Complainant is Houston Wire & Cable Company of Houston, Texas, United States of America, represented by Fibbe Law Office, United States of America.
Respondent is Elite Sales, Inc. of Miami, Florida, United States of America, represented by Lewis & Lin, LLC, United States of America.
The disputed domain names <southernwirecompany.com> and <southernwireinc.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2012. On September 28, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On September 28, 2012, the Registrar transmitted by e-mail 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” or “UDRP”), 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 October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response October 23, 2012. The Response was filed with the Center October 23, 2012.
The Center received supplemental filings from Complainant and Respondent on November 5, 2012 and November 6, 2012 respectively.
The Center appointed Robert A. Badgley, Will Hill Tankersley Jr. and Diane Cabell as panelists in this matter on November 13, 2012. The Panel finds that it was properly constituted. Each member of 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.
In its discretion, the Panel decided to consider the supplemental filings by the parties according to paragraphs 10 and 12 of the Rules.
Complainant manufactures and sells wire rope and rigging products. According to the Complaint, Complainant has been selling its wares under the unregistered trademark SOUTHERN WIRE since 1972 in the United States. In addition, Complainant has maintained since 1998 a website at the domain name <southernwire.com> to market its products. Complainant alleges that its Southern Wire division has annual revenues in excess of USD 35 million, and that it spends USD 10,000 a year in marketing under the SOUTHERN WIRE mark.
On January 9, 2012, Complainant filed an application with the United States Patent and Trademark Office (“USPTO”) to register the mark SOUTHERN WIRE in connection with “distributorship services in the field of chain, rigging products, wire rope and cordage.” In the USPTO application, which is still pending, Complainant claimed a date of first use in commerce of 1972.
Respondent claims that it began operating in 1973 as an exporter of steel goods, and today it is a leading importer and wholesale distributor of wire rope, cable strand, chain and hardware. Respondent allegedly has USD 30 million in annual revenues. Like Complainant, Respondent is a member of the Associated Wire Rope Fabricators trade organization.
Respondent registered the Domain Names <southernwireinc.com> and <southernwirecompany.com> on February 11, 2011 and June 11, 2011, respectively. According to Respondent, in early 2011 it commenced a “strategy of purchasing hundreds of Generic or descriptive domain names describing the types of products that it sells.” Respondent now holds 700 such domain names. Respondent engaged a firm called Edit X to locate and register the allegedly generic domain names, and Respondent “had no role in choosing which specific domain names Edit X registered.” Edit X also created websites for each of the allegedly generic domain names. There is evidence in the record suggesting that “Edit X” is defunct, and has been for several years.
Respondent cites as examples of the allegedly innocuous domain names in its portfolio <phoenixwirerope.com>, <northwestwirerope.com>, and <westwirerope.com>. Respondent did not cite, however, other domain names in its collection, which were identified by Complainant in its supplemental filing. These include <landmanwire.com> and <swagelocks.com>. As Complainant notes, there are companies in their industry called Landmann Wire Rope Products, Inc. and Swagelok.
In a prior case decided under the Policy, the panel ordered that the domain name <landmanwire.com> be transferred to the complainant (Landmann Wire Rope Products, Inc.), and found Respondent in bad faith. (See Landmann Wire Rope Products, Inc. v. Elite Sales, Inc., WIPO Case No. D2011-2150.) Similarly, in another case decided under the Policy, Respondent was found in bad faith and the domain name <swagelocks.com> was ordered to be transferred to the complainant. (See Swagelok Company v. Elite Sales, Inc., NAF Case No. FA1112001421137)
At the time of this decision, this Panel notes that the websites to which the Domain Names resolve feature, at the top of the home page, the name “Southern Wire Rope Corporation™” and “Southern Wire Company™.” The web pages provide information regarding various wire and rope products, and direct users to Respondent’s website or phone number.
Respondent’s principal has denied personal knowledge of Complainant or its business prior to February 2011. Complainant submits, in its supplemental filing, an affidavit of the current president of its Southern Wire division, in which the affiant asserts that Respondent has sold merchandise to Complainant on several occasions over the past three years. The affiant also states that his division and Respondent compete with each other in the marketplace on almost a daily basis.
Attached to the affidavit of the Southern Wire president is a full-page advertisement in the June/July 2008 edition of the trade magazine “Wire Rope Exchange”. The ad states prominently “Southern Wire is the best bet in Las Vegas.” The ad then cites a few of Complainant’s locations, provides a toll-free telephone number, and cites Complainant’s main website “www.southernwire.com”. Also featured in this magazine, four pages later, is an ad for Respondent’s business.
In March 2011, Respondent registered as a subsidiary the Florida Corporation Southern Wire, Inc. as a business whose purpose is the sale of wire rope. Complainant has provided evidence that, according to the Florida Secretary of State, the company Southern Wire, Inc. currently has an “inactive” status.
Most of the salient factual bases for the Complaint are set forth in the “Factual Background” section above or will be taken up at the appropriate point in the “Discussion and Findings” section below. In sum, Complainant alleges that it has unregistered trademark rights in the mark SOUTHERN WIRE, that the Domain Names are confusingly similar to that mark, that Respondent lacks rights or legitimate interests in respect of the Domain Names, and that Respondent has registered and is using the Domain Names in bad faith.
Respondent denies bad faith, asserts that it has a legitimate interest in the Domain Names, and disputes Complainant’s allegation that it has proven any trademark rights here. Specifically, Respondent points out that Complainant has no registered trademark for SOUTHERN WIRE, and that Complainant has failed to provide evidence of its use of that alleged mark in commerce at any time prior to Respondent’s registration of the Domain Names.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Complainant has barely proven its unregistered trademark rights in SOUTHERN WIRE. The Panel believes this is a fairly straightforward case of cybersquatting, but Complainant here nearly failed to clear the lowest hurdle under the Policy. It is alleged here, in a Complaint duly certified as being “complete and accurate,” that Complainant has been using the mark SOUTHERN WIRE in commerce since 1972. This same claim is made on Complainant’s USPTO application, which application is sworn under penalty of perjury. Moreover, in the supplemental filing, Complainant attaches a 2008 full-page magazine advertisement featuring the mark SOUTHERN WIRE. Finally, Complainant alleged that it has used the domain name <southernwire.com> since 1998 to host a website featuring its wares.
Consequently, the Panel accepts the foregoing as evidence of use of the SOUTHERN WIRE mark in commerce at times predating the registration of the Domain Names. However, the Panel would caution against such a threadbare presentation of evidence of use when a complainant is relying on unregistered rights in an alleged mark.
Respondent has argued that Complainant failed to prove its use of the SOUTHERN WIRE mark, but Respondent did not actually argue that Complainant has not used that mark. This may seem like a fine distinction, but here it is significant in view of the authorities cited by Respondent in its Response. In Fort Lee Chamber of Commerce v. Carmine A. DeMarco, WIPO Case No. D2002-0291, the panel observed:
“Complainant has failed to present any evidence of secondary meaning, except for the bald allegations of its complaint. Complainant merely alleges that trademarks have been used continuously since 1960…but has included no exhibits or affidavits to support its claim.”
The foregoing text is included in the Response. However, the panel in Fort Lee Chamber of Commerce v. Carmine A. DeMarco, supra also stated:
“The allegations of the Complaint are supported by certification…Perhaps allegations made on that basis, if undisputed, might be sufficient to make a prima facie case. However, here those allegations are disputed. Respondent … denies that Complainant has made trademark use.”
As noted above, Respondent challenges the adequacy of Complainant’s evidence, but does not actually allege that Complainant has not made use of the SOUTHERN WIRE mark in commerce. Moreover, as noted above, Complainant provided a full-page magazine ad that it ran in a 2008 edition of a trade periodical. Again, Complainant can and should have provided this evidence (and probably more) in its initial filings, rather than running the risk of this evidence being disregarded or stricken (which was well within the Panel’s discretion).
Having concluded that Complainant has unregistered trademark rights in the mark SOUTHERN WIRE for the purpose of the Policy, the Panel has no difficulty finding that the Domain Names are confusingly similar to that mark. The addition of the term “inc” or “company” to the mark in the Second-Level Domain does not diminish the confusing similarity between the mark and the Domain Names. See, e.g., SGS Société Générale de Surveillance v. Inspectorate, WIPO Case No. D2000-0025 (domain name <sgsgroup.net> found confusingly similar to SGS mark).
Accordingly, the Panel finds that Policy, paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in each of the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks any rights or legitimate interests in respect of the Domain Names. Respondent deals in wire and related goods under its company name “Elite Sales”, and its effort to set up a Florida Company under the name Southern Wire, Inc. appears to be a pretext. As noted above, that company is not even active in Florida, its state of incorporation. In addition, this Panel notes that Respondent has provided no evidence that the fledging (and now inactive) Florida corporation Southern Wire, Inc. has done anything at all.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Names, or has made substantial preparations to use the Domain Names in connection with a bona fide offering of goods or services. Rather, the Domain Names misleadingly create the impression that they are associated with Complainant, but then provide links to Respondent’s business, which is a competitor of Complainant.
Accordingly, the Panel finds that Policy, paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of each of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under Policy paragraphs 4(b)(ii), 4(b)(iii), and 4(b)(iv). The Panel begins by concluding that the alleged acts of “Edit X” are to be imputed to Respondent under basic principles of agency law. Respondent cannot “farm out” its domain name registration activities and thereby evade all consequences of that delegation.
As noted above, Respondent claims that its registration of a portfolio of domain names was innocuous because these domain names were generic or descriptive in nature. This may hold true for some of the domain names in the collection, but it does not withstand scrutiny for domain names such as <landmanwire.com> and <swagelocks.com>. As noted above, Respondent has been held in bad faith under the Policy with respect to those domain names. For this reason, the Panel holds Respondent in bad faith under Policy paragraph 4(b)(ii), with the pattern of preclusive registrations established by the other decisions under the Policy cited earlier.
Respondent is in bad faith under Policy, paragraph 4(b)(iii) as well. It is obvious from the record that Complainant and Respondent are competitors. They even belong to the same trade association, and there is undisputed evidence in the record that they compete for bids. Respondent uses the Domain Names, which contain the SOUTHERN WIRE mark, to lure the Internet user to Respondent’s website. For this reason, Respondent is also in violation of Policy, paragraph 4(b)(iv). The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between Complainant’s mark and the Domain Names.
In sum, Respondent’s overall story simply requires belief in coincidence to almost a supernatural degree. The Panel does not find Respondent credible.
Accordingly, the Panel finds that Policy, paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <southernwirecompany.com> and <southernwireinc.com> be transferred to Complainant.
Robert A. Badgley
Presiding Panelist
Will Hill Tankersley Jr.
Panelist
Diane Cabell
Panelist
Dated: November 26, 2012
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