The Diller Corporation c/o Formica Corporation v. Texas International Property Associates
Case No. D2008-0628
1. The Parties
Complainant is The Diller Corporation c/o Formica Corporation of Cincinnati, Ohio, United States of America.
Respondent is Texas International Property Associates of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <formicastone.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On May 9, 2008, Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2008. The Response was filed with the Center on June 17, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 23, 2008. The Panel finds that it was properly constituted. The Panel has submitted the 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 is a surfacing company that designs, manufactures and distributes a range of surfacing products for commercial and residential applications on a global basis. Complainant is headquartered in Cincinnati, Ohio, United States of America and has offices in North America, Europe and Asia. In 2006 Complainant and its affiliates generated more than USD 750 million in revenue. Since 2002, Complainant has spent more than USD 115 million in worldwide promotion of its trademarked products.
Complainant has registered trademarks consisting of or incorporating its FORMICA mark. Complaint, Annex 2. The earliest registration dates to June 4, 1946 and shows a first use in commerce in the year 1928. Id. Complainant operates a web site to which its domain name <formica.com> resolves. Complaint, Annex 3.
Respondent is a d/b/a for Dauben, Inc., a corporation of which Joseph “Joey” Dauben is president, allegedly located at 4041 W. Wheatland, Suite 165-417, Dallas, Texas 75237 USA. Microsoft Corporation vs. Dauben, Inc. d/b/a Texas International Property Associates, Civil Action No. 3:08-CV-0098-L, United States District Court for the Northern District of Texas, Dallas Division, Defendant’s Initial Disclosures, served on April 8, 2008. Respondent registered the domain name at issue on June 3, 2005. Complaint, Annex 4.
Respondent uses the domain name at issue to resolve to a parking site with links to direct competitors of Complainant. Complaint, Annexes 5 and 6. On March 3, 2008, Complainant sent Respondent a cease and desist letter. Complaint, Annex 9. On March 18, 2008, Respondent replied, stating that Complainant’s letter had been “forwarded to our legal representative and you should hear from them within 15-21 days of the date of this email.” Complaint, Annex 10. Having not received a response, Complainant sent a reminder letter on April 8, 2008. Complaint, Annex 11. Still not having received a response, Complainant initiated the present proceeding.1
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is confusingly similar to Complainant’s FORMICA marks, that there has never been any relationship between Complainant and Respondent and that Respondent has not been authorized in any way to use Complainant’s mark, and therefore has no rights or legitimate interests in respect of such marks, and that respondent has registered and is using the mark in bad faith, in that Respondent has used the domain name at issue to resolve to a parking site at which links to parties offering directly competitive products and services are present and that Respondent is generating pay per click revenue from this activity.
B. Respondent
Rather than sum up Respondent’s contentions,2 the Panel quotes from the template Response:
After receipt of a cease and desist letter, Respondent investigated Complainant’s claims and was willing to transfer the disputed domains but was unable to effectuate the transfer. Since Respondent was willing to transfer prior to today’s date, Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel 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.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
2) that Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s mark to which Respondent has affixed the common descriptive term “stone”. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. Nokiagirls.com a.k.a IBCC,WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up,
WIPO Case No. D2000-0104 (<eautomotive.com>). The Panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and notes in that regard the lack of relationship between the parties or any authorization to use Complainant’s marks. Respondent has consented to transfer of the registration of the domain name at issue and has not asserted any rights or legitimate interests in respect of the domain name at issue, which the Panel takes as an acknowledgment that Respondent has no rights or legitimate interests in respect of the domain name at issue. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent is a serial cybersquatter, as in more than 40 UDRP cases involving Respondent, all of which found against Respondent. Having recently decided a number of cases involving Respondent, the Panelist is aware of Respondent’s recidivist bad faith conduct. In all of these recent cases Respondent effectively used a template response, substituting names and dates that were unique to a particular case. Each case included the same language and case citations in consenting to the transfer of the domain name without admitting that Respondent acted in bad faith and without conceding any of the three elements which must be established under the policy. Respondent consistently requests that the transfer be compelled without consideration of the three factors which must be found to compel transfer or cancellation. See, e.g., The President and Fellows of Harvard College v. Texas International Intellectual Property – NA NA,
WIPO Case No. D2008-0597. This Panel cannot condone Respondent’s conduct in such manner. In the present case, as in all the others involving Respondent with which this Panel has dealt, Respondent has acted in bad faith.
The use of the domain name on a parking site with direct links to Complainant’s competitors indicates that Respondent must have known of Complainant and the services that Complainant offered.
Respondent is using the domain name at issue to resolve to a web site at which links to Complainant’s competitors are listed. Respondent is obviously deriving income from such links on a pay-per-click basis. This is a violation of paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. ACCOR v. Steve Terry/North West Enterprise, Inc.,
WIPO Case No. D2006-0649.
Finally, Respondent’s perpetual offer to transfer the domain name and then its claimed inability to do so can be construed as nothing less than an attempt to delay the inevitable transfer so that Respondent can continue to generate revenue. This conduct is particularly repugnant.
Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <formicastone.com>, be transferred to Complainant.
M. Scott Donahey Sole Panelist
Dated: June 30, 2008
1 These delaying tactics are typical of Respondent’s conduct in the numerous cases that have been filed against Respondent under the UDRP. See President and Fellows of Harvard College v. Texas International Property Associates – NA NA,
WIPO Case No. D2008-0597.
2 Respondent has filed its template answer that it uses in virtually all of the cases filed against it. (At time of the drafting of the Complaint in this matter, Respondent had been the respondent party in 108 cases filed with WIPO or with the National Arbitration Forum). The template response changes only the names of the parties and the dates of activities, but includes the same arguments and case citations.
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