WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.
Case No. D2017-0481
1. The Parties
The Complainant is Welcomemat Services, Inc. of Atlanta, Georgia, United States of America (“USA” or “US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.
The Respondent is Michael Plummer jr, MLP Enterprises Inc. of Gulfport, Florida, USA, represented by Larkin, Hoffman, Daly & Lindgren, Ltd., USA.
2. The Domain Name and Registrar
The disputed domain names <welcomemat.com> and <welcomematfranchise.com> (the “Domain Names”) are registered with pair Networks, Inc. d/b/a pairNIC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2017. On April 3, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on April 6, 2017.
The Complainant filed a Supplemental Filing on April 12, 2017.
The Center appointed W. Scott Blackmer, William R. Towns and Richard G. Lyon as panelists in this matter on May 1, 2017. The Panel finds that it was properly constituted. Each member of 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, incorporated in North Carolina, USA and headquartered in Atlanta, Georgia, USA, uses proprietary techniques to identify people moving into new residences in the US and then sell direct marketing services to relevant local businesses interested in attracting these move-ins as customers. The Complainant has been using a website at “www.welcomematservices.com” since August 2003. The Complainant offers its services directly in some local markets and franchises its operations to third parties in 22 US states. The Complainant claims to be a leading firm in this field and offers examples of national advertising, media articles, and recognition of the Complainant in national publications, online, and broadcast channels, including a 2017 listing in Entrepreneur Magazine as Number 1 in the category of “Advertising Franchise”.
The Complainant holds US registered trademarks used in its business: THE WELCOMEMAT and WELCOMEMAT SERVICES, both standard-character marks first registered on December 28, 2010, and a WELCOMEMAT SERVICES INC. design mark first registered on September 20, 2005 (collectively, the WELCOMEMAT marks).
The Respondent is a competitor offering similar direct marketing services to new move-ins in many US markets, also franchising its operations in local markets. The Respondent uses a website at “www.ourtownamerica.com” (the “Respondent’s website”).
It is undisputed that the Respondent registered the Domain Name <welcomematfranchise.com> on June 9, 2011 and acquired the Domain Name <welcomemat.com> from a domain name broker in September 2016. The Respondent does not deny that in both instances it was already aware of the Complainant and its marks at the time it registered or acquired the Domain Name. Both Domain Names have been used to redirect Internet users automatically to the Respondent’s website.
The Complainant sent the Respondent a cease-and-desist letter on April 15, 2013 concerning <welcomematfranchise.com>. The Respondent replied on May 13, 2013. Acknowledging that it was in the same business as the Complainant, the Respondent nevertheless contended that it was not using the Domain Name as a source indicator and was therefore not infringing on the Complainant’s trademarks. There appears to have been no further communication between the Parties until this UDRP proceeding.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are confusingly similar to its registered WELCOMEMAT trademarks, and that the Respondent, a competitor that is not known by names corresponding to the Domain Names, has no rights or legitimate interests in the Domain Names.
The Complainant contends that the Respondent was aware of its marks in registering the Domain Names and has used them to misdirect Internet users for commercial gain, by redirecting visitors to the Respondent’s own competing website. The Complainant also argues that the Respondent registered more than one Domain Name in order to prevent the Complainant from reflecting its marks in a corresponding domain name, consistent with a pattern of such conduct.
The Respondent contends that the Domain Names are not identical or confusingly similar to the Complainant’s registered marks. The Respondent asserts that “welcome mat” is an “idiom”, a common phrase in English meaning “to extend a hearty welcome”, and too “generic” to warrant exclusivity.
The Respondent requests that the Panel dismiss the Complaint in any event on the ground that it is barred under the equitable doctrine of laches, as the Complaint was brought nearly four years after the Complainant raised claims of trademark infringement and then appeared to “abandon” such claims by failing to pursue them.
The Respondent claims a legitimate interest in using the Domain Names for their generic value to its business, which helps local providers of goods and services lay out a metaphorical “welcome mat” to greet new residents. The Respondent has been engaged in this business for over 45 years and has been franchising it for nearly 15 years, both long before the current dispute arose.
The Respondent similarly asserts its good faith in registering a Domain Name with generic value to its business and then, after reasonably concluding that the Complainant had “abandoned” its infringement claims, registering a second such Domain Name based on words of generic value. The Respondent denies registering and using the Domain Names to misdirect Internet users or to deprive the Complainant of domain names corresponding to its marks, pointing out that the Complainant already uses such a domain name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filing
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, and cases cited therein.
The Complainant’s Supplemental Filing offers rebuttal to the Respondent’s arguments that the Complainant’s WELCOMEMAT trademark is generic and that the Complaint is barred under the equitable doctrine of laches. Neither of these arguments was unforeseeable, and neither is grounded on evidence that was not available to the Complainant when the Complaint was filed. Hence, the Panel finds it unnecessary and inappropriate to take into consideration the Complainant’s Supplemental Filing.
The Respondent argues that the Panel should not reach the merits of the UDRP Complaint in this instance, because the Complaint should be barred under the equitable doctrine of laches. The Respondent contends that it reasonably concluded that the Complainant “abandoned” its infringement claim because the Complainant did not pursue the dispute for nearly four years after sending the Respondent a cease-and-desist letter.
The parties in the current proceeding are both located in the USA, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a claim because of the prejudicial effects of a complainant’s delay in asserting legal claims. The Respondent cites UDRP decisions accepting a defense of laches. These are a small minority, however. See WIPO Overview 2.0, paragraph 4.10. It is important to recognize that in US courts the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, as losses that could have been avoided. Courts have concluded that the rationale behind the doctrine does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35, and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches as such. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); 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); see also cases cited in the Index of WIPO UDRP Panel Decisions, Section III(G)(1)(c).
The Respondent quotes the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045. There, the panel rejected the complainant’s contentions that the respondent had no rights or legitimate interests in the disputed domain name, and that the respondent had registered the domain name in bad faith, because the panel found that “Respondent’s rights are senior to Complainant’s.” That is not the case here. The panel also concluded that “the circumstances of this case are the type that support a decision for the Respondent based on laches.” The panel opined that “the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant,” on the theory that an administrative proceeding offering an essentially equitable remedy (transfer of a disputed domain name) should also recognize equitable defenses such as laches.
The Panel in the current proceeding declines to endorse this approach. As noted above, the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable simply because of delay in instituting a UDRP proceeding. The Panel observes that the Respondent has not been materially injured by the Complainant’s delay in bringing a UDRP complaint. The Respondent seems to have incurred only minor expenses by relying on the Complainant’s inaction, relative as it were, in registering the second Domain Name and renewing the registration of the first. The Domain Names have been used only to redirect traffic to the Respondent’s existing website, not to develop a new website or related business, for example. The Respondent simply does not make a compelling equitable argument on these facts.
Prolonged delays in seeking legal or administrative remedies can have the effect of undermining a complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name. However, the Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches. Accordingly, the Panel declines the Respondent’s request to dismiss the Complaint on the ground of laches.
C. Identical or Confusingly Similar
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview 2.0, paragraph 1.2.
The Complainant indisputably holds registered trademarks for THE WELCOMEMAT and WELCOMEMAT SERVICES. Disregarding the “.com” generic Top-Level Domain as immaterial, as in most instances (see WIPO Overview 2.0, paragraph 1.2), the Complainant’s trademarks satisfy this standing requirement with respect to the Domain Names. They both incorporate in its entirety the most distinctive portion of the Complainant’s trademarks, WELCOMEMAT. One of the Domain Names adds to that only the dictionary word “franchise”, which does nothing to avoid confusion, as the Complainant offers franchises of its proprietary WELCOMEMAT technology and services.
The Respondent contends that “welcome mat” is a generic term in the English language, over which the Complainant cannot have exclusive rights. That argument may be relevant in discussing the Respondent’s legitimate interests and good faith under the second and third elements of the Complaint, but it is not germane to the first element. The UDRP proceeding is not the appropriate forum to litigate the validity of a registered trademark as such. The point is that the Complainant holds trademarks to which the Domain Names are confusingly similar, and that is sufficient for the Panel to proceed to the heart of this UDRP dispute, which has to do with whether the Domain Names were chosen for their idiomatic value or were more likely meant to attack the Complainant’s marks.
The Panel finds confusing similarity within the meaning of the Policy, establishing the first element of the Complaint.
D. Rights or Legitimate Interests
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. In this instance, the Complainant has made a prima facie case by showing that the Domain Names are confusingly similar to its trademarks and that the Respondent, a competitor not known by a similar name, is not authorized to use the Complainant’s marks and uses the Domain Names to redirect visitors to its own commercial website.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Names. The Respondent relies on the first of these:
“(i) before any notice to it of the dispute, the Respondents’ use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; …”
The Respondent was long established in a business similar to the Complainant’s when it registered the Domain Names. But its use of the Domain Names cannot be considered to be in connection with a bona fide offering if the probability is that it was meant to confuse Internet users as to source or affiliation, a point more fully discussed below in relation to the element of bad faith.
E. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following passages cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(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 …
(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 web site or location.”
The Complainant’s argument under the Policy, paragraph 4(b)(ii) is not persuasive, as the Complainant has indeed been able to use a domain name closely corresponding to its WELCOMEMAT trademarks, and two domain names relating to the same trademarks is weak evidence of a “pattern” of conduct.
By contrast, the circumstances described by the Policy, paragraph 4(b)(iv) closely fit those of the current proceeding. The record shows that the Complainant’s WELCOMEMAT marks were well established by the time the Respondent, a competitor, registered or acquired the Domain Names, and the Respondent does not deny prior awareness of the Complainant or its marks. A metaphorical “welcome mat” is one way to think of finding new move-ins, but not the one that might most readily come to mind for a local business owner using generic terms to search for a relevant direct marketing service. It is much more likely that such a person would type or search for “welcomemat” because of some familiarity with the Complainant’s well-advertised service. Particularly as the Respondent used the Domain Names solely to redirect Internet users to its own website promoting competing services (also with no disclaimer of affiliation) the Response fails to dispel the logical inference that the Domain Names were chosen precisely for their value in suggesting an association with the Complainant or otherwise to attract persons seeking the Complainant, rather than for their claimed generic value in connoting a “warm greeting” on behalf of the Respondent, which uses an entirely different business name.
The Panel finds bad faith squarely within the meaning of the Policy and, on the same facts, rejects the Respondent’s claim to legitimate interests in the Domain Names. Accordingly, the Panel concludes that the second and third elements of the Complaint have been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <welcomemat.com> and <welcomematfranchise.com>, be transferred to the Complainant.
W. Scott Blackmer
William R. Towns
Richard G. Lyon
Date: May 8, 2017