Reef Industries, Inc. v. Moose Lake Products Company, Inc.

[Indexed as: Reef Industries v. Moose Lake Products]
[Indexed as: rollasign.com]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0041
Commenced: 9 February 2000
Judgment: 20 March 2000

Presiding Panelist: R. Thompson

Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Confusingly similar - Bad faith registration and Bad faith use.

Complainant was registrant of United States trademark.  Registrant registered the domain name, ROLLASIGN.COM.  Complainant alleged that its registered mark and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith. 

Held, Name Transferred to Complainant.

The Final Report of the WIPO Internet Domain Name Process states that if the parties to the procedure are resident in one country, the registrar in which the domain was registered is located in the same country, and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision makers to refer to the law of the country concerned in applying the definition of what became paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy.  Thus, this Panelist may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden. 

Complainant has successfully proven each of the three elements in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy.

The domain name and the trademark are confusingly similar.  The only difference between the ROLLASIGN.COM domain name and the ROLL A SIGN trademark are the spaces between words, a minor distinction which does not change the likelihood for confusion.

It is uncontested that Respondent has no legitimate interests in respect of the domain name.

Respondent has made products competitive with those sold by Complainant under the ROLL A SIGN mark.  Respondent has used the domain name ROLLASIGN.COM in bad faith by preventing Complainant from registering ROLLASIGN.COM for legitimate use in connection with its trademarked products.  Also, the fact that Respondent did not provide a Response leads to the conclusion that Respondent is using, or has used, <rollasign.com> as a website or domain address "primarily for the purpose of disrupting the business of a competitor.  Furthermore, by not responding to the Complaint filed under the Network Solutions Domain Name Dispute Policy,  there is a clear indication of bad faith use. 

Policies referred to

Uniform Domain Name Dispute resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Network Solutions, Inc. Domain Name Registration Agreement Version Number 4.0, effective March 27, 1997

Cases referred to
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Panel Decision referred to
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Text Cited

The Final Report of the WIPO Internet Domain Name Process, adopted April 30, 1999

Thompson, Panelist: - 

1. The Parties

The complainant is Reef Industries, Inc., a Delaware, U.S. corporation with a principal place of business of 9209 Almeda-Genoa, P.O. Box 750250, Houston, Texas 77275-0250, U.S.A. The respondent is Moose Lake Products Company, Inc., 6209 Constitution Drive, Fort Wayne, Indiana 46804, the registrant of the domain name rollasign.com.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is rollasign.com, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

3. Procedural History

A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 7, 2000. A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the complainant (facsimile and e-mail) and respondent (facsimile, e-mail and post/courier), dated February 9, 2000.

On February 8, 2000 a Verification Response was received from the registrar, NSI which served to: (1) confirm that Network Solutions was in receipt of the Complaint submitted by Complainant; (2) confirm Network Solutions is the registrar of the domain name registration; (3) confirm that Moose Lake Products Company, Inc. is the current registrant of the ROLLASIGN.COM domain name registration; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es) available in the registrar's WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that Network Solutions' 4.0 Service Agreement was in effect at the time of the original registration of the domain name; (6) provide a copy of the domain name dispute policy (if different from ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy")) that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the policy. 

The February 8, 2000 Verification Response from Network Solutions, Inc. ("NSI") confirmed by reply e-mail that the domain name <rollasign.com> is registered with NSI and that the respondent, Moose Lake Products Company, Inc., is the current registrant of that domain name.

NSI advised that the policy in effect at the time of the original registration of the domain name at issue provided that:

NETWORK SOLUTIONS, INC.

DOMAIN NAME REGISTRATION AGREEMENT

A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI's domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI's Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.
* * * * *
C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be found by NSI's current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."

D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant's maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant's continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.

E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.

* * * * *

Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.

Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]

NSI also confirmed that the domain name ROLLASIGN.COM is on "hold" status.

A Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant.

No formal deficiencies having been recorded and on February 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, NSI and ICANN), setting a deadline of February 28, 2000, by which the respondent could make a Response to the Complaint. The Commencement Notification was transmitted to the respondent by e-mail to the e-mail address indicated in the Complaint and specified in NSI's Response Verification. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the addresses listed in the Complaint and confirmed by NSI. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

On February 29, 2000, having received no Response from the designated respondent, the WIPO Center transmitted to the parties by e-mail a Notification of Respondent Default. No Response or other document has been received by the WIPO Center or the Administrative Panel from the respondent since the Notification of Default.

On March 3, 2000, in view of the complainant's designation of a single panelist, the WIPO Center invited Roderick Thompson to serve as a panelist in Case No. D2000-0041, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. 

Having received Roderick Thompson's Statement of Acceptance and Declaration of Impartiality and Independence, on March 3, 2000, the WIPO Center sent to the parties a Notification of Panelist Appointment, in which Roderick Thompson was formally appointed as the Sole Panelist. The Projected Decision Date as determined by the WIPO Center Transmission of Case file to Administrative Panel, transmitted to the parties on March 3, 2000, was March 20, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules. 

Respondent has not made a formal Response to the Complaint. This Panelist, therefore, finds that respondent received notice of the complaint and failed to submit a response as required by Rule 5. Respondent is, therefore, in default and, under Rule 14(a), this Panelist shall "proceed to a decision on the complaint." Accordingly, this Panelist shall proceed to a decision based on the allegations in the complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.

4. Factual Background

The complainant has provided evidence of the registration of the following marks:

1. Trademark - ROLL A SIGN, for plastic banners. Class 20, registered for a term of 20 years from December 8, 1998.

Complaint, Annex C.

The trademark claims a first use of October, 1985. Id. Complainant uses the mark, ROLL A SIGN, for the sale of plastic banners. Complaint 12.

The respondent is the current registrant of the domain name <rollasign.com>. E-mail dated February 8, 2000, from NSI to the WIPO Center Case Administrator. The WHOIS database shows that respondent is also the Administrative Contact, Technical Contact and Zone Contact for the domain name rollasign.com. Complaint, Annex A. The WHOIS record of the domain ROLLASIGN was created on March 27, 1997 and last updated on February 12, 1998. Id.

5. Parties' Contentions

A. Complainant

Complainant contends; 1) that respondent has registered as a domain name a mark which is identical (except for spacing) to the trademark registered and used by complainant; 2) that respondent has no rights or legitimate interests in respect to the domain name and is not authorized or licensed to use complainant's mark ROLL A SIGN; and 3) that the domain name was registered and was being used in bad faith. On information and belief, respondent has made products competitive with those sold by complainant under the ROLL A SIGN mark. By obtaining the domain name ROLLASIGN.COM, respondent has used it in bad faith and prevented complainant from registering ROLLASIGN.COM for legitimate use in connection with its trademarked products. The domain name is on hold until February 14, 200, at which time it will reactivate unless this action or court action is taken by complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint and is in default.

6. Discussion and Findings

A. Applicable Rules and Principles of Law.

Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist shall 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." Here, the complainant, the respondent, and the registrar are all domiciled in the United States. United States' courts have recent experience with similar disputes. The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panelist, stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, this Panelist may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights; and,

(ii) that the respondent has no legitimate interests in respect of the domain name; and,

(iii) the domain name has been registered and used in bad faith.

B. Application of Paragraph 4(a)(iii) to the Facts.

The domain name rollasign.com is nearly identical to the trademark registered and used by complainant, ROLL A SIGN. The only difference between the rollasign.com domain name and the ROLL A SIGN trademark are the spaces between words, a minor distinction which does not change the likelihood for confusion. The domain name and the trademark are, indeed, confusingly similar. As complainant has submitted (1) a Certificate of Registration No. 2,208,240 for the mark ROLL A SIGN registered with the U.S. Patent and Trademark Principal Register (Complain, Annex C) and, (2) an NSI WHOIS database search showing respondent as the rollasign.com domain name registrant (Complaint, Annex A), and the allegations of the Complaint are undisputed, complainant has satisfied its burden under Paragraph 4 (a)(i). It is also uncontested that respondent has no rights or legitimate interests in respect of the domain name, satisfying the requirement of Paragraph 4 (a)(ii). See Complaint 11.2. Panelist concludes that the name has been registered and used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.

The Complaint alleges that "[t]he domain name was registered and was being used in bad faith. On information and belief, respondent has made products competitive with those sold by complainant under the ROLL A SIGN mark. By obtaining the domain name ROLLASIGN.COM, respondent has used it in bad faith and prevented complainant from registering ROLLASIGN.COM for legitimate use in connection with its trademarked products. The domain name is on hold until February 14, 200, at which time it will reactivate unless this action or court action is taken by complainant." Complaint, 11.3. Although no other evidence is provided which supports this allegation, the fact that respondent has not provided a Response leads this Panelist to conclude that there is sufficient allegation to support the assumption that respondent is using, or has used, <rollasign.com> as a website or domain name address "primarily for the purpose of disrupting the business of a competitor," thus satisfying the evidence requirement of Paragraph 4 (b)(iii). Further support for a finding of bad faith use is provided by the allegation that "[t]he actions of the Respondent in not answering the Complaint filed under the Network Solutions Domain Name Dispute Policy is clear indication of bad faith. At this time Complainant cannot acquire the domain name. Complainant knows of no legitimate use of its mark ROLL A SIGN by the Respondent." Complaint, 12. Complainant has sought to obtain the transfer of ROLLASIGN.COM first in accordance with the NSI Domain Name Dispute Policy procedure and now under the Uniform Domain Name Dispute Resolution Policy. Respondent has ignored both proceedings.

This Panelist therefore concludes that the circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph  of the Policy and applicable legal principles.

7. Decision

For all of the foregoing reasons, this Panelist decides that the domain name registered by respondent is identical or confusingly similar to the trademark in which the complainant has rights, that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4i of the Policy, this Panelist requires that the registration of the domain name rollasign.com be transferred to the complainant. 

Roderick Thompson
Panelist
Dated: March 20, 2000

Domain Name Transferred