World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boise Garage Door LLC v. Sunrise Garage Door Co.

Case No. D2012-1651

1. The Parties

Complainant is Boise Garage Door LLC of Eagle, Idaho, United States of America (U.S.), represented by JMR Law Group PLLC, U.S.

Respondent is Sunrise Garage Door Co. of Nampa, Idaho, U.S., represented by Greener Burke Shoemaker P.A., U.S. Complainant and Respondent will be referred to collectively herein as “the Parties”.

2. The Domain Name and Registrar

The disputed domain name <boisegaragedoor.com> (“the Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2012. The same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. And on August 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 22, 2012. Also, in accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2012. The Response was filed with the Center on September 11, 2012.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 20, 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.

Complainant filed a Supplemental Filing with the Center on September 19, 2012. By Procedural Order dated September 21, 2012, the Panel invited Respondent to file a rebuttal to the matters in Complainant’s Supplemental Filing. Respondent did so in the time allotted by the Panel.

4. Factual Background

According to Complainant’s website, Complainant is in the business of garage door repair, sales and installation in the geographic areas of Boise, Eagle, Emmett, Star, Meridian and Nampa Idaho. Complainant owns U.S. Trademark Application Serial No.: 85626042 for BOISE GARAGE DOOR (“the Mark”). On September 12, 2012, the United States Patent and Trademark Office (“PTO”) approved Complainant’s application for publication on the Principal Register.

On its website Respondent describes its business as installing, servicing and selling residential and commercial garage doors and openers for homes and businesses located throughout Treasure Valley, Boise, Nampa, & Caldwell Idaho. Respondent has been using the Domain Name since March 30, 2009.

5. Parties’ Contentions

A. Complainant

The Domain Name <boisegaragedoor.com> is identical to Complainant’s trademark BOISE GARAGE DOOR. Complainant has filed its application to register the Mark based on its use in the Treasure Valley region of Idaho since at least as early as 1979 and in interstate commerce since at least as early as 1997, under 15 U.S.C. paragraph 1052(f). By approving Complainant’s application for publication on the Principal Register, the PTO has deemed the Mark fit to be registered on the Principal Register. This is clear evidence that the Mark has acquired distinctiveness and is contrary to Respondent’s arguments and misunderstanding of U.S. trademark law. Complainant has sold over USD 9,000,000.00 in services under the Mark since 1979 to approximately 100,000 customers, and invested over USD 230,000.00 in advertising the Mark. Thus, Complainant has acquired secondary meaning and legally enforceable rights in the Mark through over 30 years of exclusive use and substantial marketing expenditures and sales in the Treasure Valley region of Idaho as well as use of the Mark in Oregon. Secondary meaning may exist in a geographic area, which does not limit Complainant’s rights in its Mark in Idaho. It is also well settled that marks with geographic indications are protectable as trademarks.

If Respondent argues the doctrine of laches or delay in bringing this Complaint, Complainant has been asserting its rights in the Domain Name since it first learned of Respondent’s registration, including bearing the costs of legal counsel (e.g., for a July 13, 2011 cease and desist letter and the response prepared by a bankruptcy lawyer representing Respondent). Regardless of the reasonable amount of time spent trying to resolve this matter amicably, the doctrines of limitation, delay, acquiescence and laches do not operate to bar a complainant from making a complaint.

Respondent does not have any rights or legitimate interests in the Domain Name because its registration and use of the Domain Name is clearly an effort to direct traffic to its own competing web site and to divert traffic from Complainant, a long time competitor – not a bona fide offering of goods or services. Also, Respondent is not commonly known by the Domain Name. Respondent has been a direct competitor of Complainant’s for over 30 years, operating under the SUNRISE mark.

Respondent registered the Domain Name to prevent Complainant, from reflecting the Mark in a corresponding domain name and disrupting the business of a long time competitor by routing visitors to Respondent’s competing web site. Bad faith is also found where Complainant has experienced serious financial hardship as a result of Respondent’s unfair trade practices. Respondent is obviously using the Domain Name to intentionally attract Internet users for commercial gain to its web site by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, and/or endorsement.

Notably, Complainant has experienced almost a 40% drop in sales since Respondent registered the Domain Name and started intentionally directing Complainant’s customers and potential customers to Respondent’s web site.

B. Respondent

Complainant owns no recognized or protected rights in “Boise Garage Door”. On September 6, 2012, Respondent filed an official Letter of Protest contesting the registration of the Mark and expects, based upon well established legal and USPTO precedent, to have the service mark denied because the Mark is “merely descriptive” or “the generic name for the goods or services” and it has not acquired secondary meaning. In its Supplemental Filing, Complainant conflates two distinct issues when arguing that because the PTO has approved Complainant’s Service Mark for publication, the Domain Name should be transferred. Factually, the registration of the Mark and subsequent publication bear little application to the ultimate merits of whether Respondent is using the Domain Name in one of the proscribed ways. Approving a service mark for publication is not the final step in the PTO application process. Following publication, the Mark is published for opposition. The protest filed by Respondent has yet to be heard by the examining attorney. Moreover, Complainant was required to disclaim any rights to “Garage Door”. All that remains after this disclaimer is the right to the generic compound Service Mark, “Boise Garage Door”. Complainant alleges that despite only having an average of USD 264,705.88 in sales a year and spending an average of only USD 6,764.71 in advertising per year from 1979 through the present day, that “Boise Garage Door” has a secondary meaning in Boise’s greater metropolitan area. Attempting to support a claim for a service mark with sales and advertising figures (especially at these relatively modest levels) is not direct evidence that customers view the merely descriptive name as a source-identifying mark.

Respondent has been using the Domain Name in a legitimate manner for over three years, subsequent to Complainant’s business decline. At that time the Domain Name was unregistered and unused. Late in 2008 the financial markets in the United States collapsed and the country entered a financial recession. Complainant has admitted that his business took a turn for the worse – all Boise-area garage door companies experienced a 40% decline in their business and at least four local competitors went out of business during this time period. The relationship between Respondent’s use of the Domain Name and Complainant’s business decline was not causal. Respondent’s marketing department felt that it could expand the Internet business and reach more consumers so Respondent hired a local IT expert who specialized in search engine optimization to research what were the most frequently used search terms for potential garage door customers in the local area. A combination of “garage door” and “Boise” was at the top of the list; the list also included “garage door”, “boise garage door”, “nampa garage door”, “boise garage door repair”, etc. Respondent registered the Domain Name and linked it to its original domain name <sunrisegaragedoor.com>. During this same timeframe, Complainant knew nothing about the Internet or Internet marketing and did not have a webpage. Respondent, likewise, knew nothing about the Internet, but had been told that its business had grown because most modern consumers search on-line for local merchants and service providers and that increasing the number of consumers who could find Respondent would lead to increased sales. Respondent registered <nampagaragedoor.com> that same day in March of 2009, even though there is no company named Nampa Garage Door. That registration like the registration of the Domain Name was done to increase search results for the business and to drive potential customers to “www.sunrisegaragedoor.com” to take advantage of Respondent's legitimate business services. Respondent has also registered < meridiangaragedoor.com> and <eagle-garagedoor.com>. Moreover, the Domain Name is not the website currently used by Respondent. Respondent only uses the domain page as a forwarding domain to its primary web page at “www.sunrisegaragedoor.com”. The Domain Name has never been in use other than to forward to Respondent’s web site. Any confusion by potential customers should be resolved the minute the webpage is loaded, because if any consumer attempts to find Complainant’s webpage, they would immediately realize they were not on that page once Respondent’s webpage has loaded. Respondent has never been told by any potential consumer that they were misled and directed to Respondent by accident. If this had occurred, Respondent would have corrected the mistake because Respondent feels that Complainant owns a better reputation in the local community and does not want consumer confusion any more than Complainant does. Further, Complainant has failed to produce more than a single affidavit of a third party who can testify that they were diverted to Respondent under the mistaken belief it was Complainant. Respondent demonstrates here four examples of Respondent’s customers who found the website through the Internet using the Domain Name. None of these customers felt deceived and none of them had heard of Complainant’s company when asked directly about it.

There is no bad faith because the three customers of Respondent who were directed to the website through the Domain Name knew of Complainant and none of them felt misled or deceived by Respondent’s use of the Domain Name. Respondent disputes all the claims made by Complainant’s principal J. Wright in his affidavit. Respondent registered the Domain Name to provide it with a larger pool of relevant search terms and to optimize search results for those consumers seeking a local garage door service company. The drop in Complainant’s business is due to the fact that the U.S. economy collapsed in October of 2008, not because Respondent registered the Domain Name on March 30, 2009. Complainant claims Respondent is using the Domain Name to intentionally attract Internet users for commercial gain. Metrics from “www.alexa.com” demonstrate that “www.boisegaragedoor.com” and “www.sunrisegaragedoor.com” are frequently found by potential consumers using a variety of search phrases, none of which include Complainant’s purported service mark. Moreover, this evidence shows that the reason Respondent registered the Domain Name was because it was told such registration would help it become more prominent in Google searches. As Complainant admits, neither it nor its Dex representative knew that the Domain Name was not owned by Complainant when they noticed the webpage link on the DexKnows website that Complainant began using for advertising in February of 2008. By this time, Respondent had been legitimately using the Domain Name for over seventeen (17) months. Respondent did not register the Domain Name to disrupt Complainant’s business; the only business in consideration was Respondent’s. While Respondent is not directly known as “Boise Garage Door”, Respondent is known as a Boise garage door merchant and repair service company.

The evidence of record demonstrates the lack of bad faith associated with Respondent’s registration of the Domain Name. Analytics statistics which demonstrate how often and in what manner Internet users are directed to the Domain Name and <sunrisegaragedoor.com> through Google show that in the last three years there have only been six (6) instances of users attempting to access the Domain Name directly with four of these coming during the period Complainant has been attempting to gain ownership of the Domain Name. Further, the Google Analytics for <sunrisegaragedoor.com> illustrate that “boise garage door” and “garage door boise” are two of the more popular search terms for consumers looking for potential garage door merchants and repair services.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Supplemental Filing

In general, the UDRP makes no provisions for unsolicited filings by either party. With respect to unsolicited filings, this Panel is of the view expressed in Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596, that unsolicited submissions will be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances and why the material could not have been submitted with the complaint. The purposes of Complainant’s Supplemental Filing were to inform the Panel that the PTO (1) approved Complainant’s application to register the Mark on the Principal Register; and (2) registered a mark having a geographical indication (the application of which was mentioned in the Complaint). Insofar as this information was not available to Complainant at the time it filed its Complaint and it is relevant to the issues on which it bears the burden of proof in this proceeding, the Panel has considered the entirety of the filing. The Panel likewise considered the Response to the Supplemental Filing filed by Respondent.

B. Identical or Confusingly Similar

The Domain Name <boisegaragedoor.com> is identical to Complainant’s BOISE GARAGE DOOR mark for purposes of the Policy, since the .com suffix is ignored for purposes of this analysis. Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653.

Respondent contends, however, that Complainant does not own any rights in “Boise Garage Door” because it is a generic description of an offered product and/or service coupled with a mere geographic descriptor. Furthermore, Respondent maintains that Complainant has not provided any data from the relevant community that the Mark has achieved secondary meaning other than what Respondent deems non-probative advertising and sales figures. With regard to the PTO’s approval of the Mark for publication, Respondent contends that there is much yet to happen before the PTO including the opposition time period and a ruling on Respondent’s pending protest.

To successfully assert common law or unregistered trademark rights, a 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 the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.7. “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.” Id.

Regardless of the fate of the Mark in future PTO proceedings, it is not insignificant that the PTO is willing to register the Mark on the Principal Register under section 2(f) of the Lanham Act. The Panel’s holding that Complainant has established common law rights in the Mark for purposes of this proceeding is, however, not based upon the PTO’s approval of the Mark for publication but, rather, the evidence of record Complainant has presented. The record shows that Complainant has continuously operated its garage door sales and service business since 1975 under the Mark at least in Treasure Valley Idaho. For example, Complainant has made of record local ads (“Boise Garage Door . . . Serving Your Area for Over 30 Years”), business cards (“Serving Idaho Since 1975”), invoices (customers in Idaho and Oregon), a print out from Complainant’s website (“Serving, Boise, Eagle, Emmett, Star, Meridian, Nampa and Caldwell . . . We have been installing and repairing your doors since 1975.”), a print out from “dexknows” (advertising Complainant’s business including reviews from customers who clearly associate the Mark with the products/services they received from Complainant), and Yellow Pages ads (e.g., “Serving Your Area for Over 30 Years”, “Serving the Treasure Valley for Over 30 Years”). Furthermore, as per the declaration of Mr. J. Wright, Complainant’s owner, Complainant has sold over USD 9,000,000.00 in sales under the Mark since 1979 to approximately 100,000 customers. And Complainant has invested over USD 230,000.00 in advertising under the Mark (e.g., yellow page advertising in Yellow Book, Dex, Impact and Regional). And according to Mr. Wright, additional money was spent advertising on radio and television and in direct mailing. He also places a sticker on every garage door he installs or services that would total approximately 50,000 stickers over the past 33 years with the Mark.

So, despite the descriptiveness of the Mark, the Panel deems the evidence of record sufficient to show that Complainant has established common law trademark rights at least in the geographic area of the Treasure Valley region of Idaho (where both Complainant and Respondent conduct business) before Respondent registered the Domain Name on March 30, 2009. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (holding, “…even if Complainant’s mark THE IDEA LEAGUE acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of paragraph [4](a)(i) of the Policy”); Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 (holding complainant established common law trademark rights to the allegedly merely geographically descriptive mark MACKINAC ISLAND FLORIST which complainant used for less than 5 years); Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435 (holding complainant established common law rights in “Cape Harbour” for use in connection with the marketing and sale of real property and residential property in a geographical area at least encompassing the area in which Respondent principally conducts its business).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

While the Policy confers upon Complainant the burden of showing that Respondent has no rights or legitimate interests in the Domain Name, it is well established that the burden shifts to Respondent to demonstrate otherwise after Complainant makes a prima facie case in its favor. See, for example, Telex Communications, Inc. v. Jinzheng Net, NAF Claim No. 833071; and Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110. Given that Complainant has established common law trademark rights in the Mark, as concluded above, and it is clear Complainant never authorized Respondent to use the Mark in the Domain Name or for any other purpose, Complainant has made such a prima facie case.

Faced with Complainant’s prima facie case, under paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following:

(i) use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute; or

(ii) that it has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) that it was making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.

In this case Respondent falls short with respect to all three.

It is uncontested that Respondent has not been commonly known by the Domain Name, but rather, by “Sunrise Garage Door”. Consequently, Respondent does not have a defense under paragraph 4(c)(ii) of the Policy.

Complainant also contends that Respondent’s intent in registering the Domain Name was for commercial gain – to intentionally and misleadingly divert consumers away from a long-time competitor. Respondent maintains that was never its intention. Rather Respondent explains that it discovered that “[o]ne of [its] main sources of prospective customers at the time was through its recently registered domain name, “www.sunrisegaragedoor.com”. Respondent’s marketing department therefore believed that Respondent could expand this aspect of the business and reach more customers through the Internet. Pleading ignorance of the Internet, Respondent here relies as a defense on the aid it received from a local IT expert specializing in search engine optimization who researched the most frequently used search terms for potential garage door customers in the local area. As it happens “Boise garage door” (Complainant’s Mark) was in the IT expert’s list of search engine optimization terms and Respondent ran with it.

Relying on an IT expert does not carry the day here for Respondent. Respondent has admitted that there were other phrases (that were not the Mark of a long-standing local competitor) such as “garage door” and “nampa garage door” that were in the IT expert’s list and which Respondent could have used. Indeed, Respondent admits that it registered <nampagaragedoor.com> the same day it registered the Domain Name “even though there is no company named Nampa Garage Door.” Nonetheless Respondent chose to register a domain name that incorporates the entirety of a long-term local competitor’s trademark clearly with intent for commercial gain – to increase a growing source of customers from the Internet. Internet users who know Complainant and logically use the Domain Name <boisegaragedoor.com> (encompassing the Mark) expect that they will arrive at Complainant’s website, but they are actually taken to Respondent’s website. From there, they may or may not bother to find their way to Complainant’s website or business. But further, when using the search terms (as opposed to the Domain Name) “boise garage door” in the Google search engine, the Panel learned that Respondent’s search optimization strategy is working for it because the first result is Respondent’s website, not Complainant’s website. Even more problematic is the fact that the title of that first result in the search reads: “Boise Garage Door Experts | Sunrise GarageDoor.com”. So Internet users searching for Complainant by name, not only are taken to Respondent’s competing website, but also see the title (“Boise Garage Door Experts | Sunrise GarageDoor.com”) which suggests a misleading association between the two competitors.

Respondent argues that it “only uses the domain page [Domain Name] as a forwarding domain to its primary web page at <www.sunrisegaragedoor.com>. . . . Any confusion by potential customers should be resolved the minute the webpage is loaded, because if any consumer attempts to find Boise Garage Door's webpage, they would immediately realize they were not on that page once Sunrise Garage Door has loaded.” The fact that Respondent “only” uses the Domain Name so that customers or potential customers will end up at its competitive website is not an exculpatory explanation but, rather, an incriminating admission. Potential customers might not ever bother to find Complainant if they find themselves at Respondent’s website that serves the same area as Complainant does. And, as mentioned above, Internet users are presented with a search result, the primary search result no less, that suggests an association rather than a distinction between competitors. Furthermore, even if an Internet user investigated and learned that Respondent’s site was not authorized or operated by Complainant, that does not diminish the fact that confusion, or at a minimum, initial interest confusion, can occur. See Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, WIPO Case No. D2001-0491. Respondent also attempts to defend on the ground that metrics from “www.alexa.com” show that “www.boisegaragedoor.com” and “www.sunrisegaragedoor.com” are frequently found by potential consumers using a variety of search phrases, none of which include Complainant’s Mark. These results are no justification for registering a domain name that infringes another’s trademark rights. For the foregoing reasons, Respondent has not convinced the Panel that it deserves a safe haven under paragraph 4(c)(iii) of the Policy.

Finally, Respondent’s use of the Domain Name does not satisfy the circumstance cited in paragraph 4(c)(i) of the Policy, i.e., “before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services”. The Panel agrees with prior panels that using a domain name in these circumstances to offer services similar to those offered by Complainant is not a “bona fide offering” under the Policy. See Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653; Instron Corporation v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t, NAF Claim No. 768859; and Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers, NAF Claim No. 151536.

Complainant claims that there is a relationship between Respondent’s use of the Domain Name and a decline in its business after the time Respondent began using the Domain Name. Respondent alleges that such a claim is not causal. The Panel declines to make such a finding in the context of this proceeding and does not deem it necessary to decide the issues presented.

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which “shall be evidence of registration and use of a domain name in bad faith”:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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 website or location.”

Respondent maintains that the only business it considered at the time it registered the Domain Name was Respondent’s business, not diverting business from Complainant. And it claims that while Respondent is not directly known as “Boise Garage Door”, Respondent is known as a Boise garage door merchant and repair service company. This case is not about the fact that Respondent is a garage door merchant and repair service company in Boise Idaho. It’s about Respondent’s infringing use of a competitor’s trademark in a domain name. Similarly Respondent argues that the “good will that has been generated by Sunrise Garage Door through thirty-five (35) years of operation in and around the greater Boise metropolitan area is what Respondent relies upon to attract business. The potential Service Mark owned by Complainant is completely unrelated to the circumstances and motives for Respondent’s registration of the disputed domain more than four (4) years ago.” That argument is belied by other arguments Respondent has made here and the facts presented. Respondent had choices before it registered the Domain Name. Respondent knew for well over 20 years both Complainant and Complainant’s prior use of the Mark (they were long-time competitors). Furthermore, Respondent chose Complainant’s Mark in its entirety when it could have used other non-infringing marks to optimize its business on the Internet. And Respondent permitted a misleading use of the Domain Name (as discussed above) in conjunction with the presentation of the search results to suggest some affiliation between the parties. Furthermore, it is undisputed that Complainant asked Respondent to cease using the Domain Name and it refused to do so. Complainant and Respondent each have submitted a couple of signed statements from third parties attempting to support their respective positions. Without being critical of the Parties’ efforts to present evidence under the procedural confines of these proceedings, the Panel deems these statements not particularly probative of the issues and, thus, the Panel has not given them significant weight in this proceedings.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <boisegaragedoor.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Dated: October 7, 2012

 

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