Allegra Holdings, LLC v. Hyped Media, Domain By Proxy Inc., Signs Up Now Inc.
Case No. D2008-0539
1. The Parties
Complainant is Allegra Holdings, LLC, Northville, Michigan, United States of America, represented by DLA Piper US, LLP, United States of America.
Respondents are Hyped Media, Domains By Proxy, Inc., and Signs Up Now, Inc., Miami, Florida, United States of America, represented by Luis Bardisa, United States of America.
2. The Domain Name and Registrar
The disputed domain name <signsupnow.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008. On April 9, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 11, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 29, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Response was filed with the Center on May 23, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 10, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant provides custom sign design, sign manufacturing, and sign installation services through a network of franchisees located in the United States, Canada, and the United Kingdom. Complainant owns the domain name <signsnow.com> and holds three related trademarks: SIGNS NOW, SIGNS NOW (with accompanying design), and SIGNS NOW! (stylized). These three marks were registered with the United States Patent and Trademark Office in 1997, 1990, and 1991, respectively.
According to Respondent’s website, Respondent provides graphic design, sign creation, sign installation, web development, printing, and mailing services. Respondent has continuously provided these services since 1999 under the trade name SIGNS UP NOW. Respondent registered the disputed domain name in May 2005. Respondent’s business appears to be focused within the State of Florida, United States of America. Respondent’s target market consists of real estate agents in and around Miami, Florida, from Monroe County to Palm Beach County.
On October 18, 2007, Complainant sent a cease-and-desist letter demanding that Respondent discontinue its use of the mark, terminate its corporate registration, destroy all materials bearing the mark, and cancel the disputed domain name. On November 27, 2007, Respondent replied via email that they would not comply with Complainant’s demands. On December 5, 2007, Complainant again sent a letter requesting that Respondent cease using their trade name in accordance with a “reasonable phase-out” period, asserting that Complainant has 23 locations throughout Florida, thus making confusion likely. Respondent did not reply to Complainant’s second letter.
5. Parties’ Contentions
A. Complainant
Complainant contends as follows:
Rights in a mark
Complainant has rights in SIGNS NOW by virtue of its three federally registered trademarks and its continuous and extensive use of them since 1983 in connection with the promotion and sale of sign design, manufacturing, and installation services.1 Complainant contends that its SIGNS NOW mark had become “distinctive and well-known” long before Respondent registered the disputed domain name.
Likelihood of confusion
Respondent’s domain name entirely incorporates Complainant’s SIGNS NOW mark. The only difference between the parties’ names is Respondent’s addition of the generic top-level domain .com and the word “up.” The gTLD is without legal significance under the Policy and the descriptive word “up” exacerbates the likelihood of confusion because, like Respondent, Complainant also puts up signs.
No rights or legitimate interests
Respondent has never used the domain name in connection with a bona fide offering of goods and services because its business and its use of the disputed domain name compete with Complainant. As Respondent registered the disputed domain more than twenty years after Complainant’s first use of its marks, “there is no reasonable explanation for Respondent’s selection of the trade name and mark SIGNS UP NOW and the corresponding . . . domain name for use in connection with a sign business, other than Respondent[] [was] intentionally attempting to trade off” the good will in Complainant’s marks. This “intentional infringement,” including Respondent’s change of name from Signs Up to Signs Up Now, renders male fide all of Respondent’s use of its current name and takes Respondent out of any protection afforded by Paragraph 4(c)(ii) of the Policy.
Bad faith
Respondent’s intentional selection of Complainant’s mark for its domain name similarly demonstrates registration in bad faith, and promoting a competing business with at disputed domain name demonstrates use in bad faith. Respondent’s refusal to modify its site content following Complainant’s cease-and-desist letters is further evidence of bad faith.
B. Respondent
The Response consists of the following paragraph:
“The allegations made in the complaint go [sic] without merit due to the fact that no malice has ever been intended. We are a small company who has been defrauded by Robert Pacheco who initially registered the domain name. Upon Mr. Pacheco firing from the company, we were left with a company on the verge of bankruptcy. We at this time are in the process of trying to keep the company viable, while we try to reorganize. We ask that all considerations be given to us to keep the only thing that identifies in our market.”
6. Discussion and Findings
Paragraph 4(a) of the Policy states that Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof in establishing each of these elements. Unlike for example civil litigation in the United States of America, Respondent’s failure to reply directly to any of Complainant’s allegations in a UDRP proceeding does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview), paragraph 4.6, Consensus View.
A. Identical or Confusingly Similar to a Mark in which Complainant has Rights
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered marks, though this is not as automatic a conclusion as Complainant asserts. The real issue is whether the addition of the descriptive term “up” sufficiently distinguishes the two phrases. Addition of a single word or letter may in certain circumstances obviate confusion even when the dominant feature of the domain name is the complainant’s mark. See, e.g., Mr. Gianluca Bagnara v. Francesco de Leo,
WIPO Case No. D2008-0259; eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis,
WIPO Case No. D2004-0552. Particularly might that be so when, as here, both consist of common phrases and (contrary to Complainant’s contentions) the mark at issue is neither distinctive nor generally well-known. S.P. Cramer & Associates, Inc. d/b/a Cramer Fish Sciences v. Doug Demko / DomainsByProxy.com, WIPO Case No. D2007-1116. But unlike United States trademark law, in which many factors are examined to determine whether one mark is confusingly similar to another, prevailing Policy precedent limits a Panel’s analysis under paragraph 4(a)(i) of the Policy to a straightforward exercise in comparing similarity in sound, appearance, and ideas suggested by the mark with those elements of the disputed domain name. Giga-Byte Technology Co. Ltd. v. Alan Coughlin, doing business as Gigabyte, WIPO Case No. D2005-1229; Sharman License Holdings, Limited v. Gregg Smitherman,
WIPO Case No. D2004-0375. Although one can imagine situations where the addition of the word “up” to a word or phrase could substantially modify a mark, changing the meaning entirely, this is not one. Here the addition of the word “up” to the mark SIGNS NOW does not substantially modify the entirety of the meaning or impression a consumer will receive. If anything, existence of Complainant’s ability to put up signs will only make confusion more likely. See Yahoo! Inc. and Overture Services, Inc. v. Registrant, a/k/a Gary Lam et al.,WIPO Case No. D2004-0896.
B. Rights or Legitimate Interests; Bad Faith
Complainant acknowledges that Respondent has used SIGNS UP NOW as its business name since 1999 or even earlier, more than six years prior to registration of the disputed domain name and eight years before Complainant’s first cease-and-desist letter. As Complainant appears also to acknowledge by reason of its contentions under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, unless this entire usage has somehow been tainted, Respondent comes within the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the Policy, as Respondent has concededly “as a . . . business. . . been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights,” see Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith,
WIPO Case No. D2007-1033; and “before any notice . . . of the dispute, [Respondent has] used . . . the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
Complainant asks the Panel to find that taint entirely from conclusionary pleading, speculation, and application of a concept from United States trademark law not generally applied by panels under the Policy.
Complainant contends that there is no “reasonable explanation” for Respondent’s choice of business name and mark other than intentionally to trade off Complainant’s good will. The Panel can think of several, the most obvious of which is use of a catchy yet common phrase that describes its business. When the mark and domain name at issue are descriptive, panels under the Policy have almost uniformly required a complainant to prove respondent’s actual knowledge of the mark and intentional targeting of complainant.2 Such proof may either be direct or by establishing facts from which the panel may reasonably infer such knowledge3. Complainant’s counsel pleads the desired conclusion, as quoted above, but sets forth no facts beyond registration of its own trademarks from which the Panel might conclude or infer such knowledge and intention. The available facts strongly suggest the contrary: the mark at issue is an everyday phrase rather than a distinctive or well-known mark, Respondent’s apparent years of use for a legitimate business accurately described by the disputed domain name, no prior dealings between the parties, Respondent’s limited market area, little if any apparent competition between the parties, no obvious imitation of Complainant’s website, and an absence of the ordinary indicia of cybersquatting. There is no proof here from which the Panel might infer actual knowledge.
That leaves only Complainant’s indirect resort to the doctrine of constructive notice. This doctrine has developed under United States of America trademark law and in certain circumstances creates a presumption that the public is aware of registered trademarks. Panels under the Policy have not generally embraced this doctrine; the WIPO Overview, paragraph 3.4, states a Consensus View that “Most panels have declined to introduce the concept of constructive notice into the UDRP.” The occasional exceptions to this Consensus View have tended to occur in cases in conjunction with other circumstances that strongly suggested actual knowledge: a famous or distinctive mark, a mark not in any way descriptive of the goods or services offered, typosquatting – in short, other evidence of cybersquatting. As noted there are no such cybersquatting indicators in this case, and accordingly this Panel will not apply a doctrine of constructive notice here.
Based on the evidence before the Panel, Complainant has failed to establish that Respondent lacks a legitimate interest in the disputed domain name or that the domain name was registered in bad faith.
C. Reverse Domain Name Hijacking
Taken as a whole, the Complaint may accurately be summarized as Complainant’s assertion that merely because of its registered trademarks in common and descriptive phrases it is entitled to transfer of any domain name incorporating that phrase for a similar business, or that because of its priority of use of a common and descriptive phrase for a particular business, Complainant is somehow more entitled to the disputed domain name than Respondent. Neither of these notions finds any support in the language of the Policy or Policy precedent. Such an approach, coupled with (a) statements in the text of the Complaint acknowledging several years’ use by Respondent of the disputed domain name for a legitimate business, (b) no proof of anything beyond existence of trademarks and cease-and-desist letters, and (c) seemingly ignoring a Consensus View of Policy precedent necessary to its case, approaches the bad faith justifying a finding of reverse domain name hijacking. See Rules, paragraphs 1, 15(e); see also Liquid Nutrition v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598. The only thing that gives the Panel pause in entering such a finding here is that it may, perversely, encourage further proceedings such as litigation by Complainant against Respondent. Suffice it to say that in this Panel’s view the Complainant was ill advised to bring this proceeding on the facts demonstrated in the Complaint.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon Sole Panelist
Date: June 19, 2008
1 Complainant asserts, without supporting evidence, that it has spent over $4 million dollars in advertising since 2003, utilizing numerous media outlets, including newspapers, radio, television, the internet, and trade advertisement, and that as a result, Complainant, through its franchisees, has realized over $60 million dollars in sales each year for the past several years, with over $78 million dollars in sales in 2007.
2 See Grundfos A/S v. Texas International Property Associates,
WIPO Case No. D2007-1448 (quoting The Landmark Group v. Digimedia.com, L.P., NAF Claim No. 0285459; Advanced Drivers Educational Products and Training v. MDN, Inc., (Marchex), NAF Case No. 0567039).
