WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carl Stahl Sava Industries, Inc. dba Decorcable Innovations, LLC v. Michael Vierra
Case No. D2007-1215
1. The Parties
Complainant is Carl Stahl Sava Industries, Inc., doing business as Decorcable Innovations, LLC, Riverdale, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is Michael Vierra, doing business as Decor Cable Railings, Honolulu, Hawaii, United States of America, represented by Robert J. Martin Jr., United States of America.
2. The Domain Name and Registrar
The disputed domain name <decorcablerailings.com> is registered with NameSecure.com (a VeriSign Company).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2007. On August 20, 2007, the Center transmitted by email to NameSecure.com a request for registrar verification in connection with the domain name at issue, and NameSecure.com transmitted by email to the Center its verification response confirming that the 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”), 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 August 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2007. The Response was filed with the Center on September 20, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 3, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 is a corporation based in New Jersey, United States of America, that sells metal wire, wire rope, metal fittings, and metal wire mesh for use in architectural structures, interior decorating products, furniture, and related goods and services. Complainant owns a trademark for DECOR CABLE INNOVATIONS that is registered on the principal register of the United States Patent and Trademark Office (USPTO). This mark issued in January 2001 from an application filed in June 1999 based upon a claimed first use in commerce in 1997. Complainant alleges, without evidentiary support, that it has used this mark in selling its goods and services since as early as January 1997. Complainant’s principal website is “www.decorcable.com”, at which it promotes and sells its products.
Respondent Michael Vierra is president of a company that does business primarily in Hawaii, United States of America, under the names Decor Interiors of Hawaii and Decor Cable Railings. Respondent’s business is the manufacture and installation of cable railings. Materials submitted with the Complaint indicate that Respondent’s business sells metal accessories that compete with those sold by Complainant. For many years Respondent’s business has used the phrase “Decor Cable Railings” in its business name, and Mr. Vierra incorporated his company as “Decor Cable Railings, Inc.” with the state of Hawaii in 2001. He registered the disputed domain name in April 2006, and has used it since that time to provide customers with the business’s contact information. When the Panel accessed the disputed domain name, he found a single page, with the company’s name, street address, telephone number, email address (including a link that a prospective customer can use to send an email), and Mr. Vierra’s name.
Complainant’s counsel wrote to Respondent on July 20, 2007, demanding that Respondent cease and desist from any further use of the disputed domain name. Respondent replied by email on August 1, 2007, declining this offer.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s federally-registered trademark, differing only in the last of three words: Decor Cable Railings as opposed to Decor Cable Innovations. The different last word does not obviate confusion as the first two words are the dominant feature of the mark and the word that Respondent has substituted describes one of the products that Complainant sells.
Complainant has not licensed Respondent to use the disputed domain name. Respondent’s use of the name Decor Cable Railings for his business does not constitute bona fide use under the Policy because it infringes Complainant’s federally-registered trademark, which under United States of America trademark law is now incontestable, to promote products competitive with those of Complainant.
Registration in bad faith is made out by the fact that Respondent was not a registered business in Hawaii until 2001, four years after Complainant began using its mark. To quote from the Complaint (citations omitted), “given the strength of the DECOR CABLE INNOVATIONS® mark, [Complainant’s] ownership and longstanding use of the domain name <decorcable.com>, and the similar if not identical goods and services offered by both parties, the Respondent’s use of the [disputed] domain name seems calculated to falsely suggest to internet users that an affiliation exists between Complainants and the website [maintained at the disputed domain name]. Indeed, when, as here, a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith.’”
Respondent contends as follows:
The disputed domain name does not incorporate in its entirety the Complainant’s mark. Under United States of America trademark law, the disputed domain name is not similar to Respondent’s registered mark because the USPTO required Respondent to disclaim the descriptive words “cable innovations” from its mark. The only word remaining is “decor”, which is descriptive of Respondent’s business. Since the only “protected element” contained in both Complainant’s mark and the disputed domain name is descriptive of Respondent’s products, there is no basis for finding a likelihood of confusion.
Respondent has used the phrase “decor cable railings”, the entire text of the disputed domain name, as its business name for many years.1 Among other things, Respondent registered the disputed domain name as a trademark with the state in which he does most of his business, Hawaii. Unlike some states, registration in Hawaii is not automatic but requires some showing of use in commerce.2 As Respondent has been known in his business by the disputed domain name for many years, he has established a right to or legitimate interest in it.
For similar reasons, Respondent did not register and is not using the disputed domain name in bad faith. There is no evidence that Respondent acquired the domain name to disrupt Complainant’s business. Respondent has invested substantially in his business name prior to notice of this dispute. Complainant has submitted no evidence to demonstrate that Respondent registered or used the disputed domain name to take advantage of Complainant’s mark or any good will associated with it. Nothing on the website maintained at the disputed domain name suggests an affiliation between Complainant and Respondent or is misleading in any other respect.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove two things: that it has trademark rights sufficient to invoke the Policy, and that the disputed domain name is identical or confusingly similar to its mark. Proof of a national registration of a mark satisfies the first of these elements conclusively in all but the most extraordinary circumstances even if, as is true in this proceeding, the mark at issue is comprised of common words or is in trademark parlance “descriptive” or “generic”. The second element requires the Panel to compare the registered marks with the disputed domain name to see if there is confusing “similarity in sound, appearance, and ideas suggested by the mark and the domain name. . ”. Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375. The content of Respondent’s site is irrelevant to this exercise, WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph ¶1.2.
Applying these criteria to this proceeding, Complainant has met its burden of proof on this Policy element. Complainant holds a nationally-registered mark, and the disputed domain name, with its first two words identical to those of that mark, is confusingly similar under a long line of Policy decisions.
B. Rights or Legitimate Interest
Respondent has shown with credible evidence that he or his company has been known by the phrase incorporated in the disputed domain name for more than forty years. Unless this entire use is illegitimate, as Complainant seems to allege, Respondent comes within the safe harbor of paragraph 4(c)(ii) of the Policy as “having been commonly known by the domain name” prior to commencement of this proceeding, and within the safe harbor of paragraph 4(c)(i) of the Policy by “use of the [disputed] domain name . . . in connection with a bona fide offering of goods or services”.3
The evidence clearly demonstrates Respondent’s bona fide use of the phrase in his business name well before commencement of this proceeding. As in Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081, Complainant bases its claim of illegitimate use upon trademark rights that Complainant accrued subsequently to Respondent’s use of the contested phrase in its business name. Whatever effect issuance of Complainant’s trademark has under United States or Hawaii trademark law,4 under the Policy it does not in the circumstances disable Respondent’s defense under paragraph 4(c)(ii).
The doctrine of constructive notice, available under trademark law in the United States of America, does not avail Complainant in this case. Normally Panels in Policy proceedings do not apply this doctrine, requiring instead evidence demonstrating Respondent’s actual knowledge of the mark when it registered the disputed domain. Overview, paragraph 3.4. There are exceptions to this general rule including when, as here, both parties are residents of the United States of America, but even then the doctrine is not the inflexible rule that Complainant seeks. Rather its rationale is sometimes used to impute a respondent’s actual knowledge of the complainant’s mark, almost always together with other factual matters from which the Panel may infer such knowledge.
In this proceeding there are no facts at all from which the Panel could make that inference. There is no evidence before the Panel that Complainant’s mark is famous, its counsel’s unsubstantiated allegation notwithstanding, and none of the usual indicia of cybersquatting appears in this case: no use for click through revenues or some other business unrelated to the phrase at issue, no highly distinctive or well-known trademark, no attempt to sell the disputed domain name to Complainant or to anyone else, no direct competition between the parties, no warehousing of the disputed domain name. On the contrary, the evidence before the Panel indicates that Respondent has for many years operated a business incorporating the disputed phrase independently of the Internet or the disputed domain name. There is nothing to indicate that Respondent took advantage of any goodwill in Complainant’s mark when it registered the disputed domain name in 2006.
C. Registered and Used in Bad Faith.
As the necessary Policy elements are conjunctive, the Panel need not decide whether the disputed domain name was registered or is being used in bad faith. The Panel does note that the bases for its ruling that Respondent has established a right or legitimate interest to the disputed domain name appear to bar any finding of bad faith.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: October 8, 2007
1 Included in the Response are Mr. Vierra's declaration to that effect and documentary evidence of such use going back to 1960.
2 Respondent includes a copy of the statute with the Response.
3 By providing contact details and a hyperlink for interested customers, Respondent has "used" the disputed domain name for business purposes.
4 Nothing in the Panel's decision, of course, is binding in subsequent court proceedings. If Complainant believes, as its counsel alleges, that Respondent's use of its business name constitutes a trademark infringement, it is free to pursue that matter in the courts.