Tire Seal, Inc. v. autoACsystems.com / Peter Sosinsky
Case No. D2005-1080
1. The Parties
The Complainant is Tire Seal, Inc., Lake Worth, United States of America, represented by Akerman Senterfitt, United States of America.
The Respondent is autoACsystems.com / Peter Sosinsky, Ontario, Canada represented by Peter Sosinsky, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <supercoolac.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2005. On October 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 18, 2005, Go Daddy Software 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 20, 2005. 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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2005. The Response was filed with the Center on November 14, 2005.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 24, 2005. 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 Complainant is a manufacturer and distributor of products used in automotive airconditioning repair and maintenance such as lubricants, leak detection and repair kits, air conditioning flushes and associated tools, o-rings and adaptors, filters and orifice tubes. According to the declaration of Mark Eggen annexed to the Complaint, the Complainant is a leading manufacturer and distributor of such products and has distribution networks throughout the United States and in numerous countries around the world.
In his declaration, Mr. Eggen gives evidence that the Complainant uses the mark “SUPERCOOL” in connection with the sale of its automotive products and that numerous of the Complainant’s products also feature a trade dress characterised by the use of the “Supercool” logo in a stylised black font overlain on a yellow background. Evidence is given that the mark SUPERCOOL has been in use since as early as 1997 and that the mark has been used in the United States for over 8 years.
Mr. Eggen also deposes that the Complainant advertises, sells and distributes its products in numerous ways; for example publishing the “Supercool” catalogue advertising its automotive products and maintaining a website <supercool.ac> to advertise and sell its automotive products. It also further markets and sells its products through its distributors. It routinely promotes and advertises its products and services in magazines and internet advertisements and through trade shows and convention attendance. A copy of one of the Complainant’s advertisements is exhibited as Exhibit A to the declaration. This shows a range of products using the mark SUPERCOOL and the mark SUPERCOOL also appears prominently as a heading to the advertisement.
Mr. Eggen also gives evidence that the Complainant targets United States and foreign consumers of automotive repair and maintenance products and that it advertises and markets its products through its affiliation industry groups. He also points out that the Complainant has adopted and uses the SUPERCOOL mark as a means of establishing goodwill and reputation and points out that customers and potential customers have contacted him to “express their frustration upon encountering the Respondent’s website using the domain name <supercoolac.com>” i.e. the domain name the subject of the dispute. They apparently informed him that they were confused that the domain name was sponsored by the Complainant.
No evidence is given by the Complainant of a registered trade mark and the Panel proceeds on the basis that there are no relevant registered trade marks. Indeed, the Respondent in its Response adduces evidence of an apparently abandoned US trade mark SUPERCOOL. The relevant search is exhibited at Annex B to the Response and shows that the abandoned mark No. 78189239 was owned by the Complainant.
5. Parties’ Contentions
1. The Complainant submits that it owns common law trademark rights in the mark SUPERCOOL.
2. That the domain name <supercoolac.com> is confusingly similar to the mark SUPERCOOL and points out that the Respondent’s domain name is virtually identical to and incorporates in its entirety the mark “SUPERCOOL” and the Complainant’s domain name <supercool.ac>.
3. The Respondent has no rights or legitimate interest in the domain name <supercoolac.com>. It points out that the Respondent registered the domain name on or about April 16, 2005. The Respondent apparently sells no products on its domain name. Rather the home page and associated linking pages accessed by the domain name illustrate goods of the same type as offered by the Complainant and in a form which is confusingly similar to the Complainant’s mark and trade dress. It submits that the Respondent is not commonly known as Supercool/ac and has not made a legitimate non-commercial use of the domain name which is designed to seek to divert the Complainant’s customers.
4. The Respondent registered and presently uses the domain name in bad faith. The Complainant relies upon the fact that the mark and the domain name are “virtually identical” and constitute a blatant copy of the Complainant’s trade dress and trade mark. It submits that this is evidenced by a side by side comparison of the Complainant’s catalogue and the portion of the Respondent’s home page. This is exhibited at Annex F to the Complaint. It also relies upon the fact that the Complainant’s use of the mark precedes the domain name registration and the Respondent’s website by 8 years.
1. The domain name is identical and confusingly similar to a trade mark or service mark in which the Complainant has rights. The Respondent submits that the Complainant did not develop or create the mark but simply adopted it for its own use. He also relies upon the evidence of the abandoned United States trade mark. To counter the submission by the Complainant that the domain name has confused its customers he adduces at Annex C to the Response a copy of the website viewing statistics since January 2005, which appears to show that the website has only been visited by 13 visitors which would include the Complainant and his legal advisors. He also submits that the logo and style of the domain name <supercoolac.com> is substantially different because it incorporates the suffix ‘ac’ indicates the nature of the airconditioning business and airconditioning products sold. He points out that there are no specific examples of confused customers to support the Complainant submission that there is an extreme likelihood that the customers will be confused.
2. Whether the Respondent has rights or legitimate interest in respect of the domain name in summary. The Respondent submits that he has been involved in the automotive airconditioning industry since 1977, and in particular offered automotive airconditioning training courses as early as 1982, which he promoted using the superlative supercool. These courses were subsequently promoted as supercool a/c courses and that as a result of him training literally thousands of automotive service technicians clients and prospective clients they began to refer to him as the supercool a/c guy. His use and promotion of the term supercool a/c preceded the Complainant’s use by at least 15 years.
3. Whether the domain name has been registered and is being used in bad faith. In summary the Respondent relies upon its use of supercool since 1982. He also submits that the Complainant’s and the Respondent’s web page is offering essentially different products. He exhibits at Annex D a comparison of the Complainant’s website and the Respondent’s website.
4. Reverse Domain Name Hijacking.
The Respondent contends that the Complainant is “attempting a reverse domain name hijacking”; that the information contained within the Response shows prima facie evidence that the Complainant is attempting to orchestrate a reverse domain name hijack and that the Complainant and its lawyer have jointly attempted to harass the Respondent and use the Policy in bad faith. He appears to rely upon a submission based upon the difference in the Complainants and Respondents products and that the Respondent has a full legal right to advertise and promote those products in any way deemed necessary without being harassed and intimidated by those wishing to abuse the Policy.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within the Policy is present. These are as follows:
(1) The domain name in dispute is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name is registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these in turn:
(A) Identical or confusingly similar
Having considered the Complainant’s evidence, the Panel is satisfied that the Complainant has common law trade mark rights in the mark SUPERCOOL in respect of its automotive airconditioning products. The evidence is quite clear that the Complainant has apparently sold and marketed such products under the SUPERCOOL mark and distinctive yellow and black logo since 1997.
The Panel also takes the view that the domain name <supercoolac.com> is confusingly similar to the mark “SUPERCOOL”. The Panel sympathises with the view expressed by the Respondent that the Complainant has adduced no specific evidence of confusion beyond the general statement in Mr. Eggen’s declaration. However, the only difference between the domain name and the mark is the addition of the suffix “AC” which appears to be accepted by both parties as a reference to airconditioning which in general terms is a commercial interest of both parties. The Panel does not accept the Respondent’s submission that supercoolac is substantially different because it incorporates the suffix AC.
The Panel has looked at Annex D to the Response and although the pages exhibited have different slogans; in the case of the Respondent “Auto Airconditioning” and in the case of the Complainant “Quality Products/Great Service” in the view of the Panel this does not detract from the overall similarity of supercool and supercool.ac. The Panel reaches this conclusion by a comparison of the mark and the domain name without for this purpose considering the style in which the mark and the domain name are being used.
It follows that the Panel finds for the Complainant with regard to this element.
B. Rights or Legitimate Interests
The Respondent’s submission is that he has had an association with supercoolac or supercoola/c since the late 1970’s. Although the Respondent adduces at Annex A to the Response evidence that Mr. Sosinsky had completed airconditioning training courses there is no evidence adduced that he had traded using the mark SUPERCOOL. The evidence is limited to his assertion that “since 1982 his Auto Airconditioning Training Courses were promoted as SUPERCOOL A/C Courses”. He also refers to the fact that clients apparently began to refer to him as the “supercool guy”.
The Respondent also submits that the products displayed at the website <supercoolac.com> were developed, designed, engineered and photographed by him. Having considered Annex D to the Response the Panel finds that the Products advertised are of the same general business category i.e., automotive air conditioning parts and indeed both extracts from the websites refer to auto airconditioning and automotive airconditioning.
The Panel also takes into account that the manner in which the mark SUPERCOOL is used on both websites is very much the same consisting of a stylised use of the word supercool in black on a yellow background. No satisfactory evidence is given by the Respondent as to the confusing similarity of the two styles.
Taking this together with the lack of evidence beyond the assertion by the Respondent as to its history of use of the term supercool the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that in accordance with the Complainant’s submissions the domain name is being used by the Respondent to confuse the Complainant’s customers and potential customers in to believing that they have reached a website affiliated with the Complainant and supercool products. The similarity between the two websites is shown by Annex D to the Response leads inescapably to the conclusion that the Respondent does not use its domain name <supercoolac.com> in connection with a bona fide offering of goods and services.
It follows that the Panel finds for the Complainant with regard to this element.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent’s bad faith in registering the domain name is supported by overwhelming evidence. It submits that the bad faith is “most clear in its blatant copy” of the Complainant’s trade dress and trade mark as is shown by a side by side comparison of the cover of the Complainant’s 2005 catalogue and an extract from the Respondent’s home page. This is set out in Annex F to the Complaint. In the Panel’s view this shows quite clearly that the similarity between the use of supercoolac by the Respondent and by the Complainant in an almost identical form in black stylised lettering on a yellow background means that the Respondent must have intended to rely upon the Complainant’s mark.
In addition, the Panel takes note of the fact that the domain name in dispute was created on April 16, 2005. This can be seen from the Whois search exhibited at Annex A to the Complaint.
Given the close similarity between the Complainant’s catalogue and the Respondent’s home page as exhibited at Annex F to the Complaint and also the comparison between the two website pages as exhibited at Annex D to the Response there can in the Panel’s view be no doubt that the Respondent created its website by reference to the trading style of the Complainant and in relation to similar automotive airconditioning products.
The Respondent relies heavily upon the abandoned United States trade mark but in the Panel’s view this is an immaterial factor and shows no more than that the Complainant does not own a registered trade mark SUPERCOOL. The Complainant is entitled to rely upon its unregistered rights.
The Respondent states that the Complainant’s contention that the Respondent has intentionally attempted to divert and confuse the Complainant’s customers could only have been determined by “contacting the Respondent”. The Panel does not accept this submission. The Respondent’s intentions are clearly shown by the similarities between the Complainant’s website/advertising material and the Respondent’s use of the domain name.
The Panel finds that the Respondent has intentionally attempted to divert and confuse the Complainant’s customers and that this represents evidence of bad faith. It also follows that the Respondent’s claim for reverse domain name hijacking fails.
The Panel finds for the Complainant in respect of this element.
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 <supercoolac.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: December 9, 2005