WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gary Lovemark, Robinson Textiles Inc. v. Mara Tucker
Case No. D2007-0217
1. The Parties
The Complainant is Gary Lovemark, Robinson Textiles Inc., California, United States of America, represented by Silver & Freedman, APLC, United States of America.
The Respondent is Mara Tucker, Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <robinsontextile.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint (naming as Respondent “Uniforms Manufacturing Inc.”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007. On February 16, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 16, 2007, Go Daddy Software transmitted by email to the Center its verification response indicating that the then-named Respondent, Uniforms Manufacturing Inc., is not the registrant, and indicated that the registrant is Mara Tucker, and providing the contact details for the administrative and technical contacts. On February 20, 2007, the Center notified Complainant of deficiencies in the Complaint. In response to the notification, the Complainant filed an amendment to the Complaint on February 24, 2007. A second amended Complaint was received on March 2, 2007. The Center verified that the Complaint together with the amendments 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Response was filed with the Center on March 28, 2007.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 13, 2007. 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.
Preliminary Procedural Matters
Identity of Respondent
It should be noted that Aaron Tucker, President of Uniforms Manufacturing, Inc., sent a request for clarification to the Center on March 7, 2007, in which he requested that Uniform Manufacturing, Inc. be removed as a Respondent because it is not the listed Registrant of the disputed domain name. On March 14, 2007, the Center responded indicating that “the Respondent in this proceeding is Mara Tucker. Your contact details were provided by the Complainant as one of the communication methods in the Notification of Complaint”. The Center indicated that these communications would be transmitted to the Panel, which has been done.
According to the Registrar’s verification, Mara Tucker is the Registrant of the disputed domain name. This Panel therefore confirms that Uniforms Manufacturing, Inc. is not a Respondent to this proceeding.
Timeline of the Response
The Response was due on March 27, 2007, but was not filed until March 28, 2007. However, the Respondent, Mara Tucker, began corresponding with the Center on March 24, 2007, stating that Click Marketing, LLC had “elected to relinquish it’s ownership of … robinsontextile.com”, and indicated that the disputed domain name would be “available for purchase at Complainant’s expense upon the dismissal of our case”. The Center forwarded this communication to the Complainant, informing Complainant of the procedures to suspend the proceedings to negotiate settlement. Late in the day on March 27, 2007, the date the Response was due, the Complainant informed the Center that “Complainant does not anticipate engaging in settlement discussions with Respondent, and wishes to proceed with its complaint”. On March 28, 2007, Respondent submitted its Response, referencing the Complainant’s late response to the offer of settlement.
This Panel therefore finds that the Response should be accepted as timely.
4. Factual Background
The Complainant Robinson Textiles, Inc., has been in the inmate uniform and jail supply business since 1979, and is the leading manufacturer and supplier of inmate uniforms in the United States. Complainant has continually used the common law mark ROBINSON TEXTILES, INC. since 1979.
The Complainant also operates a website “www.robinsontextiles.com”, where the Complainant’s merchandise is advertised, promoted and sold. The Complainant registered its domain name in 1999 and has maintained an active site since that time.
The Respondent registered the disputed domain name, <robinsontextile.com> in July 2006. As admitted by the Respondent in its Response, “Robinsontextile.com [the disputed domain name] is currently pointed to the website of Uniforms Manufacturing, Inc. [“www.UnifMfg.com”], who is a competitor of Robinson Textiles in the institutional market”.
5. Parties’ Contentions
The Complainant contends that it has common law rights in distinctive ROBINSON TEXTILES mark, which has acquired the necessary secondary meaning to be protected under the Policy. The Complainant also alleges that the disputed domain name is identical or confusingly similar to the Complainant’s ROBINSON TEXTILES mark. The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant also alleges that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent is using the Complainant’s ROBINSON TEXTILES mark to draw consumers to the disputed domain name, and then realize financial gain through sales of competing products.
The Respondent states that the Complainant “passed on acquiring any Federal Trademarks”, which apparently alleges that Complainant does not have a trademark. The Respondent alleges that similar names are a common occurrence on the web and that experienced Internet consumers are not easily confused. The Respondent also contends that “the product itself is generic and readily substituted by the institutional industry for similar merchandise that a specific claim cannot be made by Complainant to exercise authority over the use of the disputed domain”. This latter argument is based on the alleged facts that when institutions issue requests for products, the institution refers to Robinson Textiles’ products to describe the items desired.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i)-(iii) of the Policy, for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent(s) have no rights or legitimate interests in the disputed domain name; and
(iii) the Respondent(s) have registered and are using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant first must prove that it has rights to a trademark, which then must be determined to be identical or confusingly similar to the disputed domain name.
Complainant’s rights in the mark
It is not necessary in the United States of America to register a trademark with the Patent and Trademark Office; the Complainant can have rights in a common law mark. It is well settled since the beginning that the Policy protects rights in unregistered marks. See, e.g., SeekAmerica Networks Inc .v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131.
The claimed mark is not descriptive and appears to be distinctive with respect to inmate uniforms and prison supplies. Both the Complainant and the Respondent have submitted evidence that allow this Panel to conclude that the Complainant’s mark has achieved secondary meaning. As stated by the Complainant, the Complainant has used the common law mark ROBINSON TEXTILES since 1979, and is the leading manufacturer and supplier of inmate uniforms in the United States of America. This is not disputed by the Respondent. In fact, the Respondent states that the ROBINSON TEXTILES mark is so well known within the industry that institutions refer to ROBINSON TEXTILES products and their specifications to describe the products desired in requests for products.
The Respondent argues that the ROBINSON TEXTILES mark is generic because of the above referenced usage to define prison products. However, the Respondent produced no evidence that the mark been used by consumers in a manner that would render the mark generic. This Panel therefore declines to find that the mark is generic.
This Panel therefore finds that the Complainant has shown common law rights in the ROBINSON TEXTILES mark with respect to inmate uniforms and prison supplies for the purpose of the present proceedings.
Respondent’s domain name is identical or confusingly similar
The Complainant’s mark is used in its entirety in the disputed domain name. The disputed domain name is identical to the Complainant’s mark, except for the Respondent’s removal of the letter “s” at the end of the Complainant’s mark. It has long been settled that adding or subtracting a single letter does not distinguish the disputed domain name from the Complainant’s mark. See, e.g., Singapore Airlines Limited v. Hotel Price and Patricia de la Torre, WIPO Case No. D2001-0595. This “typosquatting” has been found to result in confusion. See, e.g., ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
Furthermore, the Respondent admits “that the disputed domain name of robinsontextile.com may be similar to the Complainant’s competing domain name robinsontextiles.com”.
The Panel finds that paragraph 4(a)(i) of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not been granted any apparent rights by the Complainant to use the Complainant’s mark, which is contained in its entirety in the disputed domain name.
On the evidence before the Panel, the Respondent does not appear to make any legitimate non-commercial or fair use of the domain name. The Respondent admittedly uses the domain name to point to another website that offers competing goods. Other Panels have held consistently that the Respondent’s use of the disputed domain name to sell competing goods does not constitute a legitimate interest in the disputed domain name. See, e.g., Yahoo! Inc. v. Dkal, NAF Case No. FA0402000238650.
Based on the foregoing and considering the Respondent’s use of the domain name explained further below under 6(C), the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the domain name and that the Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is not disputed that the Respondent knew of the Complainant’s mark prior to registering the disputed domain name. Further, the Respondent makes several statements in its Response that compel a finding of registration and use in bad faith, without need for reference to the Complainant’s allegations and evidence. The Respondent states that “Click Marketing LLC [Respondent Tucker’s company] felt that it was in the best interests of its client [presumably Uniforms Manufacturing, Inc.] to procure robinsontextile.com as part of a comprehensive marketing plan”, and that “it is true that the redirected site of Uniforms Manufacturing offers institutional products which compete with the Complainant’s goods”. The Respondent’s typosquatting also constitutes evidence of bad faith, as held by previous Panels. ESPN v XC2, supra.
This evidence shows that there is a clear violation of Paragraph 4(b) of the Policy.
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 <robinsontextile.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: April 27, 2007