WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alliance Laundry Systems LLC v. Private Registrations Aktien Gesellschaft
Case No. D2012-1137
1. The Parties
The Complainant is Alliance Laundry Systems LLC of Wisconsin, United States of America (“USA”) or (“U.S”), represented by Ladas & Parry, USA.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <alliancelaundry.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2012. On June 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2012 the Registrar 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” 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 the Respondent of the Complaint, and the proceedings commenced on June 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on July 18, 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
The Complainant (Alliance Laundry) designs, manufactures, and markets commercial laundry equipment. The Complainant has plants in Wisconsin, Florida, and Kentucky in the USA, and was established on March 26, 1998.
The Respondent registered the disputed domain name on May 4, 1998.
The Complainant provides a screenshot of the website to which the disputed domain name resolved on January 6, 2012. The appearance of that website suggests that it is a “click-through” website. It includes a miscellany of links relating to washing machines and laundry, including a reference to the Complainant itself. At the date of this decision, that website was substantially the same as that evidenced by the Complainant.
The Complainant does not have registered rights in the mark it relies on in these proceedings. Rather, the Complainant relies on having unregistered rights in that mark.
As the Respondent submitted no Response, there is little information in the case file about the business of the Respondent. The Complainant points out that the Respondent has previously been a respondent in 28 disputes filed with the Center, and 34 disputes filed with the National Arbitration Forum, involving the Respondent’s name or some variation thereof in conjunction with “Domain Admin” and/or its contact information. Of those cases, only one was decided in favor of the Respondent.
5. Parties’ Contentions
The Complainant claims that, although it has not applied for a U.S. federal trademark registration, over fourteen years of widespread use of its ALLIANCE LAUNDRY SYSTEMS mark as one of the nation’s premier commercial and domestic laundry manufacturers has resulted in that mark becoming a distinctive identifier associated with Complainant and its goods and services. The Complainant was established in March 1998, acquired Raytheon Company’s commercial laundry manufacturing business on May 5, 1998, and immediately began the promotion and advertising of its goods and services under its umbrella mark ALLIANCE LAUNDRY SYSTEMS. In this respect the Complainant provides evidence of advertisements featuring its ALLIANCE LAUNDRY SYSTEMS mark, including brochures, sell sheets, sales tools, and direct mailers. The Complainant says that these advertising materials are distributed nationwide across the USA.
The Complainant also advertises and promotes its goods and services through its official website, “www.comlaundry.com”. In this connection, the Complainant registered the <comlaundry.com> domain name on August 2, 1997. The Complainant provides a printout of the earliest screen capture available through “www.archive.org” and the Way Back Machine, dated November 11, 1998. The Complainant says that, although the image does not resolve, the wording “© 1998 Alliance Laundry Systems. All Rights Reserved.” is clear.
The Complainant says that the disputed domain name consists of Complainant’s ALLIANCE LAUNDRY SYSTEMS trademark, merely omitting the term “systems”. From this, the Complainant claims that the disputed domain name is confusingly similar to its trademark under paragraph 4(a)(i) of the Policy.
The Complainant says that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant says that, without the Complainant’s authorization or consent, the Respondent registered the disputed domain name, which is confusingly similar to its mark, and is using the disputed domain name to divert Internet traffic to a domain monetization website featuring pay-per-click links to third-party websites. The Complainant has not authorized, licensed or consented to the Respondent’s registration and use of a domain name incorporating its trademark, or any confusingly similar variation of the Complainant’s mark.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Many of the links available through the website at the disputed domain name redirect Internet users to the Complainant’s direct competitors or to websites through which Internet users may purchase the products of the Complainant’s direct competitors. Therefore, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant says that the Respondent was clearly aware of the Complainant’s rights in the ALLIANCE LAUNDRY SYSTEMS mark when the Respondent acquired the disputed domain name, because that domain name is nearly identical to the Complainant’s mark, and the associated website links to the Complainant’s direct competitors.
The Complainant says it just recently became aware of the Respondent’s use and registration of the disputed domain name. The Complainant sent to the Respondent a cease-and-desist letter notifying the Respondent of the Complainant’s rights in the ALLIANCE LAUNDRY SYSTEMS trademark; however, no substantive response was received.
Finally, the Complainant says that the Respondent is not new to administrative proceedings under the Policy. 28 disputes have been filed with WIPO naming as the respondent “Private Registrations Aktien Gesellschaft” or some variation of the Respondent’s name in conjunction with “Domain Admin” and/or its contact information.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed as follows, immediately following discussion of two procedural issues regarding the nature of the Respondent and, secondly, the issue of delay (laches).
A. Nature of the Respondent
The Panel in this case considered whether to issue a Panel Order to seek information on whether the Respondent was merely a “privacy service” and, as such, was obscuring the registrant-in-fact of the disputed domain name. However, there was no evidence in this case that the Respondent is, in fact, acting as a privacy service in relation to the disputed domain name. The only suggestion that the Respondent is a privacy service might arise from the Respondent’s name: which includes “Private Registrations” at the beginning. There was otherwise no evidence or argument in the case file on this issue. Previous UDRP cases apparently involving the Respondent would also go against the suggestion that the Respondent operates only as a privacy service. In particular, in WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 21, WIPO Case No. D2012-0033 the then panel made such an assumption, which led the panel to make comments critical of the then registrar’s apparent refusal to disclose the underlying registrant, and to question whether such a refusal was a breach of the registrar’s obligation under its Registrar Accreditation Agreement. Following that decision, the Center received correspondence from counsel for the Registrar, which was appended to the decision. That correspondence stated that: “We [the Registrar] have had contact with the Registrant at various stages of their account history and have had no reason to believe they are not the actual registrant of the Domain Name”.
From this, having regard to the Registrar’s confirmation of the Registrant, and in the absence of any evidence to the contrary in the case file, the Panel has accepted that the Respondent is the actual registrant of the dispute domain name. It follows that the Respondent’s default represents a deliberate choice not to respond to the allegations in this case. It also follows that negative conclusions which are sometimes drawn from the existence of a privacy service do not arise in this case (see e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 3.9).
Another issue which arises for consideration in this case is the very long delay in the Complainant bringing these proceedings, compared to the creation date of the disputed domain name in 1998.
Anticipating this issue, the Complainant notes that while laches is an equitable defense in the U.S. court system, many panels have held that laches does not properly apply in proceedings under the Policy. Drawing on panel authority, the Complainant states that the remedies available under the Policy are injunctive rather than compensatory in nature, and the concern of the Policy is to avoid ongoing or future confusion as to the source of communications, goods, or services. In this connection, the Complainant refers to Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint); The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057; The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes).
Against this, paragraph 4.10 of the WIPO Overview 2.0 notes that “Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith.” There are also some relatively recent cases that “the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant”. See The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. 1349045 (although in that case the then panel did not find that the circumstances supported a finding for the respondent based on laches).
Despite these more recent cases, this particular Panelist has previously accepted the consensus view of panelists on the issue of laches, set out in section 4.10 of the WIPO Overview 2.0 that “the doctrine or defence of laches as such does not generally apply under the UDRP, and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. See Clark Equipment Company v. AllJap Machinery Pty Ltd, WIPO Case No. DAU2011-0042. While the delay is particularly long in this case, the Panel does not see any reason to depart from this view in the circumstances.
This does not mean that the Complainant’s delay is not relevant. In particular, the Panel considers that the Complainant’s delay somewhat weakens its case to having a common law mark for ALLIANCE LAUNDRY SYSTEMS. If the Complainant thought it had such a mark, it seems to this Panel there would be a higher likelihood of the Complainant monitoring activity in the marketplace which might infringe it. It is also notable that the Complainant provided no evidence of earlier seeking to register a domain name corresponding to its claimed mark. Rather, the Complainant stated that its “official website” was located at “www.comlaundry.com”, a domain name which it registered in 1997. The implications of this aspect of the Complainant’s delay are discussed further below.
C. Identical or Confusingly Similar
Common law rights
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it “has rights” in a trademark or service mark. It is well-established under the Policy that a Complainant may demonstrate such rights by putting forward evidence of unregistered or common law rights in a mark.
What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview 2.0. The consensus of prior panels is relevantly set out under the heading: “1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? […] Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.” (emphasis added)
Addressing this requirement, the Complainant contends that its “wide and extensive use of the
ALLIANCE LAUNDRY SYSTEMS mark has led to the ALLIANCE LAUNDRY SYSTEMS mark becoming a distinctive identifier associated with Complainant and its goods and services.” The evidence the Complainant puts forward to support this contention includes a brief statutory declaration of its Vice President, and what it says are “examples of such advertisements featuring the ALLIANCE LAUNDRY SYSTEMS mark”. An examination of those examples however does not indicate much use of that mark. The examples include use of the mark “Speed Queen” (with a design) or “Huebsch” and, under that mark, appears in smaller print “Alliance Laundry Systems”. The name of the Complainant also appears in copyright statements on brochures. The brochures more prominently feature marks for SPEED QUEEN, or marks such as MONEYMASTER. The brochures refer to the Complainant in the context of those marks, such as “When the sales contract has been signed to purchase Speed Queen equipment, an Alliance Laundry Systems representative will be contacted to review store blue-prints”. The Complainant also provides evidence of its company website.
This evidence does not strongly point to the use of the Complainant’s name ALLIANCE LAUNDRY SYSTEMS as a mark per se. In almost all cases, the Complainant’s name appears to be used as just that, the name of the company in association with various marks applied to laundry equipment. As also discussed above in relation to the issue of laches, the Panel considers that the Complainant’s delay in bringing the Complainant weakens the Complainant’s case to having a common law mark for ALLIANCE LAUNDRY SYSTEMS.
Despite this, the Panel accepts that ALLIANCE LAUNDRY SYSTEMS may be a distinctive identifier, and as such a common law mark, for the purpose of these proceedings. The reasons for this are as follows:
Firstly, although its elements are obviously common English words, the mark as a combination of those words does not appear to be wholly descriptive. That is, ALLIANCE LAUNDRY SYSTEMS is not itself a descriptive term. It therefore seems reasonable that the term has become a distinctive identifier, at the very least with the consumers, including wholesale consumers, of the Complainant’s products. Supporting this conclusion, the Complainant provided evidence that it has been trading under this name since at least 1998.
Secondly, the Respondent has submitted no Response, and so the Panel has inferred that the Respondent does not dispute the contentions in the Complaint. (See e.g. Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, which involved a similar finding in the context of a common law mark.)
Thirdly, and in the absence of a Response, the Complainant makes statements as to its sales volume and the extent of its advertising associated with its claimed mark, over an extensive period. These claims are unchallenged and, as such, the Panel has no reason to believe the contrary. The extent of the Complainant’s use of the term ALLIANCE LAUNDRY SYSTEMS in connection with its business provides further support for finding that it has common law rights.
Identical or confusingly similar
Once it is accepted that the Complainant has rights in ALLIANCE LAUNDRY SYSTEMS as a mark, it is a short step to a finding that it is confusingly similar to the disputed domain name. The disputed domain name self-evidently incorporates, in the same order, the first occurring terms in the Complainant’s mark. Those terms are a significant element of the disputed domain name. The addition of the term “systems” in the Complainant’s mark does not significantly change the overall impression created by the disputed domain name. As such, the Panel considers that at least some Internet users would be confused by the association between the disputed domain name and the Complainant’s mark.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
D. Rights or Legitimate Interests
The second matter the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has alleged that the disputed domain name is used in connection with a “pay-per-click” or monetization website. Evidence of the website to which the disputed domain name refers supports this claim, and the Respondent itself has not denied it.
As indicated in the WIPO Overview 2.0, the use of a “pay-per-click” website is not, itself, evidence of a lack of rights or legimate interests. It would, for example, be legitimate for a respondent to register a domain name because of its descriptive nature. But this is not the case here. As noted above, the terms ALLIANCE LAUNDRY, used in combination, do not appear to be naturally descriptive. As such, the disputed domain name is not one which self-evidently would have descriptive value.
Further, as the Complainant notes, the Respondent has been a serial and unsuccessful Respondent in cases under the Policy in circumstances that are relevantly similar to those in this case. On its face, this pattern of conduct further supports a finding against the Respondent on this second ground.
There is no other information in the case file which suggests that the Respondent has rights or legitimate interests in the disputed domain name. In these circumstances, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
The more difficult issue which arises in this respect relates to the time at which the Complainant acquired rights in its mark. The issue is, in effect, captured in paragraph 3.1 of the WIPO Overview 2.0, which relevantly notes the following:
“Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. […]
However; In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. […]”
The majority of the Complainant’s evidence of its trademark rights relates to its use of ALLIANCE LAUNDRY SYSTEMS over a period of 14 years, particularly since 1999. That is, the majority of the Complainant’s evidence related to the period after the Respondent’s registration of the disputed domain name. Through the history of this use, the Complainant sought to demonstrate that its corporate name had become a distinctive identifier in a trademark sense. But, this evidence does not strongly suggest that the Complainant’s mark had developed distinctiveness at the time the disputed domain name was registered, in May 1998. At that time, the Complainant had been in operation for only a very short period. The Complainant provided little evidence of its advertising or reputation in the market between the short time it was established, in March 1998, and the time the disputed domain name was registered in May 1998.
On balance, the Panel has however found that this case falls within the exception outlined in paragraph 3.1 of the WIPO Overview 2.0. That is, the evidence suggests that the Respondent was aware of the Complainant, and that the aim of the registration was to take advantage of the confusion between the disputed domain name and any potential rights of the Complainant.
In particular, the timing of the Respondent’s registration of the disputed domain name (to the extent this is indicated by the “creation date” in the WhoIs record) supports such a finding. The Complainant’s evidence is that it was established in March 1998, and began trading with an acquisition of a laundry business in May 1998, the same month in which the Respondent registered the disputed domain name which incorporated its mark. It seems more than coincidental that the disputed domain name was registered at around the same time that the Complainant began trading. The Panel has inferred from this evidence that the timing of the registration was opportunistic: to capitalise on the launch of the Complainant’s business.
As noted further above, there is little evidence that the Respondent has rights or legitimate interests in the disputed domain name. There is no apparent connection between the Respondent and the disputed domain name. The disputed domain name is not wholly descriptive. There is no evidence in the case file that the disputed domain name has any connection other than with the Complainant. For at least some period during the Respondent’s registration, the disputed domain name has been used for a ”pay-per-click” website which advertises the Complainant’s products, and those of its competitors. The site is associated with the advertising of commercial products and, as such, suggests the Respondent was motivated by commercial gain. The Respondent also has a history of being involved in disputes under the Policy. These disputes have arisen from prior cases of the Respondent registering domain names for the purpose of ”pay-per-click” websites.
For these reasons, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <alliancelaundry.com> be transferred to the Complainant.
James A. Barker
Dated: August 1, 2012
1 The Panel notes that there was a minor difference in the name of the Respondent in that case, and in this case. However, the Panel considered that difference to be trivial and that otherwise, the respondent in that case appeared to be the same as the Respondent in this case, both because the names of the respondents are substantially identical and because they shared a similar address.