Mid-America Pool Renovations, Inc. v. Robert Perry
Claim Number: FA1206001451212
Complainant is Mid-America Pool Renovations, Inc. (“Complainant”), represented by Christopher M. DeBacker, Missouri, USA. Respondent is Robert Perry (“Respondent”), represented by Kevin G. James of Law Office of Kevin G. James, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interglass4pools.com>, registered with Brandon Gray Internet Services, Inc. d/b/a namejuice.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2012; the National Arbitration Forum received payment on June 28, 2012.
On July 4, 2012, Brandon Gray Internet Services, Inc. d/b/a namejuice.com confirmed by e-mail to the National Arbitration Forum that the <interglass4pools.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a namejuice.com and that Respondent is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a namejuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a namejuice.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@interglass4pools.com. Also on July 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 31, 2012.
On August 3, 2012, an timely Additional Submission from Complainant was received and was deemed to be in compliance with Supplemental Rule 7.
On August 9, 2012, an Additional Submission from Respondent was received. However, the Forum does not consider this submission to be in compliance with Supplemental Rule 7 as it was received after the deadline for submissions.
On August 20, 2012 an Additional Submission from Respondent was received (e-mail). The Forum does not consider this submission to be in compliance with Supplemental Rule 7.
On August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that Respondent is using the domain name “interglass4pools.com” for the website of his business, Maverick Pool, which provides Pool refinishing services. Complainant alleges that the website includes numerous references to "interglass", which would be confusingly similar to Complainant's registered trademark.
Complainant contends that Respondent is a direct competitor of the Complainant in the pool re-surfacing industry. Complainant states that the registered trademark “INTER-GLASS” is directed at pool re-surfacing, which is the same business Respondent is involved with.
Complainant informs a similar dispute between the same two parties occurred in 2003 (Claim Number FA0310000206361), in which it was determined the transfer of the domain names “interglass.net,” “inter-glass.net,” and “inter-glass.com,” to Complainant. After that, Respondent created the disputed domain name, which Complainant argues is in clear violation of the Complainant’s registered U.S. trademark. Complainant also argues that Respondent has no rights to use the trademark INTER-GLASS®, and that his misuse of the trademark INTER-GLASS® causes actual consumer confusion and dilutes the mark.
Complainant alleges that, on information and belief, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
B. Respondent
Respondent contends that the Complainant does not allege Respondent’s actual use of the disputed domain name. According to Respondent, Complainant’s allegations are directed at words used in the text of Respondent’s website. Respondent alleges that Complainant’s allegations are without merit and unsupported by evidence.
Respondent argues that Complainant’s trademark protects the expression INTER-GLASS in capital letters and divided by a hyphen. Respondent argues that a review of the words used by the Respondent in the text of his website reveals no such use of the trademark INTER-GLASS. Respondent alleges that a further review of its website reveals “interglass” is used in conjunction with Maverick pools and that a prospective customer would easily know that the respondents business name is Maverick Pools.
Further, Respondent argues that it serves a customer base mostly in Massachusetts and that on a few occasions Respondent has done business in New Hampshire and Rhode Island. Respondent argues that the distance between Massachusetts and Missouri, where Complainant is located, is over a thousand miles and that it is unlikely that one of Complainant’s Missouri customers would transact business with respondent.
Finally, Respondent states that he has registered the disputed domain name for the sole purpose of attracting prospective customers which reside in Massachusetts.
C. Additional Submissions
In its Additional Submission, Complainant disputes Respondents allegation that the NAF case between these same two parties in 2003 had a
default judgment, by stating that a decision by the National Arbitration Forum’s arbitrator is not a “default judgment” – the evidence that is submitted is weighed. It was determined that the use of “INTERGLASS” and “INTER-GLASS” by Respondent in 2003 ran against the registered Federal Trademark owned by the Complainant, Mid-America Pool Renovations, Inc.
Complainant also states that Respondent did informally respond in 2003 by sending a strongly worded letter to the Case Coordinator.
Complainant states that Respondent’s use of the disputed domain name has caused actual consumer confusion, as Complainant operates and markets its INTER-GLASS products nationally. Complainant has also provided a sworn statement by David Kateusz, the corporate director of the Complainant, documenting his conversation with Dylan Cobb, the project manager for
Garver USA Engineers, where actual consumer confusion occurred.
Respondent alleged, in his Additional Submission, that the Rules of Civil Procedure of most jurisdictions prohibit the use of written affidavits after the commencement of legal proceeding.
Further, Respondent states that the affidavit of David Kateusz attempts to establish a pattern of real customer confusion by citing just a single incident. Respondent contends that hundreds of millions of people use the Internet every day to conduct an infinite number of business transactions and searches. It is impossible to prevent all confusion on all occasions.
Respondent argues that Complainant is improperly attempting to expand the scope of the 2003 decision to have it encompass the use of the expression “interglass4pools”.
Respondent filed another additional submission, stating that “interglass” would be a generic name for fiberglass in the industry.
Complainant claims rights in the INTER-GLASS mark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 1,680,892 registered March 31, 1992). The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel finds that Complainant has established rights in the INTER-GLASS mark under Policy ¶ 4(a)(i)through its registration with the USPTO.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant urges the Panel to find Respondent’s <interglass4pools.com> domain name confusingly similar to Complainant’s INTER-GLASS mark within the meaning of Policy ¶ 4(a)(i). The Panel notes that the disputed domain name includes Complainant’s mark while omitting the hyphen. The Panel notes that the disputed domain name also includes the numeral “4,” the descriptive term “pools,” and the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the removal of the hyphen from Complainant’s INTER-GLASS mark and the affixation of a gTLD do not affect a confusingly similar analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant asserts that the term “pools” is descriptive of both Complainant’s and Respondent’s businesses, as both parties compete in the pool re-surfacing industry. The Panel further finds that the additional terms “4” and “pools” do not diminish the confusingly similar nature of Respondent’s domain name. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Respondent’s <interglass4pools.com> domain name is confusingly similar to Complainant’s INTER-GLASS mark within the meaning of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Although Complainant has failed to allege that Respondent is not commonly known by the <interglass4pools.com> domain name for the purposes of Policy ¶ 4(c)(ii), the Panel has reviewed the evidence in the record and finds that the Respondent is not commonly known by the disputed domain name. The Panel notes that the relevant WHOIS information identifies Respondent as “Robert Perry.” The Panel also notes that Respondent has failed to provide the Panel with any evidence indicating that Respondent is commonly known by the disputed domain name. The Panel observes that in its Response, Respondent claims to use the term “interglass” in conjunction with Respondent’s entity name, Maverick Pools. The Panel finds that Respondent uses the phrase “interglass by Maverick Pools” several times on its website, which suggests that Respondent is commonly known by the name “Maverick Pools,” not <interglass4pools.com>. Based on this analysis, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further alleges that Respondent’s use of the disputed domain name cannot qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant asserts that Respondent uses the disputed domain name to resolve to the website of Respondent’s business, Maverick Pool. Complainant argues that Respondent is a direct competitor of Complainant, as both parties provide pool refinishing services. The Panel finds that Respondent’s competing use of the <interglass4pools.com> domain name does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant alleges that a similar dispute between these same parties involving Complainant’s INTER-GLASS mark was brought to the Forum in 2003. See Mid-America Pool Renovations, Inc. v. Perry, FA 106361 (Nat. Arb. Forum Dec. 8, 2003). The Panel notes that in that case Respondent was found to have registered the <interglass.net>, <inter-glass.net>, and <inter-glass.com> domain names in bad faith, resulting in the domain names being transferred to Complainant. The Panel finds that this previous UDRP decision, in which Respondent was found to have registered and used domain names incorporating Complainant’s INTER-GLASS mark in bad faith, provides evidence that Respondent has registered the disputed domain name in the immediate case in bad faith under Policy ¶ 4(b)(ii) as well. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant argues that the primary reason for Respondent’s registration and use of the <interglass4pools.com> domain name is to create a likelihood of confusion with Complainant’s mark, allowing Respondent to divert Internet traffic intended for Complainant to Respondent’s competing website. Complainant argues that Respondent has wrongfully used Complainant’s INTER-GLASS mark to solicit business for Respondent’s competing pool resurfacing enterprise. The Panel finds that it is likely that Respondent generates a commercial gain through the operation of its competing business in order to remain solvent. The Panel finds, therefore, that the impetus for Respondent’s registration and use of the confusingly similar domain name was to create confusion as to Complainant’s affiliation with the disputed domain name, allowing Respondent to use this confusion for commercial gain. The Panel finds that this type of operation illustrates attraction for commercial gain, which provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
Complainant also argues that Respondent registered the <interglass4pools.com> domain name with actual knowledge of Complainant’s rights in the INTER-GLASS mark. Complainant asserts that Respondent was once a dealer for or customer of the original trademark holder for INTER-GLASS-branded products, but continued to use the mark after the termination of that business relationship. Complainant also notes the 2003 UDRP case, involving the same parties and the same mark, as evidence that Respondent had actual knowledge of Complainant’s rights in the INTER-GLASS mark prior to Respondent’s registration of the <interglass4pools.com> domain name. After an examination of the evidence, the Panel finds that Respondent did in fact have actual knowledge of Complainant’s rights in the INTER-GLASS mark prior Respondent’s registration of the disputed domain name. The Panel further finds that such actual notice demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <interglass4pools.com> domain name be TRANSFERRED from Respondent to Complainant .
Luiz Edgard Montaury Pimenta, Panelist
Dated: August 20, 2012.
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