PrintingforLess.com v. Printing Source Inc.
Claim Number: FA0512000616764
PARTIES
Complainant is PrintingforLess.com (“Complainant”), 100 PFL Way, Linvingston, MT
59047. Respondent is Printing Source Inc. (“Respondent”),
8616 La Tijera Blvd #511, Los Angeles, CA 90045.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <printing-for-less.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
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 December 29, 2005; the National Arbitration Forum received a
hard copy of the Complaint on January 3, 2006.
On December 29, 2005, Intercosmos
Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the
National Arbitration Forum that the <printing-for-less.com>
domain name is registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com and that the Respondent is the
current registrant of the name. Intercosmos Media Group, Inc. d/b/a
Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.com 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 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 23, 2006 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@printing-for-less.com by e-mail.
A timely Response was received and determined to be complete on January
19, 2006.
On January 25, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant merged with the entity Express Color Printing, Inc. on June 26, 2000 and as such is the valid holder of the United States Service Mark for PRINTINGFORLESS.COM, (Registration Number 2,322,620) registered February 22, 2000, first use in commerce March 1, 1999
Complainant is the valid holder of a United States Service Mark for PRINTINGFORLESS, (Registration Number 3,022,197) registered November 29, 2005, first use in commerce March 31, 1999.
Complainant is the valid holder of a Canadian Trademark for PRINTINGFORLESS (Registration Number TMA630,082, File Number 1194737), registered May 4, 2005.
Finally, Complainant also holds a valid Certificate of Registration for the text of the website located at the domain name <printingforless.com> (TX 5-957-449, effective December 22, 2003), and as such its name and website contents are protected by all relevant intellectual property laws.
Complainant uses the marks PRINTINGFORLESS.COM and PRINTINGFORLESS to provide commercial printing services to individuals and businesses throughout the world through its website www.printingforless.com.
This Complaint is based on the
following factual and legal grounds:
[a.] The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. ICANN Policy ¶ 4(a)(i).
Respondent’s domain name is confusingly similar to the Service Marks PRINTINGFORLESS and PRINTINGFORLESS.COM, used by Complainant. The domain name in question varies from Complainant’s domain name and marks by only the addition of hyphens between the words “printing,” “for” and “less.” A registered service mark does not become dissimilar merely by putting hyphens between words of the Complainant’s mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark.); see also Chi-Chi’s, Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000) (finding that traditional trademark law would find absence of a hyphen not sufficient to differentiate domain name). Therefore, Respondent’s domain name should be determined to be confusingly similar to the Service Mark of Complainant.
[b.] The Respondent has no rights or legitimate interest in respect to the domain name. ICANN Policy ¶ 4(a)(ii).
Respondent should be considered to have no rights or legitimate interests in the domain name due to the fact that it was registered after the registration of Complainant’s domain name and Service Marks. Respondent has no substantial affiliation with, nor is it known by the name <printing-for-less.com>. Respondent also has no justification for its use of the registered mark of Complainant, and uses a confusingly similar domain name to direct users to another site it uses to sell domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also AltaVista v. Krotov, D2000-10901 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
[c.] The domain name has been registered and is being used in bad faith. ICANN Policy ¶ 4(a)(iii).
Respondent has registered and is
using the disputed domain name in bad faith. Complainant’s Registered Service
Marks PRINTINGFORLESS.COM and PRINTINGFORLESS are registered with
the USPTO. Respondent was placed on constructive notice by virtue of
registration of Complainant’s mark with the the
USPTO. Subsequent registration of the disputed domain name, containing
Complainant’s service marks, is an indication of bad faith registration. See Victoria’s Cyber Secret Ltd. P’ship v. V
Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (noting
that registration of a trademark or
service mark is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption).
In addition, Respondent has never used the domain name concerned. The absence of development of any website using the domain name in dispute and the absence of any other good faith use of the domain name are elements of bad faith. Use in bad faith is not limited to positive actions and the passive holding in relation to a domain name can constitute use of a domain name in bad faith. See France Telecom SA v. France Telecom Users Group (WIPO April 2, 2002) (finding that registration of france-telecom.com constituted a use in bad faith of a protected mark even though the mark was not in active use).
Finally, Complainant is a well-known company that has appeared in national publications such as Inc., Fortune Small Business, People Magazine and the Wall Street Journal and has engaged in extensive marketing and advertising. Respondent is attempting to capitalize on Complainant’s marks as well as reputation by registering and using a confusingly similar domain name. Bad faith is evidenced when registration of a domain name is made in an attempt to utilize another’s well known reputation. See Dollar Rent A Car Systems, Inc. v. Patrick Ory, FA0209000125229 (Nat. Arb. Forum Nov 14, 2002) (finding that evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s well known reputation by attracting Internet users to the registrant’s web site, for commercial gain).
B. Respondent
Pursuant to the claim by
PrintingForLess.com please be advised that we legally registered our URL, www.printing-for-less.com
on 2/21/01 after a search on the host site Directnic. The URL was shown to be
available and we thought we were legally purchasing something free and clear.
As a webmaster of 5 sites, 4 of which are printing and having built two others
for printing companies, the sole purpose of buying these available URLs was for
future use by ourselves or for another printing company we would build a site
for.
As to the fallacious and self serving claims
by PrintingForLess.com, these sites are parked for our usage and Directnic
parks all of our non activated URLs the same way, as if they were for sale, due
to non use. I believe they do this for all similar customers as a matter of
course rather than our intent, as we have never sold any of these URLs to this
date. With respect to this character reading our intentions, of which he cannot
possibly know, let me assure you that we have never gotten a single email or
otherwise from anyone thinking they were going to his site. Additionally our
site was so low key and non-threatening to this character, it took him from
2001 to now, 5 years; to even know we existed with our URL. His demeanor
on the phone was as bad as the fallacious inferences in his complaint: rude and
demanding.
As you know, there are many sites online that
differ only by an underscore, dash, a digit, etc. and this seems to be par for
the World Wide Web. All others seem to abide by this, except this character
that seems to have a problem with it. We are acting appropriately and purchased
this legal entity following our search and have every right to expect that this
should suffice.
DISCUSSION AND FINDINGS
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.
Complainant asserts its registration with the United States Patent and Trademark Office as proof of its rights in the PRINTINGFORLESS.COM mark (Reg. No. 2,322,620 issued February 22, 2000, filed October 4, 1999). The Panel finds that Complainant’s registration with a governmental authority is sufficient to establish Complainant’s rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the disputed <printing-for-less.com> domain name differs from Complainant’s PRINTINGFORLESS.COM mark only with the additions of hyphens between the words in Complainant’s mark. The Panel finds that such changes are insufficient to negate the confusing similarity of the domain name to Complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar); see also Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (“The use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY.”). Additionally, the Panel determines that the inclusion of Complainant’s mark within the domain name is sufficient to show confusing similarity and that Complainant is not required to prove actual confusion to prevail on this element. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).
The Panel notes that while the initial burden lies with Complainant to show that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent once Complainant has made a prima facie case. Respondent must then provide evidence of its rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel finds that there is nothing in the record, including the WHOIS registration information, to indicate that Respondent is commonly known by the <printing-for-less.com> domain name. The Panel, therefore, determines that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Additionally, Complainant maintains that Respondent has never used the <printing-for-less.com> domain name or developed the domain name for any purpose since registering the domain name March 15, 2000. Therefore, the Panel determines that Respondent is passively holding the domain name and that such non-use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Complainant asserts that Respondent’s failure to use the <printing-for-less.com> domain name or to demonstrate development of the website for good faith use is evidence of bad faith registration and use. The Panel finds that Respondent has not presented any evidence of demonstrable preparations to use the domain name for a non-infringing purpose and that this supports an inference of bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Complainant also argues that
Respondent was placed on constructive notice of Complainant’s rights in the PRINTINGFORLESS.COM mark due to Complainant’s
registration of the mark with the USPTO.
Thus, the Panel finds that Respondent’s registration of the <printing-for-less.com> domain name, incorporating Complainant’s mark,
after Complainant’s registration of its mark with the USPTO is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Victoria’s Cyber Secret Ltd. v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
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 <printing-for-less.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: February 8, 2006
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