WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Displays Depot, Inc. v. GNO, Inc.
Case No. D2006-0445
1. The Parties
The Complainant is Displays Depot, Inc., Miami, Florida, United States of America, represented by Loren Donald Pearson, P.A., United States of America.
The Respondent is GNO, Inc., a corporation organized under the laws of Louisiana, domiciled in New Orleans, Louisiana and with a mailing address in Birmingham, Alabama, United States of America, represented by John Berryhill, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <displaydepot.com> (the “Domain Name”). The Domain Name was registered with Moniker Online Services, LLC, Pompano Beach, Florida, United States of America (the “Registrar”) on November 14, 2004.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 11, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 2006, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 April 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2006. The Response was filed by email at 11:39 p.m. on May 15, 2006, and was received by the Center at 6:39 a.m. on May 16, 2006 (due to the seven hour difference between Respondent’s and the Center’s time zones); hard copies were thereafter sent to the Center by courier.
The Center appointed David H. Bernstein, Frank L. Politano and David E. Sorkin as panelists in this matter on June 14, 2006. 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.
4. Factual Background
Complainant applied to register the mark DISPLAYS DEPOT (Serial No. 78/686,697) with the United States of America Patent and Trademark Office (“PTO”) on August 5, 2005. On or about June 20, 2006 (after the appointment of the Panel), the status of the application was changed on the PTO website to indicate that the mark would be published in the “Official Gazette” on August 1, 2006. 1
Complainant registered its mark DISPLAYS DEPOT in the State of Florida, Registration T05000001083 in August 2005.
Complainant had registered the Domain Name on August 28, 2000. Due to Complainant’s failure to renew the registration, its registration expired in August 2002.
More than two years later, Respondent registered the Domain Name, on November 14, 2004, and has used the Domain Name to promote the sale of posters at the website “www.allposters.com”.
5. Parties’ Contentions
According to Complainant, since 1990, it has used the DISPLAYS DEPOT name in connection with its business of selling furniture, particularly displays for retail merchandise, as well as providing services including “store planning and design, fixture layouts, lighting plans, store front designs, trade-show booth designs, kiosk designs, construction drawings, and space and merchandise optimization.” Complainant states that it has offered these goods and services through its website “www.displaysdepot.com” since 1998. Complainant conducts business both in the United States of America and Honduras.
Complainant argues that, quite apart from its Florida trademark registration and its pending federal application, it has established common law trademark rights in DISPLAYS DEPOT through what it describes as “substantially exclusive and continuous use” in “interstate and/or international commerce.” Complainant argues that this, “along with the mark’s inherent qualities makes the mark distinctive in relation to the goods and services sold by the Complainant.”
Complainant argues that the Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights because the only difference between the Domain Name and Complainant’s DISPLAYS DEPOT mark is the absence of the plural “s” which is a de minimis modification.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent is “not known by DISPLAYDEPOT.COM.” Complainant also argues that, because Respondent’s website is “merely a referral” to a third party website, “www.allposters.com”, and because the referenced site is unrelated to the mark, it is not a bona fide offering of goods and services nor a legitimate noncommercial fair use.
Finally, Complainant contends that Respondent has registered and is using the Domain Name in bad faith because the Domain Name had previously been registered to Complainant and would still be registered to Complainant but for Complainant’s inadvertent failure to renew the Domain Name in 2002.
Complainant also argues that Respondent registered the Domain Name to capitalize on Complainant’s trademark, asserting that Respondent intentionally attempted to attract ,for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location of a product or service on Respondent’s web site.
Lastly, Complainant alleges that Respondent’s conduct forms a pattern of preventing
trademark holders from reflecting their marks in a domain name. Complainant provides a list of eighty four (84) domains “which often correspond to trademarks” (e.g., <espm.com>). Complainant also cites a previous administrative proceeding under the Policy with similar facts wherein Respondent lost a dispute over the domain name <bocaresorts.com> with the owners of <bocaresort.com> and <bocaresortinc.com>. Panthers BRHC LLC v. Gregg Ostrick/GNO, Inc., WIPO Case No. D2005-0681. As in this case, <bocaresorts.com> had been used essentially as a “www.allposters.com” referral site and the panel found that Respondent “knew, or should have known,” about Complainant’s site and that it “pluralized the name to benefit from web traffic generated by unsuspecting potential users of Complainant’s website.”
Respondent describes the Domain Name as consisting of two ordinary terms in which Complainant has not established either registered or common law trademark rights. Respondent points out that DISPLAY DEPOT” had been previously registered as a trademark by a different entity, and the registration only lapsed in 2003, making Complainant a trademark infringer during much of its existence. Respondent also points out a lack of evidence to show usage of the DISPLAYS DEPOT mark since 1990, and that two out of the three catalogs provided by Complainant as evidence of common law usage appear to be entitled “Retailers’ Source.”
Respondent argues that affiliate sales constitute a bona fide offering of goods and services and that the Domain Name was chosen because it is “suggestive of a retail outlet where one might purchase goods relating to the concept of ‘display’ [i.e., posters].” Respondent calls attention to its registered trademark MEDIAWORKS, which it uses as a similar affiliate sales site. In total, Respondent’s affiliate sales sites bring income in the range of US$1,000 to US$1,200 per month.
With regard to a pattern of bad faith, Respondent points out that the Panthers BRHC LLC decision was a split decision and that events beyond its control prevented it from exercising its rights to pursue further action. Respondent calls its attention to various legitimate online ventures in which it is engaged.
Respondent alleges that it is not attempting to capitalize on Complainant’s trademark, primarily because it had no knowledge of Complainant or its potential common law trademark claims prior to these proceedings. Respondent argues that its business of poster sales is unrelated to Complainant’s business and Respondent has not diverted customers looking for in-store display cases.
Lastly, at the time that Respondent registered the Domain Name, it had been abandoned for two years, and Respondent would have had no reason to conclude that the Domain Name would be unsuitable or infringing in connection with poster sales.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has alleged three bases for a finding that it owns trademark rights in the DISPLAYS DEPOT mark: its registration in Florida; its common law usage since 1990; and its application to register its mark in the USPTO.
The Florida registration is insufficient evidence to establish trademark rights for purposes of the Policy. Because state registrations are issued with no examination, a state registration does not give rise to the same presumptions of validity and ownership as does a federal registration. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (February 24, 2006); See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview,” available at http://www.wipo.int/amc/en/domains/search/overview/)2 at § 1.1 (“Trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) may not always be owed the same deference as examined registrations.”).
Nor has Complainant submitted persuasive evidence of common law trademark rights. As Respondent notes, two of the three catalogs Complainant submitted show trade name use, but not necessarily trademark use, and Complainant offers few factual assertions concerning the extent of its advertising, sales or other indicia of secondary meaning.
Nevertheless, Complainant’s factual assertions that it has used this mark since 1990 and since 1994 in commerce, which are certified as being true by both Complainant’s president and its counsel, coupled with the specimen it has provided of a 2004-2005 DISPLAYS DEPOT catalog and the fact that the PTO has recently approved this mark for publication (thus signifying the Examiner’s view that the mark is not merely descriptive, is not confusingly similar to any other mark on the Principal Register, and is registrable, notwithstanding Respondent’s stated intention to oppose the registration), constitute sufficient evidence to show that Complainant has established that it owns trademark rights in the DISPLAYS DEPOT mark.
Respondent, however, suggests that the Panel should nevertheless rule against Complainant because Complainant was allegedly infringing a third party’s rights in the DISPLAYS DEPOT mark during the period prior to 2003. Regardless of whether that assertion is true, it is irrelevant. The issue under the first factor of the Policy is whether Complainant has established trademark rights. If a third party believed there was infringement, the third party could have sought injunctive or other relief. Whether or not it did, the fact remains that, as of today, Complainant appears to have trademark rights. That is all that the Policy requires.
Having determined that Complainant owns rights in this mark, there is no question but that the Domain Name is confusingly similar to Complainant’s mark, and Respondent does not seriously dispute it. But for the letter “s”, the Domain Name is virtually identical to the trademark.
Accordingly, Complainant has prevailed in showing that the Domain Name is confusingly similar to a mark in which it has rights.
B. Rights or Legitimate Interests
Complainant has shown that Respondent has not commonly been known by the name “display depot” nor has it made a noncommercial use of the Domain Name (since it admits that it profits from sales that it makes through the “www.allposters.com” affiliate program). Policy, paragraphs 4(c)(ii)-(iii). Respondent has not succeeded in rebutting these showings.
Complainant also asserts that Respondent has not used the “display depot” name in connection with a bona fide offering of goods. This assertion raises a more difficult issue because, as Respondent asserts, it uses the Domain Name to link to the “www.allposters.com” website, through its affiliate program, thus providing a depot for posters, which can be characterized as “displays.”
Respondent correctly asserts that it may be legitimate for a respondent to register a domain name consisting of dictionary words (so long as they do not constitute a well known trademark) and to use the website to which the domain name resolves to provide content that is relevant to the common meaning of the dictionary words. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF File No. 285459 (August 6, 2004); See also Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (June 26, 2006); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (August 10, 2005); WIPO Decision Overview § 2.2. Here, though, Respondent’s argument that a website selling posters is a “display depot” strains the meaning of those words too far. Unlike Respondent’s other domain names that it similarly uses to link to “www.allposters.com” – <posterworld.com>, <posterland.com>, <weddingposters.com> and <schoolposters.com> – <displaydepot.com> does not readily describe a website at which posters are sold. Calling these posters “displays” and the website a “depot” thus appears to be more of a pretext than a bona fide use. Cf. Unibanco v. Vendo Domain Sale, WIPO Case No. D2000-0671 (August 31, 2000); National Hockey League v. Krusz, WIPO Case No. D2001-0234 (April 4, 2001); Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398 (July 2, 2001).
Because Complainant has made a prima facie showing that Respondent lacks a legitimate interest in the Domain Name, and because Respondent has failed to rebut that showing, See Document Technologies, Inc. v. International Electronic Communications Inc,. WIPO Case No. D2000-0270 (June 6, 2000), the Panel finds that Complainant has established the second factor under the Policy for purposes of this proceeding.
C. Registered and Used in Bad Faith
Regardless of whether Respondent’s use of the Domain Name to link to the “www.allposters.com” affiliate website constitutes bad-faith use, Complainant has failed to establish that Respondent registered the Domain Name in bad faith. Because the Policy requires a showing of both bad-faith registration and bad-faith use, e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001), Complainant’s failure to establish Respondent’s bad-faith use is fatal to its claim.
Complainant puts forward three justifications to show that the Domain Name was registered in bad faith by Respondent. First, Complainant asserts that Respondent’s registration must have been in bad faith because it registered the Domain Name after Complainant inadvertently allowed its registration to lapse. This argument has no merit. The registration of a domain name that was previously registered to a third party cannot constitute bad faith absent a showing that the registration was specifically done to take unfair advantage of an obviously inadvertent expiration, and to trade on the goodwill of the underlying trademark. Complainant’s suggestion that the burden to prove an absence of bad faith should be placed on Respondent is inconsistent with the Policy, which plainly places the burden of proof on Complainant. Document Technologies, Inc. v. International Electronic Communications Inc,. WIPO Case No. D2000-0270 (June 6, 2000). Complainant’s arguments ring particularly hollow in the context of this case, given that more than two years elapsed between Complainant’s failure to renew its registration and Respondent’s subsequent registration of the Domain Name.
Second, Complainant asserts that Respondent registered the Domain Name intentionally to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion between Respondent’s Domain Name and Complainant’s trademark. Although Complainant has parroted the legal standard under paragraph 4(b)(iv) of the Policy, it cites no evidence whatsoever to support the accusation that Respondent registered the Domain Name with knowledge of Complainant’s mark and to cause confusion with Complainant’s mark.
Not only has Complainant thus failed to establish bad faith under paragraph 4(b)(iv), but also, Respondent has effectively rebutted any such showing. Respondent asserts in its certified Response that it had no knowledge of Complainant, its mark, its business or its website at the time that Respondent registered the Domain Name. Because Complainant has not submitted any evidence to establish that it was well-known at the time the Domain Name was registered, cf. Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (June 26, 2006), or other evidence that might support a finding that Respondent was willfully blind to Complainant’s mark, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (February 24, 2006) that is a credible assertion.3 If Respondent had no knowledge whatsoever of Complainant’s trademark at the time it registered the Domain Name, its registration cannot have been done in a bad faith effort to capitalize on Complainant’s mark. Visual Gis Engineering S.L. v. Tripathi, WIPO Case No. D2006-0079 (March 23, 2006).
Finally, Complainant alleges that Respondent registered the Domain Name to prevent Complainant from reflecting its mark in the corresponding domain name and that Respondent has engaged in a pattern of such conduct, pursuant to paragraph 4(b)(ii) of the Policy. To show such a pattern, Complainant provides a list of domain names registered to Respondent, some of which appear similar in some respects to well-known trademarks (e.g., espm.com), and cites a prior administrative proceeding under the Policy against Respondent in which it was found to have violated the Policy because of its bad faith use and registration of the domain name <bocaresorts.com>.
Although some of the domain names registered by Respondent do raise questions, a bare list of domain names without evidence of how they are being used and whether they reflect bad faith, and a single adverse decision, do not make a pattern. Moreover, even if it were a pattern, and even if Respondent was found to have been a cybersquatter in another case, the question in this case is whether Respondent has cybersquatted this Domain Name. See e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369, concurring opinion (February 5, 2001) (decisions against same respondent in other actions is not necessarily relevant because “[e]ven a blind pig finds an acorn sometimes”). Again, Respondent’s credible assertion that it lacked any knowledge of Complainant and its mark at the time of registration is fatal to this claim.
For all the foregoing reasons, the Complaint is denied.
David H. Bernstein
Frank L. Politano
David E. Sorkin
Dated: June 29, 2006
1 It is appropriate for panels to consider publicly available facts such as those available on the PTO website (www.uspto.gov). Tightrope Media Systems Corporation v. DomainCollection.com, WIPO Case No. D2006-0446, n.2 (June 2, 2006).
2 “Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions.” Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005), at n.3.
3 The Panel acknowledges that this credibility finding is based solely on the written submissions, and as such it is preliminary and tentative at best. If Complainant doubts the veracity of Respondent’s assertion, it is free to pursue its claims in another forum where it may be able to develop a more complete factual record through discovery and cross-examination of witnesses. See Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001). In the event of any such proceedings, this decision (which is intended to resolve only this dispute under the Policy) would be of no effect as such proceedings would be conducted under different procedural rules and substantive laws. Visual Gis Engineering S.L. v. Tripathi, WIPO Case No. D2006-0079 at n.1 (March 23, 2006).