4imprint, Inc. v. FOUR COLOR IMPRINTS , LTD.
Claim Number: FA1605001674403
Complainant is 4imprint, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is FOUR COLOR IMPRINTS , LTD. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4imprints.com>, registered with Vivid Domains, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 17, 2016, Vivid Domains, Inc. confirmed by e-mail to the Forum that the <4imprints.com> domain name is registered with Vivid Domains, Inc. and that Respondent is the current registrant of the name. Vivid Domains, Inc. has verified that Respondent is bound by the Vivid Domains, Inc. 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 May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@4imprints.com. Also on May 17, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth l. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the 4IMPRINT mark in connection with its business of selling promotional products. Complainant has registered the 4IMPRINT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,446,964, registered Apr. 24, 2001), which demonstrates rights in the mark. See Compl., at Attached Ex. E. Respondent’s <4imprints.com> domain name is confusingly similar to the 4IMPRINT mark as it contains the mark in its entirety, only adding the letter “s” and the generic top-level domain (“gTLD") “.com.”
Respondent has no rights or legitimate interests in the <4imprints.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <4imprints.com> domain name. Rather, the domain name resolves to a website containing hyperlinks that purport to redirect to the websites of Complainant’s competitors. The link titles include “Cheap Promo Products,” “Custom Printing,” and “Promotional Giveaways.” See Compl., at Attached Ex. H.
Respondent’s registration and use of the <4imprints.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the disputed domain name’s resolving website includes competing hyperlinks. Id. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <4imprints.com> domain name was registered on May 21, 2002.
C. Additional Submissions
The Complainant submitted an Additional Submission in response to the Panel’s realization that all Attachments referenced in the Complainant’s Table of Contents were not made part of the record. Specifically, Attachments M-P, referenced in the Table of Contents and made to appear important to this proceeding, were not attached. Complainant merely resent the same Table of Contents with Attachments M-P omitted. In explanation, the Complainant’s representative stated as follows:
The table of contents references up to Exhibit P however we only check off the ones that are provided. In this case, it is up to Exhibit L. It has been like this for 8+ years. The attached are correct. Thanks!
The Panel finds that although the disputed domain name is confusingly similar to the Complainant’s trademark and the Respondent appears to lack any current rights or legitimate interests in or to the disputed domain name, the Complainant has failed to meet its burden that Respondent has used and registered the disputed domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Complainant clearly has rights in and to the registered trademark 4IMPRINT. It has adequately plead its interest in or to this trademark. The Panel finds that the Respondent’s disputed domain name is confusingly similar to Complainant’s trademark as it arrives at the disputed domain name by merely adding an “s” to the end of the mark and the g TLD “.com.” This does not distinguish the disputed domain name from the registered trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.
The Panel further finds that Respondent is apparently not commonly known by the disputed domain name. The WHOIS information regarding the <4imprints.com> domain name lists “Four Colour Imprints, Ltd.” as registrant. While Respondent’s registration name is similar to the disputed domain name, it is not the same. Complainant has apparently not given Respondent permission to use its 4IMPRINTS mark. In light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, the Panel finds that, currently, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <4imprints.com> domain name. Rather, the disputed domain name apparently resolves to a website containing hyperlinks that purport to redirect to the websites of Complainant’s competitors. The link titles include “Cheap Promo Products,” “Custom Printing,” and “Promotional Giveaways.” See Compl., at Attached Ex. H. Complainant contends that Respondent receives pay-per-click revenue in connection with the links. If this is true, the Respondent’s use of a Complainant’s mark to operate a pay-per-click website containing links to the products of a Complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Therefore, the Panel finds that Respondent’s use of the <4imprints.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
However, the Panel finds that the Complainant has failed to carry its burden regarding bad faith. The standard is whether the Respondent has used AND registered the disputed domain name in bad faith. Complainant has provided ample evidence to establish that the Respondent is now using the disputed domain name in bad faith. Complainant has offered no evidence to support any claim that Respondent registered the disputed domain name in bad faith 14 years ago.
Complainant misstates the date the Panel should rely on for when trademark rights were conferred upon Complainant. Complainant seems to claim that its rights commenced upon its first use in 1999. In order to sustain that claim, Complainant would have to offer evidence establishing that its trademark had secondary meaning in 1999. It offers no such evidence.
Therefore, Complainant’s rights in the trademark 4IMPRINT commenced upon the registration of its trademark in April 2001. This is relevant because in May 2002, Respondent registered the disputed domain name. In order for Complainant to sustain its burden that this registration was in bad faith, Complainant would have to offer evidence that Respondent had actual knowledge of Complainant’s mark in 2002 and registered the disputed domain name anyway. Complainant offers no such evidence.
Complainant claims that its mark is now famous. However, to support its claim that Respondent registered the domain name in bad faith, Respondent would have to provide evidence that its mark was famous in 2002. It provides no such evidence and the Panel will not make that presumption.
Complainant would have this Panel believe that Respondent’s bad faith use today imputes bad faith registration 14 years ago. This is also a presumption the Panel is uncomfortable making given that the Complainant has offered no evidence to assist the Panel in making this connection.
Further, the Complainant appears to either be attempting to mislead the Panel or its complaint is simply inconsistent and incoherent. Either way, the Panel finds that the Complainant’s contention that the Respondent has engaged in bad faith use and registration is unreasonable.
Complainant provides Attachments with a Table of Contents to its complaint. If one reads only the Table of Contents, it appears that Complainant is about to proffer evidence that Respondent is a serial cybersquatter. However, the labeled Attachment N claiming such bad faith conduct by Respondent is not attached to the complaint. When ordered to provide all Attachments referenced, the Complainant merely refiled the Attachments omitting Attachment N but preserving the reference to Attachment N in the Table of Contents.
In explanation of this confused filing, Complainant wrote to the Forum saying the following:
The table of contents references up to Exhibit P however we only check off the ones that are provided. In this case, it is up to Exhibit L. It has been like this for 8+ years. The attached are correct. Thanks!
Whether such misleading conduct was done once or, apparently, continuously for 8+ years, this Panel finds such conduct by Complainant to be unreasonable. To pretend in the Table of Contents that evidence is about to be proffered establishing a key problem of which the Panel is keenly aware and then actually not include such evidence is at least unreasonable if not misleading.
Complainant has a general duty to act reasonably. The Rules to the Policy require that Complaint’s claims be reasonable and complete and accurate.
Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. Rule 3(b)(xiv).
By claiming, with no evidence, that Respondent registered the disputed domain name 14 years ago in bad faith and to either mislead or misstate that Respondent is a serial cybersqatter is not reasonable.
To be clear, the Panel is not relying on laches to come to its conclusion. Laches arguments have no place in UDRP cases as Panelists lack equitable powers. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); see also The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c). This is simply an issue of whether, with no evidence, it is reasonable to believe Complainant when it claims registration of the disputed domain name that happened 14 years ago was done in bad faith.
The Panel finds that it is not reasonable to conclude such, especially when the complaint seems to include other apparent misrepresentations or misstatements. As such, the Complainant has failed to carry its burden to establish that the Respondent engaged in bad faith use and registration of the disputed domain name.
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 <4imprints.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: June 16, 2016
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