LD Products, Inc. v. Total
Sales USA, Inc.
Claim Number: FA0611000832392
PARTIES
Complainant is LD Products, Inc. (“Complainant”), represented by Karl
S. Kronenberger, of Kronenber Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fourinkjet.com>, registered with Go Daddy
Software, Inc.
PANEL
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 3, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On November 3, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <fourinkjet.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 November 13, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 4, 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@fourinkjet.com by
e-mail.
A timely Response was received and determined to be complete on December 4, 2006.
On December 9, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Clive
Elliott as Panelist.
On December 13, 2006 an Additional Submission was received from
Complainant. It complies with
Supplemental Rule 7 and is considered below.
On December 19, 2006 an Additional Submission was received from
Respondent. It also complies with
Supplemental Rule 7 and is dealt with below.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant trades as 4 inkjets.com. It
was founded in 1999. It has offices in
On August 3, 2004, Complainant filed an application for the service
mark 4INKJETS (“the “Mark”) with the United States Patent and Trademark
Office. The Mark was registered on
September 20, 2005 (Registration No. 2,998,115). Complainant asserts that its 4INKJETS service
mark is now among the most widely recognized brands in the Internet printer
supplies industry.
Complainant asserts that by 2005 its annual sales growth rate under the
Mark exceeded 50%, with sales increasing from $10.3 million in 2004 to $16.4
million in 2005.
Complainant states that it has devoted extensive resources to
advertising and marketing expenditures under the Mark, issuing press releases,
utilizing pay-per-click marketing on Google and other major search engines, and
partnering with popular online coupon distributors.
Complainant says it has received high user ratings and awards
recognizing its activities.
It submits that the disputed domain name contains Complainant’s exact
mark, with the substitution of the numeral “4” with the word “four”, the
deletion of the letter “s”, and the addition of the generic top-level domain
(gTLD) “.com.”
Complainant asserts that the domain name re-directs to the website
<yourtoner.com>, where Respondent is generating revenues through the sale
and distribution of the exact same products as Complainant, specifically
printer supplies. It contends that as a
direct competitor of Complainant, Respondent is benefiting from the goodwill
associated with Complainant’s Mark, thereby deriving a profit at its expense.
B. Respondent
In response, Respondent argues that it is
necessary to understand the particular industry and that to do business in it,
a domain name must include at least one of the words: Ink, Inkjet and Toner.
Respondent submits that Complainant is bound by
the same constraints and notes that <4ink.com> was registered 6 months
earlier than <4inkjet.com>. It
asks - what difference exists between Ink & Inkjet and submits that they
are much closer than “4 & for/four” and that no one in effect owns the
number “4” or the word “for”, “four”.
As to the alleged re-direction to
<yourtoner.com>, Respondent states that this domain and business does not
belong to it and it has nothing to do with such activities.
Respondent contends that Complainant
maliciously added incorrect information into the Complaint and intentionally
used it without verification.
C. Additional Submissions
Complainant
Complainant asserts that the Respondent has misstated the position by
saying it has “nothing to do with” the domain name <yourtoner.com>,
(“YourToner”). It notes that it is
undisputed that the domain name re-directs to YourToner – a website that offers
services virtually identical to Complainant’s services. YourToner is registered to Elostusland, Inc.
(a retailer of printer supplies and accessories), and Complainant submits that
it is highly unlikely that Respondent (a wholesaler of printer supplies and
accessories) would direct Internet traffic to a random competitor. It further argues that what is more likely –
is that there is a financial relationship between the two websites and
companies.
Complainant repeats its contention that the relevant issue is whether <fourinkjet.com>
is confusingly similar to 4INKJETS. It
submits that it is well established that merely replacing a number with its
word equivalent will not eliminate the confusing similarities between two
domain names. It argues that preying on
the strength of Complainant’s mark, Respondent
registered the exact phonetic equivalent of Complainant’s mark.
Complainant submits that with clear knowledge of its wrongdoing,
Respondent registered the Disputed Domain through an identity masking service
in an attempt to avoid detection, and with the hope of continuing its unlawful
activity. However, despite Respondent’s
efforts to hide its identity, Complainant in filing the original Complaint
forced the proxy registrar to remove the privacy shield, thus, unmasking Respondent
against its will. It submits that the
act of using a privacy shield to conceal the registrant’s identity provides
evidence of bad faith registration and use.
Respondent
Respondent goes into
detailed arguments about why Complainant's financial information should be
doubted. Much of this is speculation and
neither helpful nor relevant. As to the
alleged relationship between Respondent and <youtoner.com>, Respondent
points out that the two entities have different addresses, contact details etc.
and says that Complainant is engaged in no more than wild guessing and
presumptions.
As to the allegation
about being a direct competitor Respondent asserts that Complainant
sells products to end users via <4inkjets.com> but that Respondent
does not deal with end users and that end users cannot log in to its website
unless they have a password.
In terms of
Complainant's arguments based on earlier domain name decisions, Respondent
notes that the domain names involved had only ONE different spelling with
Complainant’s domain name and that these domain names may have taken advantage
of the phonetic similarities or misled people through mistyping. However, Respondent argues that but for “4”
and “four” - this would not occur in the present situation as to be misled
people would have to mistype at least four spellings and that this is unlikely
to occur. That is, as “4” and “four” are visually and linguistically different.
In terms of the
anonymous registration of the domain name, Respondent contends that when
registering a domain name through <godaddy.com>, customers are offered a
privacy service at no cost and that there was nothing wrong with accepting this
offer.
FINDINGS
For the reasons set out below the Panel finds that Complainant has
failed to establish the three elements required under the ICANN Policy, and
accordingly concludes that relief shall be denied.
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.
Identical or
Confusingly Similar
The primary question in this matter is whether
Complainant has protectable rights in a name or mark or whether the particular
term or words are directly descriptive or generic in the particular category
concerned.
Respondent submits that the domain name
<4ink.com> was registered some months earlier than Complainant's
<4inkjet.com> domain name and that essentially there is no material
difference between the words ink and inkjet and that these words, for example,
are closer than 4 and for/four. The
focus of Respondent’s argument is that the words are essentially common to the
class and should not be monopolised by any individual trader.
The Panel considers that
there is some merit in Respondents argument that there is some difference
between “4inkjet” and “fourinkjet.” In
the Panel's view the primary meaning of the first term “4” is “for” which is in
relatively common Internet usage. On the
other hand, the word “four” is not commonly used in this way and in the Panel's
view its primary significance is as an indication of the number “four”. For example, the domain name may bring to
mind a printer cartridge with four inkjet colours or simply four as opposed to
three inkjets.
Even if Complainant has
some rights in the specific rendition of its name, namely 4INKJETS, those rights only extend so far and
no further. The Panel considers that Respondent’s <fourinkjet.com> domain name is not
confusingly similar to Complainant’s 4INKJETS mark as the word “four” replaces
the number “4” in the mark. Further,
while not particularly material in itself, it is also noted that the disputed
domain name does not contain the “s” found at the end of the mark.
On this basis the Panel finds that these differences negate any confusing similarity between Complainant’s mark and Respondent’s disputed domain name, and declines to find in favor of Complainant under Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the complainant because the use of the complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the respondent's business, and the domain name is unlikely to cause confusion with the complainant's business).
Accordingly, Complainant fails to make out this ground.
Rights and Legitimate
Interests:
Given the descriptive connotations involved with the term
“four inkjets” and the existence of other similar domain names and the names of
other parties the Panel finds that Respondent is using the <fourinkjet.com> domain name for a bona
fide offering of goods and services under Policy ¶ 4(c)(i) as the website
that resolves from the disputed domain name offers various toner and inkjet
related goods.
Respondent
argues that it uses the disputed domain name to advertise these goods, and that
the disputed domain name is reflective of the products it offers, as is common
in the business. For evidence Respondent
provides other domain names containing the word “inkjet” or variations
thereof. In the Panel’s view there is
some merit in this point, for the reasons outlined above.
Given that the Panel accepts that Respondent is making a bona fide offering of goods and/or services, it finds for Respondent under Policy ¶ 4(c)(i). See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the respondent had rights and legitimate interests in the <aleads.com> domain name because it used the term “leads” in the generic sense to refer to the sale of leads over the Internet).
For these reasons it is found
that the ground is not made out.
Registration and Use
in Bad Faith:
Additionally, should the Panel find that Respondent is using
the <fourinkjet.com> domain name for a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), the Panel
may conclude that Respondent did not register the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat.
Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was
no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also
Pensacola Christian Coll.
v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has
found that Respondent has rights and interests in respect of [sic] the domain
name at issue, there is no need to decide the issue of bad faith.”).
Again,
for the reasons set out above it is found that the ground is not made out.
DECISION
Having failed to establish any of the three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Clive
Elliott, Panelist
Dated: December 22, 2006
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