Complainant is Fastsigns International, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is EJAZ KARIM, Arden Signs Banner & Print Co., United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 5, 2021, 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 November 9, 2021.
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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on December 17, 2021. 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 BackgroundComplainant, Fastsigns International, Inc., is a global franchisor of business solution service centers that provide a variety of sign and graphics products and services such as sign and banner lettering services, custom manufacturing and printing of signs, banners and displays, and various design services. Complainant has franchised more than 750 FASTSIGNS locations worldwide. Complainant owns and its franchisees have used the trademark FASTSIGNS and variations thereof as the name and mark of Complainant’s franchised business solution centers and for related products and services.
While Complainant owns registrations for the FASTSIGNS mark in a number of jurisdictions around the world, of particular relevance to this proceeding, Complainant owns registrations for its FASTSIGNS mark in the United States as a word mark (Registration No. 2,897,178) and in a stylized form (Registration Nos. 2,831,455 and 4,536,076), the earliest of these having issued to registration in April 2004. Complainant also owns a registration in the United States for the word mark WWW.FASTSIGNS.COM (Registration No. 2,543,943) that issued to registration in March 2002. Complainant also owns and uses the domain name
Respondent appears to have registered the disputed domain name on October 10, 2012. Respondent has used, and is currently using, the disputed domain name in connection with a website that promotes the services of a company in Sacramento, California called “Arden Signs Banner & Print Co.” (“Arden”) that provides, inter alia, signs, banners, embroidery, and printing services.
5. Parties’ Contentions A. ComplainantComplainant contends that it has used the FASTSIGNS mark since at least as early as 1986, and used the domain name
Complainant asserts that the disputed domain name is identical or confusingly similar to Complainant’s FASTSIGNS mark as it fully incorporates the FASTSIGNS mark as a dominant component with the additional element “bytomorrow”.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the disputed domain name, (ii) has not been authorized, licensed, or otherwise permitted by Complainant to use the FASTSIGNS mark, (iii) registered the confusingly similar disputed domain name years after Complainant established rights in its FASTSIGNS mark, and (iv) has used the disputed domain name to divert Internet traffic for financial gain to a website promoting identical and competing sign and graphics products for a company using the name Arden.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent registered the disputed domain name that is based on Complainant’s well known FASTSIGNS mark in the field of graphic products and services, and then used such to divert Internet traffic to Respondent’s website that promotes identical and competing products and services.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder 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.
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 in the United States for the FASTSIGNS mark in connection with its sign, banner, and graphic products and services.
With Complainant’s rights in the FASTSIGNS 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 (“gTLD”) “.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 mark in a domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element, the disputed domain name is confusingly similar to Complainant’s FASTSIGNS mark as it consists of the FASTSIGNS mark in its entirety at the head of the disputed domain name. The addition of term “by tomorrow” does not prevent a finding of confusing similarity between the disputed domain and Complainant’s FASTSIGNS mark which is clearly evident, and a dominant component, at the head of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the FASTSIGNS mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the Policy.
Respondent is currently using the disputed domain name with a website that promotes Respondent’s website for the products and services of its Arden company. That business appears to provide signs, banners, embroidery, and printing services that likely compete with Complainant’s FASTSIGNS franchised locations and related products and services. Respondent’s use of the disputed domain name for purposes of promoting Respondent’s competing sign graphics and printing business does not on its face appear to be a bone fide use and/or to provide Respondent with a right or legitimate interest in the disputed domain name.
That being said, however, the Panel notes that the disputed domain name has a communicative aspect in that it could be seen as consisting of the descriptive phrase “fast signs by tomorrow” meaning that signs can be created quickly and delivered the next day. That use though may be giving Respondent too much credit as the phrase could also be seen to suggest “next day services” offered by Complainant and its franchised FASTSIGNS centers. This is particularly so as Respondent is not commonly known by the disputed domain name and has chosen not to appear in this matter to explain or defend its actions in using a domain name that consists of the FASTSIGNS mark to attract Internet users to its competing website. Indeed, a review of Respondent’s website shows no use of the phrase “fast signs by tomorrow” or the offering of signage by Respondent by the next day. If anything, it seems to the Panel that Respondent cleverly registered the disputed domain name that prominently features the FASTSIGNS mark in order to attract Internet users to its website for Respondent’s commercial gain. Such use does not support a claim of making a bona fide use or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the FASTSIGNS mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad FaithGiven that Respondent has registered the disputed domain name that fully incorporates Complainant’s FASTSIGNS mark, and then used the disputed domain name for a website for a company called Aden that offers competing products and services, it seems more likely than not that Respondent was likely aware of Complainant and its FASTSIGNS mark, which operate in the same industry as Respondent, when Respondent registered the disputed domain name. Given Complainant’s longstanding prior use of the FASTSIGNS mark for its business solution service centers, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to an offering by Complainant under its FASTSIGNS mark.
Based on the evidence before the Panel, none of which is contested by Respondent, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s FASTSIGNS mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. It is well established that registering and using a domain name that is identical to a third party’s pre-existing trademark to attract Internet users to a website that offers the very same services associated with the third party’s trademark constitutes bad faith. WIPO Overview 3.0 at section 3.1.4 (and case cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
7. DecisionFor 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
Georges Nahitchevansky
Sole Panelist
Date: December 31, 2021