WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fast-teks, Inc. v. Rescuecom Corporation
Case No. D2005-0683
1. The Parties
The Complainant is Fast-teks, Inc., Tampa, Florida, United States of America, represented by Law Office of Suzanne C. Cummings, United States of America.
The Respondent is Rescuecom Corporation, David Milman, Syracuse, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fasteks.com> (the “Domain Name”) is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2005. On June 29, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 July 7, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 27, 2005. The Respondent submitted a response on July 26, 2005.
The Center appointed Michael A. Albert as the sole panelist in this matter on August 9, 2005. 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.
On September 5, 2005, the Panel issued Procedural Order No. 1, requiring certain further information from Complainant, which was provided on September 12, 2005.
4. Factual Background
Complainant is in the business of providing on-site computer services to residential and business customers under the FAST-TEKS mark, both through its own employees and through franchisees that are licensed to use the FAST-TEKS mark and business system.
On or about April 27, 2004, Club Z!, Inc., a Florida corporation with a principal place of business in Tampa, Florida (“Club Z”), registered the domain name <fastteks.com> with Network Solutions LLC.
Club Z holds a minority ownership interest in Complainant and Complainant alleges that ClubZ has expressly authorized Complainant to use the domain name <fastteks.com>.
ML Capital Group, Inc. (“ML Capital”) is a Florida corporation with a principal place of business in Tampa, Florida. ML Capital holds a majority interest in Complainant.
On or about May 17, 2004, ML Capital filed an application with the United States Patent and Trademark Office (“USPTO”) to register the service mark FAST-TEKS in connection with, among other things, franchising businesses that offer on-site computer service, repair, maintenance and training for businesses and residential users.
On May 10, 2005, ML Capital’s service mark application was published for opposition.
Registration of the FAST-TEKS® mark issued, without opposition, on August 2, 2005, under Registration No. 2,980,646.
5. Parties’ Contentions
Complainant alleges that it has a licensing agreement with ML Capital under which the Complainant enjoys the exclusive right to use, sublicense and defend the FAST-TEKS mark.
On or about July 26, 2004, the Complainant’s website at the URL “www.fastteks.com” (“Fast-teks Website”) went “live.” The Fast-teks Website describes the services offered through the Complainant’s corporate and franchise-owned offices and provides information about the Fast-teks franchise opportunity.
Through May 31, 2005, the Fast-teks Website had received a total of 599,928 page views, and continued thereafter averaging 126,135 per month. The Fast-teks franchise opportunity is listed on numerous franchising Internet websites.
The Complainant has spent US 87,026.88 on advertising since its inception.
“Fast-teks” is not a word of daily language. It is not a generic term synonymous with on-site computer services, nor is it descriptive of such services. Instead, the mark is, at most, suggestive of the services – including franchise services – offered by the Complainant.
The FAST-TEKS mark has become a famous and distinctive identifier associated with the Complainant and its on-site computer services and franchise opportunity.
As licensees of ML Capital and Club Z, the holders of the FAST-TEKS mark and <fastteks.com> domain name respectively, Complainant has prior rights in the FAST-TEKS service mark which precede Respondent’s registration of the Disputed Domain Name <fasteks.com>.
Complainant further alleges that the Domain Name is confusingly similar to Complainant’s FAST-TEKS mark in that the two are pronounced the same, and differ in spelling only in the removal of the hyphen and in the use of a single rather than a double “t.”
Complainant alleges that Respondent lacks any legitimate rights in the Domain Name because Respondent adopted and began using it after Complainant’s use of its mark and domain name began, and because Respondent uses the Domain Name to promote a franchising opportunity substantially similar to the one promoted by Complainant – namely, one that relates to the rapid provision to individuals or small businesses of a service technician to assist with computer-related problems.
Respondent alleges, first, that Complainant is the wrong party to bring these proceedings because the mark in question is owned by ML Capital, not by Complainant.
Respondent further claims that there is no evidence documenting any licensing agreement allowing Complainant to use ML Capital’s rights.
Respondent argues that Complainant has not shown it has a valid and enforceable mark, noting that ML Capital’s application for registration of a service mark had not been granted as of the date of the Response, and further noting that another company has a registered trademark that includes the phrase “Fast-tek.”
Respondent argues Complainant has not provided evidence of franchisees.
Respondent questions whether Complainant’s alleged 599,928 “page views” reflect unique or repeat visitors or whether such number suffices to make the mark famous.
Respondent further claims that it has prior legitimate rights to use of the Domain Name. It bases this argument on two contentions: First, that Respondent’s owner operates a business under the name Rescuecom with 80 franchises across the United States, whose “well known slogan is ‘The Fastest Response Anywhere.’“ Respondent claims to provide a computer technician on-site within one hour of a request for emergency service. Respondent has also mirrored its “www.Rescuecom.net” website on the <fastestservice.com> and <fastest.biz> domain names.
Secondly, Respondent’s owner previously incorporated another business called Virtutek Computer Solutions, Inc., and uses the domain name <virtutek.com> to host a mirror site for “www.Rescuecom.net”. Respondent accordingly argues that it has established rights in both the “tek” suffix and in the concept of providing “fast” service. Accordingly, it argues that “fast-tek” is a logical combination of these two concepts previously legitimately used by Respondent.
Finally, Respondent argues that “fast-teks” is descriptive, or at least strongly suggestive, of the rapid provision of computer technician services.
As to the bad faith factor, Respondent argues that there is no evidence of bad faith. Respondent had used both the “tek” suffix and the concept of “fast” service long before Complainant’s first use in May 2004. Respondent is not alleged to have registered the domain name for purposes of re-sale, or for any purpose other than promotion of its services in the field of providing computer technical support with a fast response time. Nor is there any evidence of efforts to disrupt Complainant’s business or of a pattern or practice of abusive domain name registrations. Complainant has not been prevented from using the mark “Fast-Teks” as a domain name, as it has registered and is using both <fast-teks.com> and <fastteks.com> as domain names. Respondent further argues that its website does not create an impression that Respondent is affiliated with or sponsored by Complainant.
Finally Respondent argues that “typo-piracy” does not describe the present situation, in which two alterations rather than one have been made to the mark (the deletion of both the hyphen and one of the two letters “t”), reducing the risk that this name would be typed in error by an Internet user.
6. Discussion and Findings
As discussed below, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interest in the Domain Name, and that bad faith as defined in the Policy has been established.
A. Identical or Confusingly Similar
Complainant has established that the Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has rights in the FAST-TEKS mark.
In light of Respondent’s questioning of whether Complainant had adequately established, through evidence, the existence of its alleged license agreement with ML Capital, the Panel requested through Procedural Order No. 1 that Complainant provide any such evidence. Complainant provided a copy of the license agreement in question. In further compliance with the Procedural Order, Complainant provided evidence that ML Capital’s trademark has now been federally registered.
The evidence clearly establishes that ML Capital owns trademark rights in the FAST-TEKS mark, and has licensed it to Complainant along with a grant of authority to enforce those rights.
“Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark.” Grupo Televisa, S.A. v. Party Night Inc. a/k/a Peter Carrington, WIPO Case No. D2003-0796 (December 2, 2003)(emphasis in original); accord, Toyota Motor Sales U.S.A., Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624 (October 6, 2003) (“As a matter of U.S. law, which governs these proceedings, even a non-exclusive licensee has the right to assert rights in a licensed mark and to take action to protect the licensed mark.”).
It is well established that “Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the [disputed] domain name.” AB Svenska Spel v. Andrey Zacharov, WIPO Case. No. D2003-0527 (October 2, 2003).
As ML Capital’s licensee, Complainant thus has rights in the FAST-TEKS® mark sufficient to satisfy the requirements of Paragraph 4(a)(i) of the Policy.
Respondent argues that the mark FAST-TEKS is merely descriptive of services. This theory appears to have been rejected by the Trademark Office in allowing the registration. Indeed, notwithstanding the pendency of this dispute, it does not appear that Respondent (or anyone else) filed any opposition to Complainant’s registration during the period allotted for doing so. In any event, the Panel does not find the mark to be so lacking in capacity to designate the origin of goods or services as to warrant the conclusion that it cannot serve as a trademark. Complainant has provided evidence of having built up trademark rights and goodwill in the mark.
Moreover, the cases are legion in which a variant spelling of a mark, when used as a domain name, is deemed “confusingly similar” to the mark under the Policy. E.g., The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145 (April 10, 2003); Backstreet Prod., Inc. v. Zuccarini, WIPO Case No. D2001-0654 (August 24, 2001).
Respondent’s argument that there is no typosquatting involved when two characters of the mark are changed rather than one is unavailing. There is no rigid rule correlating the number of characters that have been changed with whether the resulting domain name is a confusingly similar typographical variant of a trademark. These are fact-specific determinations made on a case-by-case basis. Sometimes minor changes may avoid confusion; other times more substantial changes will not. In this case, the two sound the same, are spelled nearly the same, and differ only in the deletion of a soundless character (the hyphen) and a duplicate letter (the second “t”). Moreover, the domain names convey the same overall impression and resolve to websites advertising similar businesses. Additionally, as Respondent points out, Complainant also owns the same domain name but without the hyphen <fastteks.com>, reducing the difference to a single character and making the likelihood of confusion with <fasteks.com> even greater. The Domain Name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Respondent does not deny that it registered the Domain Name, <fasteks.com>, after Complainant registered its <fast-teks.com> domain name. It does not deny that the two sound the same, are used for similar businesses, and differ only in the fact that the second omits two characters – a hyphen, which of course is soundless and is commonly omitted in domain names, and the second of two adjoining letters “t,” which again has no effect on the sound of the word.
Although Respondent disputes whether there is a basis for Complainant’s contention that Respondent had constructive knowledge of the mark and of complainant’s domain name usage at the time Respondent adopted its similar domain name for a similar business, Respondent strikingly does not deny that it actually had such knowledge. While the burden of proof is on Complainant to establish each element of its claim, the circumstantial evidence of Respondent’s likely awareness of the mark – including the similarity of the two businesses, the relatively robust degree of popularity of Complainant’s website – taken together with Respondent’s failure to deny actual knowledge, leaves the Panel persuaded that Respondent was aware of the mark and of the Complainant’s domain name usage at the time Respondent adopted its confusingly similar name.
That fact alone, however, does not resolve the dispute. A closer question is whether, notwithstanding any actual knowledge of the similarity and possible confusion, Respondent nevertheless had a pre-existing legitimate right to the Domain Name.
Respondent offers two arguments suggesting such a right. One is that the mark is “descriptive” of services that include Respondent’s. In support of this argument, Respondent cites Bankrate, Inc. v. HSH Associates International, WIPO Case No. D2002-1165 (March 4, 2003) (holding that respondent’s use of <bankrates.com> was descriptive of the services offered, and noting that respondent had made similar descriptive use of other domain names such as <loanrates.com> and <bestrates.com>). The mark at issue in this case, however, is not as weak or merely descriptive as the one at issue in the Bankrate case. While “fast” is descriptive of a the speed of service, and while “tek,” or at least “tech,” may be a relatively common abbreviation for “technician,” the connection between the phrase “fast-teks” or “fasteks” and the provision (and franchising) of services relating to the speedy provision of computer technician services is not as immediately apparent as to warrant the designation “merely descriptive” (let alone generic). Any doubt about the issue, at least for purposes of this Panel’s decision (which may be subject to plenary review in a court of law), should be resolved in favor of the U.S. Patent and Trademark’s determination that the mark is entitled to registration on the Principal Register.
Respondent’s second argument is that it has used the concept “fast” in its own prior advertising, while its owner has used the abbreviation “tek” in his Virtuetek Computer Solutions business.
Putting aside the question of whether Respondent’s owner’s use of these letters (“tek”) as part of a trademark can create legitimate rights in a different company – namely, Respondent Rescuecom Corporation – the more fundamental flaw in Respondent’s argument is that trademarks are considered as a whole. The fact that a mark is made up of two or more elements which have previously been used elsewhere does not mean that, in combination, they cannot form a distinct, protectable trademark, and does not vest rights in the combination to a prior user of the separate elements. Respondent does not claim to have made any prior use of the mark FAST-TEKS (or any variation thereof, such as FASTEK). Nor does it claim to have been known by such a name; and as discussed above, the mark is not generic. Accordingly, there is no basis for finding legitimate rights.
C. Registered and Used in Bad Faith
Complainant and Respondent are direct competitors in a similar line of business. Respondent adopted the name Rescuecom and Complainant adopted, registered, and began using in commerce the mark FAST-TEKS, for which it now has a federal trademark registration. Respondent, apparently after learning of Complainant’s choice of mark, adopted a second name, <fasteks.com> – a domain name which is confusingly similar to, and indeed a mere typographical variant of, Complainant’s mark.
These facts provide ample circumstantial evidence of an intent to divert business from Complainant to Respondent through confusion, warranting a finding of bad faith under Paragraph 4(b)(iv) of the Policy. See, e.g., The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145 (April 10, 2003) (holding that “[t]yposquatting is by itself strong evidence of bad faith in registration and use of a domain name.”); Backstreet Prod., Inc. v. Zuccarini, WIPO Case No. D2001-0654 (August 24, 2001) (finding “‘[t]aking advantage of consumers’ known disposition to misspell domain names,’“ to be “classic bad faith”) (citations omitted).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fasteks.com> be transferred to the Complainant.
Michael A. Albert
Dated: September 29, 2005