Dynocom Industries, Inc. v. Bob Bergeron / Land & Sea, Inc.
Claim Number: FA1512001652785
Complainant is Dynocom Industries, Inc. (“Complainant”), represented by Paul Aresneau, Texas, United States. Respondent is Bob Bergeron / Land & Sea, Inc. (“Respondent”), represented by Michael J. Bujold of Davis & Bujold, P.L.L.C., New Hampshire, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dynocom.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2015; the Forum received payment on December 16, 2015.
On December 18, 2015, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <dynocom.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 December 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@dynocom.com. Also on December 28, 2015, 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 January 15, 2016.
Additional Submissions were received from the Complainant and the Respondent on January 20, 2016 and January 25, 2016 respectively. The submissions were timely received in accord with the Forum’s Supplemental Rule 7.
On January 21, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 uses its DYNOCOM mark in connection with its business as a manufacturer of chassis dynamometers. Complainant has registered its DYNOCOM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,264,473, registered December 25, 2012), which demonstrates Complainant’s rights in its mark. The Panel is directed to Complainant’s Attached USPTO registration. The <dynocom.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to redirect Internet users seeking Complainant’s website to that of Respondent. Moreover, Respondent’s resolving webpage displays links to competitors of Complainant and to Complainant’s website.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent uses the disputed domain to disrupt and compete with Complainant’s business. Second, Respondent uses a confusingly similar domain name to intentionally attract, for commercial gain, Internet users to its website.
B. Respondent
Respondent obtained the disputed domain on or about December 20, 2004, which is prior to the time that Complainant registered the DYNOCOM trademark with the USPTO and prior to the time that Complainant’s USPTO registration claims first use of the trademark (March 31, 2006).
Respondent has rights and legitimate interests in the disputed domain name. First, Respondent’s website does not redirect Internet users to Respondent’s website, or to any other third party website. Rather, Respondent’s website hosts a variety of links to other websites, including that of Complainant and Complainant’s competitors. Second, since 2012, Respondent ceased all commercial use of the disputed domain; this change came as a result of a settlement that Respondent claims was reached between Respondent and Complainant, wherein Respondent agreed to cease commercial use of the domain in exchange for Complainant’s agreement that it would not pursue any claim against Respondent. Finally, the DYNOCOM mark is comprised of two generic word abbreviations: “Dyno” and “Com.” “Dyno” is a recognized abbreviation for “dynamometer,” and “Com” is an abbreviation for “commercial organization.”
The disputed domain was registered in good faith. It is impossible to conceive that Respondent registered the disputed domain in bad faith when the domain’s registration preceded both Complainant’s USPTO registration and its first use of the mark in commerce.
C. Additional Submissions
A. Complainant
Respondent’s active use of the domain name has caused market confusion, and its non-use later led to confusion about whether Complainant has ceased business since the domain does not currently point to active content. These facts are supported by the Declaration of Paul N. Arseneau, attached as Annex 1.
Complainant Dynocom Industries, Inc., by being the successor in interest of the entire business started under an assumed name, and later incorporated in Canada, has established common law rights in the mark DYNOCOM since 2002, and industry wide at least as early as December 2003 when it was participating in industry wide trade shows such as the PRI show in Indianapolis, IN.
Complainant further notes that listing its date of first use as March 31, 2006 in its U.S. Trademark Registration No. 4,264,473 does not diminish the common law rights previously established in the mark DYNOCOM.
Complainant notes that laches should not apply in the instant action.
Complainant further notes that Dynocom Industries, Inc. is entitled to assert its mark DYNOCOM as a protectable trademark. Respondent attempts to dissect the mark, rather than considering the mark in its entirety and that the U.S. Patent & Trademark Office considered the mark in its entirety as being a protectable combination of the terms DYNO and COM when it granted U.S. Trademark Registration No. 4,264,473 in 2012.
Complainant further notes that it was not aware of ownership rights in the mark by Respondent since the domain registries who-is databases at the time listed BuyDomains.com as the listed owner of the domain until about 2010, until the domain was moved to a different server to initiate a website.
Complainant states that circumstances indicate that Respondents 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.
Additionally, circumstances also indicated that Respondents acquired the domain name in order to prevent the owner of the trademark DYNOCOM from reflecting the mark in a corresponding domain name, directly corresponding to its brand DYNOCOM.
B. Respondent
Respondent, before addressing the substance of Complainant’s Additional Written Statements (“Complainant’s 2d”), objects to portions of Complainant’s 2d that, in effect, are an amended Complaint. Respondent cites Supplemental Rule 7(f) which states “Additional submissions must not amend the Complaint or Response.”
In this regard, Respondent notes that entirely new allegations are made in Complainant’s 2d, including, for purposes of illustration (and not necessarily complete list):
(a) that Complainant allegedly has established rights in the DYNOCOM mark from 2002 or 2003.
(b) that Respondent allegedly knew about the predecessor to Complainant at the time Respondent registered its domain name DYNOCOM.COM.
(c) that Complainant has learned of potential customer comments to the effect that Complainant is no longer in business, thus suggesting the “potential loss of business.”
(d) that the domain name was listed as being for sale, with a “high price” of $4,000.00.
(e) that there has been “disruption of Complainant’s business” related to an unnamed “middle eastern man.”
(f) that “[c]ustomers and potential customers of Dynocom Industries, Inc. have also noted confusion with the domain, even presuming that Dynocom Industries, Inc. was no longer in business due to the website not pointing to an active web page for the last few years.”.
Complainant has not met its obligation to show it had common law rights in the domain name which pre-date the existence of the trademark registration, nor has Complainant established any secondary meaning. In addition to having not shown that it had any common law rights, Complainant has not met its burden to show that such rights began, if at all, prior to March 31, 2006.
Respondent did not offer the domain name to Complainant, much less set a price for Complainant to purchase the domain name.
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.
Amendment to the Original Request for Enforcement or Response
Respondent in its additional submission objects to significant sections of Complainant’s additional submission. Respondent points out that Complainant’s additional submission serves to amend its original submission. Indeed, the Forum’s Supplemental Rule 7(f) specifically prohibits any amendment to the original request for Enforcement or Response. It states in relevant part that “Additional submissions and responses to additional submissions must not amend the original Request for Enforcement or Response”.
Therefore, and pursuant to Supplemental Rule 7(f), the Panel will not consider those sections of Complainant’s additional submission which serve to amend its original Request for Enforcement or Response.
Complainant uses its DYNOCOM mark in connection with its business as a manufacturer of chassis dynamometers. Complainant has registered its DYNOCOM mark with the USPTO (Reg. No. 4,264,473, registered December 25, 2012). Complainant asserts that its USPTO registration demonstrates its rights in its mark.
The Panel finds that Claimant’s trademark registrations with the USPTO suffice to demonstrate rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent argues that its registration of the <dynocom.com> domain name predates Complainant’s alleged rights in the mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant argues that the <dynocom.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the gTLD “.com.”
Previous panels have found that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
In the matter at hand, the <dynocom.com> incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.”
Accordingly, the Panel finds that the affixation of the gTLD “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis and that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent contends that the disputed domain name is comprised of common and generic terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).
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.”).
Paragraph 4(c) (iii) provides that a respondent may establish rights or legitimate interests in a domain name based on “fair use” of the domain name “without intent for commercial gain to misleadingly divert consumers”.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Bob Bergeron / Land & Sea, Inc.” This is evidenced in Complainant’s Attached Annex for additional WHOIS information. Nor does the record show that there was any license or authorization to use Complainant’s mark.
The Panel finds no basis in the available record to hold that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Therefore the Panel finds that the Respondent is not commonly known by the <dynocom.com> domain name.
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to redirect Internet users seeking Complainant’s website to that of Respondent. Moreover, Complainant asserts that Respondent’s resolving webpage displays links to competitors of Complainant and to Complainant’s website.
Respondent argues that the terms of the <dynocom.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent also argues that the DYNOCOM mark is comprised of two generic word abbreviations: “Dyno” and “Com.” According to Respondent, “Dyno” is a recognized abbreviation for “dynamometer,” and “Com” is an abbreviation for “commercial organization.”
The use of a descriptive mark as a domain name in a way that is descriptive of respondent’s goods or services may amount to fair use of the mark. See Dewey Ballantine LLP v. Pearson, D2004-1032 (WIPO Jan. 27, 2005) where it was held that the use of a mark as a domain name in a descriptive sense was a fair use. It should be noted that in the Dewey Ballantine case, as in this case, there was an absence of any evidence that the respondent had registered the domain name with an intent to mislead and divert customers, and, as in this case, the complainant’s mark had a relatively low level of distinctiveness.
The Respondent registered the domain name before Complainant’s registration of its mark. Respondent registered the domain name in December, 2004 and Complainant registered its mark in December, 2012. In Complainant’s registration with the USPTO, Complainant declares first use of the trademark as of March 31, 2006. The Panel considers this fact a declaration against interest. The significance of this is that for intent and purpose, Complainant confirms that it first used the mark on March 31, 2006.
The upshot of Complainant’s registration and first use dates is that Respondent could not have been aware of the existence of Complainant’s mark-in fact said mark did not exist-and as a result there could not be any unfair use at that time. Nor can Complainant’s rights in the <dynocom.com> mark empower it to prevent usage of the domain name in a purely descriptive sense.
Prior to notice of the dispute, Respondent used the domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent’s use of the domain name was otherwise. The domain name did include several sponsored links to third party services, including Complainant’s. However, in the overall context of the case, including the relative weak evidence put forward by Complainant, the Panel is unwilling to reach the conclusion that Respondent registered the disputed domain name for illegitimate purposes.
Additionally, the Respondent has ceased use of the domain name pursuant to an agreement with Complainant, although it continues to renew the registration.
In light of these facts and consideration of the case record, the Respondent is making a legitimate and fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel therefore finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Consequently, Complainant has failed to carry the burden of proof in respect to Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel having concluded that Respondent has rights or legitimate interests in the <dynocom.com> domain name pursuant to Policy ¶ 4(a)(ii), also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Indeed, Respondent contends that it obtained the disputed domain on or about December 20, 2004, which is both prior to the time that Complainant registered the DYNOCOM trademark with the USPTO and prior to the time that Complainant’s USPTO registration claims first use of the trademark (March 31, 2006).
Previous panels have held that a complainant lacks standing where the trademark registration comes years after the registration of the disputed domain and the complainant does not demonstrate common law rights. See Retail Indus. Leaders Assoc., Inc. v. R.I.L.A., FA 347841 (Nat. Arb. Forum Dec. 20, 2004) (“Complainant neither asserted common law rights in the RILA service mark nor supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant failed to establish common law rights in the RILA mark; therefore, Complainant lacks standing under the Policy.”).
Respondent argues that the disputed domain was registered in good faith. In so arguing, Respondent asserts that it is impossible to conceive that the disputed domain was registered in bad faith when the domain’s registration preceded both Complainant’s USPTO registration and its first use of the mark in commerce.
Past panels have agreed that a respondent’s registration of a disputed domain prior to a complainant’s trademark registration can prevent a finding of bad faith under Policy ¶ 4(a)(iii). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
The Panel finds that Respondent has not engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Doctrine of Laches:
Respondent argues that Complainant delayed, at the very least, from June 21, 2012 for nearly 3.5 years before filing the Complaint. Respondent continues that if Complainant had a genuine complaint, it could have asserted a claim long before 2012, for example, during the 6 years during which time its registration claims its alleged mark was being used. Respondent contends that there is no apparent reason for the delay at any point.
Previous panels have held that while laches by itself is not a defense to a claim brought under the policy, it may constitute evidence when considering elements of the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The Panel considers the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy and does draw a negative inference as regards Complainant’s delay in seeking relief under the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dynocom.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: February 11, 2016
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