WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nimlok Company v. Chris Griffin
Case No. D2003-0168
1. The Parties
The Complainant is Nimlok Company of Niles, Illinois, United States of America, represented by Sachnoff & Weaver of United States of America.
The Respondent is Chris Griffin of Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nimlokdisplays.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on March 1, 2003. One original and four hard copies of the Complaint were received by the Center on March 3, 2003. On March 5, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On March 5, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, technical and zone contact. 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 the Respondent of the Complaint, and the proceedings commenced on March 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2003. The Response was filed with the Center on April 1, 2003.
The Center appointed Bruce E. O'Connor as the sole panelist in this matter on April 15, 2003. 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
The following facts appear from the Complaint and supporting documents, and are not challenged by Respondent.
Complainant has manufactured and sold exhibits, display stands, and various parts and fixtures for such exhibits and display stands since 1981 throughout the world. In conjunction with its business, Complainant uses the name "Nimlok Company" and the trademark NIMLOK. That trademark is protected by a U.S. trademark registration now owned by Complainant, which registration issued in 1981 and renewed in 2001. The rights of Complainant under that registration are "incontestable" within the meaning of the U.S. Trademark Act.
Complainant also owns and is using various domain names including its trademark NIMLOK, including <nimlok.com> and <nimlokdesigners.com>.
Respondent registered the domain name <nimlokdisplays.com> on June 21, 2002. The domain name in dispute is used as part of a URL that directs a person using that address to a website operated by the Respondent. At that website, Respondent is operating a business identified by the name "Trade Show Supply" that sells various goods and services, including exhibits and display stands.
5. Parties' Contentions
Complainant makes the following allegations and argues the following points. The factual allegations are generally accepted as true (except as noted) in light of the supporting documents to the Complaint and in the absence of any factual allegations to the contrary in the Response.
1. The domain name is identical or confusingly similar to the Complainant's trademark and name.
Complainant contends that the name and mark NIMLOK are well known in the industry, and that the domain name in dispute incorporates that name and mark in its entirety except with the addition of "displays" (and the generic ".com" top-level domain). Although Complainant does not clearly articulate this position, it appears to contend that the addition of the descriptive term "displays" to Complainant's name and mark is not sufficient to distinguish the domain name in dispute from that name and mark. In support for this position, Complainant cites a number of prior WIPO decisions in which the domain names consisted of the name and mark of Complainant and a descriptive or generic term that related to the business carried out by Complainant using that name and mark.
2. The Respondent has no rights or legitimate interest in respect of the domain name.
Complainant contends that the Respondent registered the domain name more than 20 years after Complainant had registered and used its name and mark.
Complainant further contends that the exhibit and display stands and related parts and fixtures sold by Respondent at his website using the name and mark "Trade Show Supply" are not manufactured, sold, or endorsed, or otherwise connected to Complainant.
Complainant contends that these activities of Respondent deceive consumers as to the relationship of the products sold by Respondent on his website to Complainant and its products.
Complainant contends that because it is well-known in the industry, no actual or contemplated bona fide or legitimate use of the domain name in dispute could be claimed by Respondent as a consequence.
Complainant contends that Respondent also has not been commonly known by the domain name in dispute, but rather by the name "Trade Show Supply" (and by the domain name <tradeshowsupply.com>, which also directs the user to a website seemingly identical to that accessed using the domain name in dispute).
Complainant also contends that Respondent failed to respond, in any way, to a cease and desist letter sent by Complainant on November 26, 2002.
Complainant contends that Respondent is not making legitimate non-commercial use of the domain name in dispute, but rather is using the name and mark of the Complainant to sell products that are not manufactured by, endorsed by, supplied by, or affiliated, in any way, with Complainant.
Complainant also contends that consumers visiting Respondent's website may wrongly believe that Respondent and its products and services are associated with Complainant, due to the similarity between the respective products and services of Complainant and Respondent.
Finally, Complainant contends (without any factual support) that Respondent's use of the domain name in question has tarnished the name and mark NIMLOK, as indicated by calls that Complainant has received from various of its distributors inquiring about and questioning the relationship between the goods sold on the website of Respondent and those sold by Complainant.
3. The domain name was registered and is being used in bad faith.
Complainant contends that "the use of a domain name to intentionally attempt to attract Internet users to a Respondent's website by creating a likelihood of confusion with Complainant's mark, where such confusion may accrue to the Respondent if the products or services it directly or indirectly offers for sale on its website are purchased, constitutes registration and use of a domain name in bad faith." Complainant's other contentions simply mirror those already made.
In his Response, the Respondent provides no supporting documents for the arguments made. The factual allegations of those arguments, however, will be treated as true (except as noted), for the purposes of this decision.
1. The domain name is not identical or confusingly similar to the Complainant's trademark and name.
Respondent contends that the domain name in dispute is not similar to the trademark and service mark NIMLOK COMPANY.
Respondent further contends that Complainant is a manufacturer, and that the domain name in dispute describes the brand of a display a customer might, can, or does own.
Respondent contends that his company, using the name "Trade Show Supply", rents, sells, installs, dismantles, and refurbishes displays of over 20 manufacturers, and that his company is not a manufacturer of displays, but is in the business previously described.
Respondent contends that it is common practice for an owner of a display purchased from Complainant to hire his company to install and dismantle that display at a trade show.
Respondent finally contends that it is common practice for an owner of a display manufactured by Complainant to want that display to be repaired by Respondent (presumably), and that Complainant is not in the repair and refurbishment business.
2. Respondent has a legitimate interest in respect of the domain name.
Respondent contends that his company, using the name "Trade Show Supply", never refers to any specific brand names on its website, and that the company services, rents, installs, dismantles, and refurbishes all makes and models of displays according to individual owner preferences.
Respondent contends that it has acquired no rights in any trademarks or service marks of any of the manufacturers whose products it services, and that it is not knowingly or willingly engaged in any activity to tarnish the trademarks or service marks of Complainant.
3. The domain name is not being used in bad faith.
Respondent contends that Complainant has not shown any bad faith. Respondent points out that Complainant initiated the dispute as to the domain name only after the domain name was registered to the Respondent, and not prior to that date when it was owned by another display company. Respondent does not establish, in any way, however, ownership by another of the domain name in dispute.
Respondent contends that his company is not a competitor of Complainant, is not engaged to disrupt the business of Complainant, and, in fact, services products manufactured by Complainant (and by other manufacturers of exhibits and displays).
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("Policy") states that a domain name can be transferred where Complainant has established the following:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the trademark NIMLOK.
The Panel also finds that the domain name in dispute is confusingly similar to the trademark NIMLOK. The addition of the descriptive term "displays" does not avoid confusion. Since that term describes the products of Complainant identified by the trademark NIMLOK, the addition of the term is more likely than not to increase confusion. In addition to the cases cited by Complainant (Caterpillar Inc. v. Matthew Quin, WIPO Case No. D2000-0314, and Caesars World, Inc. v. Universalinteractives, WIPO Case No. D2001-0951), also see Qwest Communications International, Inc. v. DefaultData.com, a/k/a Brian Wick, WIPO Case No. D2003-0002, Galatasaray v. Northwest Comp., WIPO Case No. D2003-0018, Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098, and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel thus finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent as an individual, business, or other organization has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent does not contend that the circumstances in paragraph 4(c)(ii) of the Policy are found here, in that there is no allegation that the Respondent or his business have ever been commonly known by the domain name.
Regarding the circumstances of paragraph 4(c)(i) of the Policy, the record does not establish when the Respondent began use of, or made demonstrable preparations to use, the domain name in dispute. As noted, the domain name in dispute was registered in June of 2002, and notice to Respondent by Complainant of the dispute appears to have occurred no earlier than December, 2002. That notice simply refers to the Respondent's registration and use of the domain name, without detailing the nature of such use. For the purposes of this decision, the Panel will assume that the domain name in dispute was used by the Respondent in conjunction with the operation of his business known by the name "Trade Show Supply" prior to notice of the dispute by Complainant.
The circumstances of paragraph 4(c)(i) also require, that any such use be "in connection with a bona fide offering of goods and services." In this regard, the Panel takes special note that: Respondent is not now and has never been authorized to use the name and mark NIMLOK; Complainant manufactures and sells exhibits and displays using the name and mark NIMLOK; Respondent sells exhibits and displays of manufacturers other than Complainant using the domain name in dispute through his company identified by the name "Trade Show Supply". The use of another's trademark to sell competitive goods and services is, without question, an act of trademark infringement, and cannot under any circumstances be considered to be a bona fide offering of goods and services. Accordingly, the circumstances of paragraph 4(c)(i) are not found.
Regarding paragraph 4(c)(iii), the Respondent is engaged in a legitimate commercial use of the domain name. The issue thus revolves around whether or not Respondent is engaged in "fair use" of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's contention that Respondent's use of the domain name in dispute tarnished Complainant's trademark is without any basis and will not be further considered.
Although the contentions of Respondent as noted are not fully understood, Respondent appears to be arguing that its use of the domain name in question is simply a descriptive and informative use of the name and mark NIMLOK, which provides needed information to customers that the company operated by Respondent can provide services with respect to the exhibits and displays of Complainant.
Assuming that Respondent is providing repair or refurbishment services for Complainant's exhibits and displays through the business operated at his website (which assumption is based only on the allegations of Respondent), Respondent appears to be primarily engaged at that website in selling exhibits and displays. The only "button" headings on the home page of that website are "Products," under which various types of exhibits and displays are listed, and "Contact," with corresponding contact information. The only photos found on the home page (with the exception of one photo labeled "training and education") are of exhibits and displays. Respondent is not authorized to and does not contend that he sells the exhibits and displays of Complainant. Thus, Respondent's use of the domain name in dispute appears to be for the purpose of diverting consumers to the products of other manufacturers which are being sold by Respondent. See Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me A website.com, WIPO Case No. D2000-1722, and National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700. The Panel especially notes the absence in the record of any disclaimer or other notice by Respondent at his website that he is not authorized to and does not sell the exhibits and displays of Complainant. Thus, the diversion noted appears to be an intentional or negligent misleading of consumers. Accordingly, the circumstances of paragraph 4(c)(iii) of the Policy are not found.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Complainant has not contended, and has not even sought to establish, any of the circumstances of bad faith in paragraphs 4(b)(i), (ii), or (iii). The Panel thus turns to the circumstances of paragraph 4(b)(iv).
Complainant's contentions regarding bad faith are nothing more than a restatement of the circumstances of paragraph 4(b)(iv), and do not assist the Panel in any way in its decision. Nonetheless, the Panel finds that registration and use by the Respondent of the domain name in dispute is intentional, given the established reputation of complainant in its trademark and its incontestable rights in that trademark resulting from Complainant's U.S. trademark registration which provides constructive notice to all (including Respondent) of complainant's rights. See Carfax Inc. v. COMn.COM, WIPO Case No. D2002-0513, and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Certainly, respondent does not contend that he adopted and used the domain name in dispute without any knowledge of Complainant's rights. Rather, Respondent defends his use of the domain name in dispute on the basis that he is servicing the products of complainant and of others, which evidences his knowledge and intent.
From the website operated by the Respondent, it is evident to the Panel that the Respondent's registration and use of that domain name is for commercial gain, is directed to Internet users, and creates a likelihood of confusion as to whether or not complainant has sponsored, is affiliated with, or has endorsed the products or services of the other manufacturers of exhibits and displays sold by respondent. See Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031. Respondent's contentions on this issue have been considered fully, but are not persuasive. Clearly, Complainant could not have initiated the dispute until Respondent acquired the domain name in dispute. Any failure of Complainant to take action against any previous owner of the domain name has not been established, and would not help Respondent unless he was able to establish that he stood in the position of the previous owner. Respondent's other contentions are but conclusions and are not supported by the record.
The Panel thus finds that complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
For all of the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name <nimlokdisplays.com> be transferred to the Complainant.
Bruce E. O'Connor
Date: April 28, 2003