Postmark DMS, LLC v. Print Source One
a/k/a Seminar Direct
Claim Number: FA0501000404558
PARTIES
Complainant
is Postmark DMS, LLC (“Complainant”),
represented by John C. Cain, 20333 SH 249, Suite 600, Houston, TX
77070. Respondent is Print Source One a/k/a Seminar Direct (“Respondent”), represented by Douglas J.
Dickson, 315 East Watkins Street, Phoenix, AZ 85004.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <postmarkdirect.com>,
registered with Domaindiscover.
PANEL
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.
Richard
B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 19, 2005, Domaindiscover confirmed by e-mail to the National
Arbitration Forum that the domain name <postmarkdirect.com>
is registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
January 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 14, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@postmarkdirect.com by
e-mail.
A
timely Response was received and determined to be complete on February 14, 2005.
Additional
Submissions were timely received from both Complainant and Respondent and were
carefully considered by the Panel.
On February 25, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant
in this administrative proceeding is Postmark DMS, LLC, a limited liability
corporation organized and existing under the laws of the State of Texas, with a
business address of 1507 Ricefield Drive, Suite 200, Houston, Texas 77084-6026.
According
to DomainDiscover Information dated December 17, 2004, the <postmarkdirect.com>
domain name was registered on June 5, 2004 by Print Source One a/k/a Seminar
Direct, 2424 S. Central Ave., Phoenix, Arizona 85004.
Complainant,
Postmark DMS, LLC (“Postmark”), is an industry leader in providing direct
marketing materials and services to its clients. Since 1990, Postmark has provided superior technology, products,
tools and expert services to its individual and company clients. Through its innovative and original
materials and services, Postmark helps its clients be productive and efficient
and enables them to differentiate themselves from their competitors.
Postmark’s
investment in its various intellectual property rights, including its unique
business methods and practices, its copyrighted artwork and text, and its
trademarks, trade dress and trade secrets, has grown significantly during the
last decade. Thus protecting its
intellectual property rights while respecting the intellectual property rights
of others is very important to Postmark.
In
its corporate name, the “DMS” stand for “Direct Marketing Services.” Over the years, Postmark has routinely been
known by its customers and the industry as “Postmark,” “Postmark Direct” and
“Postmark Direct Marketing” since well before Respondent filed to register the
disputed domain name, <postmarkdirect.com>.
Postmark
has spent many thousands of dollars advertising and promoting its direct
marketing services. As a result of such
efforts, and as a result of the long use by Postmark of the POSTMARK DIRECT
MARKETING name and mark, the name and mark is recognized as a designation that
identifies and distinguishes the quality direct marketing services offered by
Postmark. Moreover, Postmark has
developed enormous goodwill in the POSTMARK DIRECT MARKETING name and mark for
its direct marketing products and services.
Moreover,
Complainant Postmark is the owner of the <postmarkdms.com> registered
domain name, wherein Postmark advertises its direct marketing services under
the POSTMARK and POSTMARK DIRECT MARKETING marks.
The
disputed domain name, <postmarkdirect.com>, is phonetically
identical and confusingly similar to Postmark’s POSTMARK DIRECT MARKETING mark
and name. See ICANN Policy ¶ 4(a)(i).
Indeed, the domain name represents the exact first two words in
Postmark’s full name and mark, POSTMARK DIRECT MARKETING.
Respondent
has no rights or legitimate interests in the <postmarkdirect.com>
domain name.
Respondent’s
website at the <postmarkdirect.com> domain name immediately
directs Internet users to its <seminardirect.com> website where
Respondent’s services, which compete directly with Postmark’s services, are
offered.
Respondent
registered and uses the <postmarkdirect.com> domain name primarily
for the purpose of redirecting customers seeking Postmark’s website to its own
website, which offers directly competing services. Thus, Respondent is trading on Postmark’s goodwill and creating a
likelihood of confusion as to source, sponsorship, affiliation, or endorsement
between Respondent’s website and Complainant’s POSTMARK DIRECT MARKETING name
and mark.
The
disputed domain name is an example of typosquatting, the appropriation of a
trademark holder’s mark with a typographical variation, done in order to
attract Internet users attempting to reach the trademark holder’s website. In light of Respondent’s use of the domain
name, it can be inferred that Respondent had actual knowledge of Complainant’s
rights in the POSTMARK DIRECT name and mark when it registered the disputed
domain name.
B.
Respondent
Print
Source One, was founded on January 1, 1990 and has grown to be one of the top
printing companies in the Phoenix Metropolitan area, as surveyed by Arizona
Business Magazine’s 2004 Ranking Arizona Survey.
Print
Source One markets itself under its own name and various other trade names for
product and industry specific differentiation and has acquired ownership of a
substantial number of domain names for this purpose. Respondent attached a listing of 64 unique domain names acquired
by Print Source One, including the <seminardirect.com> and
<postmarkpro.com> domain names.
Print
Source One is a market leader in providing seminar marketing and promotional
printing, graphic design, mailing services and direct mail products under the
registered trade name of Seminar Direct to a large number of clients across the
United States.
Print
Source One subcontracts all mailing operations to Postmark Pro, LLC, an Arizona
Limited Liability Corporation. Both
Print Source One, Inc. and Postmark Pro, LLC, share the same facilities,
physical address, personnel, corporate officers and majority ownership.
The
combined services of Postmark Pro, LLC and Seminar Direct are marketed under
the trade name of “Postmark-Direct.”
This trade name is a contraction of the two names Postmark Pro, LLC and
Seminar Direct. This trade name was
created and first marketed to the public on January 1, 2001 to synergistically
utilize the great reputation of both firms and recognize the interdependence of
both companies to their customers. The <postmarkdirect.com>
domain name was reserved in good faith to facilitate such ongoing marketing and
promotion.
Since
June 2004, Respondent has been using the <postmarkdirect.com>
domain name in connection with its graphic design, printing services and
direct-mail marketing. This is a bona
fide offering of goods and services under Policy ¶ 4(c)(i).
Respondent
has effectively made use of the domain name continuously as a website
address. Its utilization, which is
unrefuted, had been made for the aforementioned purpose prior to any notification
of a dispute concerning the domain name. There is no question of its legitimate
right or interest in the domain name. See,
e.g., Shirmax v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000).
Respondent
asserts that the domain name was registered and is being used in good faith.
Respondent has a legitimate interest in the domain name because Respondent
selected the name in good faith for its website and has been offering services
under the domain name prior to the initiation of the dispute. See DJF Assoc., Inc. v. AIB
Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000).
Print
Source One has made a large investment in its various intellectual property
rights, including its unique business methods and practices, its copyrighted
artwork and text, and its trademarks, trade dress and trade secrets, that has
grown significantly during the last decade.
Protecting its intellectual property rights, while respecting the
intellectual property rights of others, is very important to Print Source One.
Complainant
has legally organized itself under the legal name of Postmark DMS, LLC and has
presented no evidence of its registration or use of the POSTMARK DIRECT
trademark. The words “Postmark” and
“Direct” are of general application in the field of commercial direct mail and
Complainant has presented no evidence that those words, apart from any others,
have been utilized by Complainant as a trademark.
Respondent
asserts that the term “postmark,” which is common to both the registered name
Postmark DMS and the Postmark Direct domain name, is generic and cannot acquire
secondary meaning as a trademark.
Respondent
rebuts Complainant’s asserted rights in the terms POSTMARK, POSTMARK DIRECT,
POSTMARK DIRECT MARKETING and POSTMARK DIRECT MARKETING SERVICES. Respondent contends that Complainant holds
no legitimate trademark registration for any of these combinations of words.
C.
Additional Submissions
Received
timely from both parties and fully considered.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
FINDINGS
Complainant
asserts that is has established rights in the POSTMARK DIRECT MARKETING mark,
despite the fact that the mark is not registered with any trademark
authority. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar.
23, 2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
The
Panel finds that Complainant’s POSTMARK DIRECT MARKETING mark has gained
secondary meaning through Complainant’s continuous use of the mark since
1990. Complainant contends that it “has
spent many thousands of dollars advertising and promoting its direct marketing
services” and “[a]s a result of such efforts, and as a result of the long use
by Postmark of the POSTMARK DIRECT MARKETING name and mark, the name and mark
is recognized as a designation that identifies and distinguishes the quality direct
marketing services offered by Postmark.”
Thus, the Panel finds that Complainant has established common law rights
in the POSTMARK DIRECT MARKETING mark. See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Passion
Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding
that Complainant established sufficient rights by virtue of its distribution
and advertising to enable it, at common law, to prevent another magazine by the
same name from being passed off as that of Complainant. Thus Complainant
established that it ‘has rights’ under the ICANN Policy).
Furthermore,
Complainant asserts that Respondent’s <postmarkdirect.com> domain
name is confusingly similar to Complainant’s POSTMARK DIRECT MARKETING mark
because Respondent’s domain name merely deletes the term “marketing” from
Complainant’s mark. The Panel finds
that such omission is insignificant and is not enough to overcome a finding of
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond
Suddards Edge, where the name “Hammond Suddards” identifies Complainant
independently of the word “Edge”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb.
Forum Jan. 16, 2001) (finding that the domain name
<wellness-international.com> is confusingly similar to Complainant’s
“Wellness International Network”).
Moreover,
the Panel finds that Respondent’s addition of the generic top-level domain
“.com” and omission of the spaces between the terms in Complainant’s mark are
insufficient to defeat a finding of confusing similarity under Policy ¶
4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Complainant contends that Respondent is using the <postmarkdirect.com>
domain name to redirect Internet users to its website located at the
<seminardirect.com> domain name, where competing printing and marketing
services are offered. The Panel finds
that such use is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Avery Dennison
Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
Furthermore,
the Panel finds that nothing in the record indicates that Respondent is either
commonly known by the <postmarkdirect.com> domain name or is
authorized to register domain names featuring Complainant’s POSTMARK DIRECT
MARKETING mark. Thus, the Panel
concludes that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Complainant
argues that Respondent is using the <postmarkdirect.com> domain
name, which contains a confusingly similar version of Complainant’s POSTMARK
DIRECT MARKETING mark, to operate a website featuring competing printing and
marketing services. The Panel finds
that such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business).
Furthermore,
the Panel finds that Internet users accessing Respondent’s domain name, which
contains a confusingly similar variation of Complainant’s mark, may become
confused as to Complainant’s affiliation with the resulting website. Thus, the Panel concludes that Respondent’s opportunistic use of the domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <postmarkdirect.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: March 11, 2005