domain name in bad faith rests primarily on Complainant’s assertions that (i) the TERRACON mark was well known to consumers in the engineering consulting industry before Respondent registered the disputed domain name on May 31, 2016, (ii) Respondent was well aware of Complainant and its TERRACON mark when it registered the disputed domain name, (iii) Respondent has used the disputed domain name to misleadingly attract web users to a website to promote its services, and (iv) consumers have been confused as evidenced by the several misdirected communications that Complainant has received. Having reviewed the evidence submitted by the Parties in this proceeding, the Panel does not believe that Complainant has established by a preponderance of the evidence that Respondent registered and used the disputed domain name in bad faith. While Complainant claims that it was well known at the time Respondent registered the disputed domain name, the evidence before the Panel is lacking in that regard. To be sure, conclusory allegations of notoriety that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview 3.0 at section 1.3. Here, Complainant has not provided any evidence regarding its claimed notoriety in the engineering consulting industry prior to May 31, 2016 when Respondent registered the disputed domain name. Thus while the Panel accepts that Complainant had rights in the TERRACON mark in May 2016, the Panel is not convinced based on the evidence submitted that Complainant was well known throughout the United States, as Complainant claims, when Respondent registered the disputed domain name in May 2016. Additionally, there is no evidence before the Panel that suggests that Respondent adopted the name TARACON for its precast products and services for purposes of exploiting Complainant’s claimed rights in TERRACON. What the evidence submitted shows is that Respondent (i) has been in the business of manufacturing and supplying precast concrete components since at least 2016, (ii) is not a competitor of Complainant and does not provide competing engineering consulting services, (iii) has mainly used the disputed domain name, that contains the industry term “precast,” for a website to promote Respondent’s precast products and services and which does not include anything on the website that arguably relates to, or conjurs up, Complainant. Simply put, this does not appear to be a situation where the evidence shows that a party registered a domain name to expressly or opportunistically exploit another’s established trademark. The Panel is mindful that Complainant has provided evidence of alleged actual confusion in the form of misdirected communications to Complainant. There is also the possibility that Respondent may have had some knowledge of Complainant and its services prior to registering the disputed domain name. What is lacking, though, is evidence that Respondent set out to exploit Complainant’s rights in the TERRACON mark for purposes of promoting its business of manufacturing and supplying precast components. Consequently, the evidence before the Panel does not support a claim of bad faith registration on the part of Respondent in May 2016. Indeed, none of the evidence submitted by Complainant shows any attempt by Respondent to capitalize in bad faith on rights that Complainant might have arguably enjoyed in TARACON in May 2016. Put another way, this is not a case where cybersquatting is evident and appears to be more akin to a potential case of trademark infringement or unfair competition. To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding which is limited to considering whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in paragraph 4(b) of the Policy. Here, it has not been established by Complainant that Respondent registered the disputed domain name in bad faith and thus Complainant’s Complaint fails. D. Reverse Domain Name Hijacking Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard: If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. As stated previously, the Panel has found that Complainant had rights in the TERRACON mark prior to May 2016 when the disputed domain name was registered. In addition, the Panel notes that Complainant has provided examples of recent instances of claimed actual confusion, thereby supporting the notion that there might be some confusion between Complainant’s TERRACON mark and the disputed domain name. As such, Complainant had a basis for initiating a claim against Respondent. While Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith, the basis of Complainant’s claim was not objectively unreasonable or brought in bad faith – particularly as Complainant might conceivably have a potential claim for trademark infringement and unfair competition. Respondent’s primary basis for seeking a finding of Reverse Domain Name Hijacking is based on Respondent’s claim that Complainant made false statements in its Complaint regarding a logo used by Respondent and by failing to disclose that Respondent was in the precast business. Reviewing the Parties submissions, though, it is clear that while Complainant may have overly emphasized the use by Respondent of a logo similar to one used by Complainant, Respondent does not deny that on one page of its website Respondent did in fact use a logo or icon that was arguably similar. As to Respondent’s allegation that Complainant did not properly disclose Respondent’s actual business, the Panel notes that Respondent’s website did make reference at one point to engineering services and that the web pages submitted by Complainant did reference Respondent’s precast business. Simply put, while Complainant may have pushed the envelope, so to speak, on how it described Respondent’s actions, it is not proof that Complainant initiated this UDRP proceeding in bad faith or primarily to harass Respondent. The request for a finding of reverse domain name hijacking is denied. 8. Decision For the foregoing reasons, the Complaint is denied. Georges Nahitchevansky Michael A. Albert Christopher J. Pibus
Presiding Panelist
Panelist
Panelist
Date: November 22, 2019
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