George Patton Associates, Inc. v. LABJ, Inc. / Chen, Victor
Claim Number: FA1208001459492
Complainant is George Patton Associates, Inc. (“Complainant”), represented by Kerri E. Burke of Partridge Snow & Hahn LLP, Massachusetts, USA. Respondent is LABJ, Inc. / Chen, Victor (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <display2go.com>, registered with GoDaddy.com, LLC.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2012; the National Arbitration Forum received payment on August 23, 2012.
On August 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <display2go.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@display2go.com. Also on August 28, 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 September 17, 2012.
On September 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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
a) Complainant has rights in the DISPLAYS2GO mark.
a. The mark is used in connection with point of purchase displays.
b. The mark has been used continuously since March 1, 1998.
c. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the DISPLAYS2GO mark (Reg. No. 2,814,853 filed April 16, 2003; registered February 17, 2004).
b) The <display2go.com> domain name is confusingly similar to the DISPLAYS2GO mark.
c) The <display2go.com> domain name resolves to a website where Respondent sells goods in competition with those of Complainant’s.
d) Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of goods and services.
B. Respondent
a) Respondent registered the <display2go.com> domain name on January 15, 2003.
b) The <display2go.com> domain name is not confusingly similar to the DISPLAYS2GO mark.
c) The term “display” is merely a general English word.
d) Respondent has been in the display business since 1994 focused on the portable display segment of the display industry.
e) The <display2go.com> domain name is used describe what is sold on the website.
f) Complainant’s failure to object to Respondent’s use of the <display2go.com> domain name for nearly ten years since the registration of the disputed domain name amount to waiver and acquiescence under the doctrine of laches.
Complainant has been in the business of marketing point-of-sale display materials since 1998. Complainant has used its mark DISPLAYS2GO continuously since then and has maintained a website registered as <displays2go.com> since March 1, 1998. Complainant owns the federal trademark DISPLAYS2GO through registration with the USPTO effective February 17, 2004. Respondent has marketed portable displays since 1994 and registered the disputed domain name <display2go.com> for its website on January 15, 2003. Respondent is not commonly known by the DISPLAYS2GO mark, and no evidence has been adduced that it used the mark prior to registration of the disputed domain name. Respondent uses the disputed domain name to compete with Complainant in the marketing of point-of-sale display materials. The record demonstrates that Respondent registered and has used the disputed domain name to take advantage of confusion caused by its similarity to Complainant’s mark in order to trade off of the goodwill associated with Complainant’s mark in selling its competing goods.
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.
The evidence establishes that Complainant has common law rights in the DISPLAYS2GO mark through its use of the mark in its marketing since 1998. It thus has common law rights in the mark within the meaning of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000). It also has rights in the mark based on its 2004 trademark registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007).
Moreover, Respondent’s disputed domain name incorporates Complainant’s mark except for deletion of the letter “s” from the word “displays” and the addition of the top level domain “.com.” These features do not materially distinguish the disputed domain name from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000); see alsoTrip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007).
Complainant has established its rights in the DISPLAYS2GO mark under Policy ¶4(a)(i).
No evidence exists in Respondent’s WHOIS information or otherwise that Respondent is commonly known by the disputed domain name.
The Panel finds that Respondent is not commonly known by the <display2go.com> domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003). Moreover, the record shows that Respondent’s use of the domain name that is confusingly similar to Complainant’s mark in order to sell products in competition with Complainant is not a bona fide use that gives Respondent rights or legitimate interests in the disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006).
Complainant has met its burden under Policy ¶4(a)(ii).
Respondent registered and uses the disputed domain name to obtain commercial gain by attracting Internet users to its website who mistake Respondent’s website for Complainant’s website. Respondent thus damages Complainant by causing confusion in the marketplace and obtaining business from consumers who otherwise would do business with Complainant.
Complainant has met its burden to prove registration and use in bad faith under Policy ¶4(a)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001).
Respondent contends that Complainant should be barred by laches from its present action for having failed to raise the issue earlier despite Respondent’s registration of the disputed domain name on January 15, 2003. The defense of laches has no application in this proceeding. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002).
Moreover, the record does not show when Complainant first became aware of Respondent’s registration and use of the disputed domain name. Even if laches did have applicability, the burden to prove the defense would be on Respondent, and the mere passage of time is not sufficient in itself to establish a defense of laches, even when the defense is otherwise available. See 28 Am.Jur.2d Estoppel and Waiver, §38 at 504 (2011).
Because Complainant established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <display2go.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: October 8, 2012
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