WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Videojet Technologies Inc. v. Overby Inkjet Solutions
Case No. D2012-0379
1. The Parties
Complainant is Videojet Technologies Inc. of Wood Dale, Illinois, United States of America, represented internally.
Respondent is Overby Inkjet Solutions of Granite City, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <videojetink.com> (“Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2012. On February 27, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On February 27, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2012.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on April 3, 2012. 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
Complainant manufactures, sells and services coding and marking equipment, fluids, parts, and accessories for the product identification industry.
Complainant has used the trademark VIDEOJET since 1969 and has obtained registrations of the mark in the United States of America and other countries. Complainant’s trademark registrations include the following on the Principal Register of the United States Patent and Trademark Office (USPTO):1
VIDEOJET, Registration No. 873,692, Registration date July 29, 1969, for “Ink for electronic printing;”
VIDEOJET, Registration No. 1,011,903, Registration date May 27, 1975, for “Electronic non-impact printing and recording machine—namely, an ink jet printer;”
VIDEOJET and design, Registration No. 2,904,765, Registration date November 23, 2004, for, inter alia, “Inks, make-up fluids and cleaning solutions for ink jet printers and imagers [...] ink jet printers and imagers, laser printers and imagers [...] ink jet and laser coders and markers [...] Installation, maintenance and repair services in the fields of ink jet printers and imagers, laser printers and imagers [...].”
Complainant’s primary business website since 1997 is at “www.videojet.com”.
The Domain Name was registered on May 23, 2007.
The Domain Name redirects the Internet user to Respondent’s website at “www.overbyinkjetsolutions.com” on which Respondent touts itself prominently on each page as “Your VIDEOJET Solutions Team.” 2 Respondent offers refurbished Excel printers and “complete service on Videojet coders including the Excel [...].” Respondent’s website also offers Citrix branded printers manufactured by ID Technology of Forth Worth, Texas. Respondent’s website states in small, light print on one page (not the home page) that “it is not affiliated with Videojet Technologies Inc.”
5. Parties’ Contentions
Complainant contends that it has legal rights in the VIDEOJET trademark and that the Domain Name is identical or confusingly similar to Complainant’s trademark. The addition of the word “ink” to “videojet” in the Domain Name has no meaning other than as “a confusing variant of “videojet.”
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent offers products and services that compete with Complainant’s products and services and describes itself as “Your Videojet Solutions Team.” Respondent is “operating its website for commercial gain misleadingly to divert consumers or to tarnish” Complainant’s trademark.
Complainant contends that Respondent registered and is using the Domain Name in bad faith, principally in that Respondent intentionally attempted to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint, in Respondent’s registration information available in the WhoIs and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding and appears to have achieved actual notice.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
A UDRP Panel may conduct limited factual research into matters of public record as deemed necessary to reach the correct decision, including sources such as official trademark registration databases and the website at issue in the case. See paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057. The Panel here reviewed the USPTO database for each of the trademark registrations cited by Complainant in the Complaint and referenced in this decision in order to confirm current ownership of the marks, two of which were not originally issued in the name of Complainant. The Panel also reviewed Respondent’s website to determine whether the Domain Name actually resolved to Respondent’s website, a fact which could not be confirmed from the case record alone, and to better ascertain the products and services Respondent offers on its site.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant possesses legal rights in the VIDEOJET trademark by reason of its ownership of registrations on the Principal Register of the USPTO. Complainant and its corporate predecessors also have a long history of use of the trademark in commerce in the United States of America and in other countries.
The Panel further finds that the Domain Name is confusingly similar to Complainant’s VIDEOJET trademark. The Domain Name incorporates Complainant’s trademark in its entirety and with identical spelling. The addition in the Domain Name of the generic word “ink” is not sufficient to distinguish the Domain Name from the trademark. The addition of merely generic wording to a trademark in a domain name is generally held to be insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy. WIPO Overview 2.0, paragraph 1.9; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. Such is the case here. The word “ink” is a generic product name, which in this case does nothing to distinguish the Domain Name from the trademark. Complainant manufactures and sells ink for ink jet printers, and its trademark relates to ink, among other products. In this case, use of the word “ink” with “videojet” in the Domain Name likely exacerbates rather than diminishes confusion with Complainant’s business and trademark.
The Domain Name and Complainant’s trademark are confusingly similar, and Complainant thus has proved the first element of its case.
B. Rights or Legitimate Interests
Complainant must demonstrate that Respondent does not have rights or legitimate interests in the Domain Name.
The record demonstrates that Respondent is known as “Overby Inkjet Solutions” or “OSI”. There is no indication that it has ever been commonly known by the Domain Name.
Respondent clearly makes a commercial use of the Domain Name and uses the Domain Name misleadingly to divert consumers to its website. Respondent thus is not making a noncommercial or fair use of the Domain Name. Policy, paragraph 4(c)(iii).
A respondent may try to show that it has rights or legitimate interests by demonstrating use of the domain name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent has not come forward to do that here.
Policy, paragraph 4(c)(ii). Respondent’s website, if one looks hard enough, actually disclaims any affiliation with Complainant. Based upon review of Respondent’s website, its business appears to consist primarily of servicing inkjet and other commercial printers, including printers manufactured originally by Complainant, and reselling refurbished machines, including Videojet printers. Respondent also offers Citrix brand printers manufactured by ID Technology which appear to be competitive with Complainant’s products.
While Respondent’s business may in itself be legitimate, the Panel does not consider the manner in which Respondent offers its goods and services to be bona fide within the meaning of the Policy. Respondent is using a Domain Name based clearly on Complainant’s trademark and product line to divert potential Complainant’s customers to Respondent’s website, which actually resides at a different domain name, where Respondent, promoting itself in large letters as “Your Videojet Solutions Team,” offers products and services that compete with those of Complainant, including products of at least one other manufacturer. Respondent thus would not meet one of the key requirements that some UDRP panels have used to validate a reseller or distributor’s use of another’s trademark in a domain name, i.e. that the respondent use the domain name to offer only the products or services of the trademark owner. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 2.0, paragraph 2.3.
In the Panel’s view, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Respondent has done nothing to refute that case. Complainant, therefore, has proved the second element of its case. WIPO Overview 2.0, paragraph 2.1.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Under paragraph 4(b)(iv) of the Policy the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Respondent registered the Domain Name incorporating Complainant’s long-established trademark in its entirety and is using the Domain Name to divert Internet users to Respondent’s commercial website where Respondent offers products and services that compete with those of Complainant, promoting itself in prominent lettering as “Your Videojet Solutions Team” thus making further use of Complainant’s trademark. The Panel finds that Respondent is intentionally creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Respondent’s disclaimer of non-affiliation with Complainant does not negate its bad faith. First, the disclaimer appears in very small, light-colored letters at the bottom of only one page of several on the site (and not on the home page), so it is not effectively calculated to give notice to the user. Second, the existence of the disclaimer, if the user notices it all, does not negate the probability of initial interest confusion. By the time the user happens to find the disclaimer, Respondent has already achieved its objective of using Complainant’s trademark to divert or attract customers to Respondent’s website, where Respondent then competes with Complainant. WIPO Overview 2.0, paragraph 3.5. In this Panel’s view, Respondent’s bad faith exists and persists notwithstanding the disclaimer.
The Panel concludes that Respondent registered and is using the Domain Name in bad faith and that Complainant has established the third and final element of its case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <videojetink.com> be transferred to Complainant.
John R. Keys, Jr.
Dated April 17, 2012
1 The Panel’s review of the USPTO public database indicates that as a result of assignments, merger and corporate name change, Complainant is the current owner of trademark registrations No. 873,692 and No. 1,011,903 originally issued to A.B. Dick Company.
2 The Panel’s review of Respondent’s website demonstrated that an Internet user inserting “www.videojetink.com” into his/her browser redirected the user to Respondent’s website residing at “www.overbyinkjetsolutions.com”.