WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Technology Services, Inc. v. Wesley Hall, All American Technology Services
Case No. D2014-2026
1. The Parties
The Complainant is American Technology Services, Inc. of Fairfax, Virginia, United States of America (“US” or “USA”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Wesley Hall, All American Technology Services of Asheville, North Carolina, USA, represented by Steven Rinehart, USA.
2. The Domain Name and Registrar
The disputed domain name <allamericantechnologyservices.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on November 18, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on November 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2014. The Response was filed with the Center on December 13, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 22, 2014. 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
Founded in 1994, the Complainant is a business corporation organized under the laws of the State of Virginia, USA, and headquartered in Fairfax, Virginia, USA. The Complainant provides information technology services including network support and website design, development, and hosting. The Complainant reports that it has nearly 1,000 clients, including nonprofits and government agencies as well as financial institutions and other companies, with 65 employees and 2013 revenues of USD 10 million.
The Complainant states that it has provided services to clients in North Carolina since 2002 and that one of its clients is based near Asheville, North Carolina, in the area where the Respondent is located. The Complainant has been listed since March 2006 as a foreign corporation licensed to do business in the State of North Carolina, according to the online database operated by the North Carolina Department of the Secretary of State.
The Complainant has been recognized in Inc. magazine’s annual list of the fastest-growing private companies in the USA (with mentions in 2011, 2012, and 2013). The record includes evidence of industry awards and recognition since 2005, including the American Web Design Awards (2011), the Washington Business Journal lists of “Top 25 Small Technology Companies” and “Top Graphic Design Companies” (2010-2014), and the Talkin’ Cloud 50 and 100 lists (2011, 2012, and 2013). The Complainant’s brands appear on its website, blog, and social media platforms.
The Complainant’s services are branded with two marks: AMERICAN TECHNOLOGY SERVICES and the abbreviation ATS. The Complainant uses the latter for the domain name associated with its website, <networkats.com>. The Complainant’s US registered trademarks include the following:
AMERICAN TECHNOLOGY SERVICES
July 22, 2008
AMERICAN TECHNOLOGY SERVICES
July 22, 2008
AMERICAN TECHNOLOGY SERVICES (words and design)
July 22, 2008
AMERICAN TECHNOLOGY SERVICES (words and design)
July 22, 2008
June 25, 2013
According to the Registrar, the Domain Name was created on January 24, 2011 and is registered to the Respondent Mr. Hall, showing his organization as “All American Technology Services LLC”. The online database operated by the North Carolina Department of the Secretary of State shows that All American Technology Services LLC was established as a limited liability company on February 8, 2011 but was dissolved by administrative action on July 14, 2014 for failure to file an annual report. There is no record that the company has been reinstated. Accordingly, in the absence of proof that there is an existing legal entity known as “All American Technology Services”, the Panel will treat Mr. Hall as the sole Respondent, doing business under the trade name or alter ego of “All American Technology Services”.
The Response and the online database operated by the United States Patent and Trademark Office (“USPTO”) show that on November 18, 2014, the Respondent Mr. Hall and Cherise Hall, “DBA All American Technology Services,” a “North Carolina limited liability company”, applied to register ALL AMERICAN TECHNOLOGY SERVICES as a standard character mark (Serial Number 864571820). The application states that the mark has been used in commerce in connection with several categories of computer software and hardware since January 1, 1999. The application is pending at the time of this Decision.
The Response suggests that Mr. Hall registered the Domain Name for use in connection with a software business. However, the Response states that the Domain Name is currently used for a website “which retails the art of Respondent’s wife” . . . “while Respondent establishes his software retail business”. At the time of this Decision, the Domain Name redirects to the Respondent’s website at “www.artfromtheheartstencils.com”, which advertises and sells art stencils. The Respondent’s website does not appear to display third-party advertising.
The Complaint attaches screenshots of the website to which the Domain Name formerly resolved, which concerned information technology services, not stencil artwork. The Respondent’s former website was headed “All American Technology Services”, with a figurative logo of an eagle. It advertised the Respondent’s services as nationwide managed hosting, web design and development, software development, and technology consulting, along with network support services for clients in North Carolina, Virginia, Maryland, and the District of Columbia.
The Respondent also operates a Facebook page for “All American Technology Services LLC”. A screenshot attached to the Complaint shows that this page formerly advertised computer sales, service, and repairs, as well as custom stencils for designers, interior decorators, and crafters. The Facebook page now displays only stencil artwork.
Counsel for the Complainant made several attempts to contact the Respondent concerning the Domain Name, beginning with an email dated July 8, 2014. There was no reply except an email suggesting that the Complainant’s emails should be directed instead to a Florida company called American Technology Services. After the Complainant’s communications, including a “cease and desist” notice dated September 30, 2014, the Domain Name was redirected to the current website concerning stencil artwork.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its AMERICAN TECHNOLOGY SERVICES and ATS marks.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name, because (a) All American Technology Services has not existed as a legal entity since July 2014, and (b) the Respondent is “attempting to trade off of the Complainant’s goodwill.”
The Complainant urges a finding of bad faith, asserting that the Domain Name causes initial interest confusion and was formerly used for a website selling technology services competing with the Complainant’s.
The Respondent challenges the Complainant’s marks as “generic and not protectible”. The Respondent argues that the Respondent’s use of the Domain Name for a website dealing with artwork does not infringe the Complainant’s asserted marks used to brand technology services. The Respondent also suggests that plans to use the Domain Name for a website offering the Respondent’s “architectural software products” would not be infringing and would not create a likelihood of confusion with the Complainant.
The Respondent claims a right to use generic words for the Domain Name, particularly as those words were used for the Respondent’s company and trade name before the dispute arose with the Complainant.
The Respondent contends that the Domain Name was registered and used in good faith, with no intention of misleading Internet users or disrupting the Complainant’s business.
Finally, the Respondent asks the Panel to find that the Complaint was filed abusively in an attempt at Reverse Domain Name Hijacking.
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. Identical or Confusingly Similar
The Complainant owns trademark registrations for AMERICAN TECHNOLOGY SERVICES. The applications were examined by the USPTO, and the Panel is not prepared on the current record to conclude that the registrations are invalid, as the Respondent contends. The material portion of the Domain Name differs from this mark only by the addition of the word “all” and the elimination of spaces between the words, which cannot be included in Domain Name System addresses. Neither of these variations produces a substantively different overall impression. The Panel concludes, therefore, that the Domain Name is confusingly similar to the Complainant’s AMERICAN TECHNOLOGY SERVICES marks. The Panel declines to find confusing similarity with the Complainant’s ATS mark, as that abbreviation is quite different from the string found in the Domain Name.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests and Registration and Use in Bad Faith
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 at issue.
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. The Complainant in this proceeding has stated a prima facie case, demonstrating confusing similarity with its registered AMERICAN TECHNOLOGY SERVICES marks and the Respondent’s history of using the Domain Name not only for commercial purposes but specifically to advertise competing services.
The Respondent claims a right to use the Domain Name as generic, dictionary words and as the Respondent’s business name.
On the first point, the consensus view of WIPO UDRP panels has been expressed as follows:
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).” WIPO Overview 2.0, paragraph 2.2.
The Domain Name is not currently used for a website that is manifestly relevant to its generic meaning (technology services furnished only from America or throughout America). It does appear from the record, however, that the Domain Name was used for a technology services website until late 2014. That could reflect a legitimate interest in the generic sense of the Domain Name – unless the evidence indicates that the Domain Name was chosen instead for its trademark value, in an effort to exploit the Complainant’s marks. That possibility is more fully discussed below, in connection with the element of bad faith.
On the second point, the record demonstrates that the Domain Name was indeed formerly used for a website offering the services of a company named All American Technology Services LLC. That company has since been dissolved, and there is insufficient evidence in the record, such as sales or advertising data or media references, to establish that the Respondent Mr. Hall is “commonly known” by that name. The name is listed as a “DBA” for Mr. Hall and his wife on their recent application for trademark registration of ALL AMERICAN TECHNOLOGY SERVICES, but that application was made on the same date the current dispute was filed. The Respondent’s recent trademark filing could be taken as evidence of “demonstrable preparations” to establish a business selling architectural software with a brand corresponding to the Domain Name, but this is unsupported by other proof of demonstrable preparations to launch such a business and use the Domain Name for the business.
Hence, a better argument for rights or legitimate interests may be one the Response does not make: that the Respondent’s former website reflects actual use of the Domain Name, at least for a time, in connection with the bona fide offering of technology consulting services branded with a corresponding name. Nevertheless, this use would not properly be considered bona fide, for purposes of the second element of the Policy, if the evidence indicated that the company name or trade name was likely selected to engender confusion and trade on the value of the Complainant’s established trademark. See WIPO Overview 2.0, paragraph 2.7, observing that even a trademark registration may not establish a respondent’s rights or legitimate interests if “the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP”. This possibility, again, is assessed below in connection with the third element of the Policy, bad faith.
The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant invokes this example of bad faith, arguing that the Respondent was aware of the Complainant when it chose a confusingly similar Domain Name and even copied from the Complainant’s website, all in an effort to mislead Internet users for commercial gain.
The record shows that the Complainant’s mark was well established in the Mid-Atlantic region years before the Respondent registered the Domain Name in 2011, formed a company with a similar name, and used the Domain Name for the company’s website offering competing services in the same region. The Panel finds it telling that the Response does not deny that the Respondent (a) was aware of the Complainant and its mark at the time the Respondent registered the Domain Name, (b) operated a commercial website offering competing services until notified of this dispute, and (c) copied or mimicked portions of the Complainant’s website. The Respondent chooses instead to challenge the Complainant’s mark as merely descriptive (ineffectively, as discussed above in connection with the first element of the Policy) and emphasize that the Respondent’s more recent and currently planned uses of the Domain Name are non-competing, ignoring the former use of the Domain Name for competing services. The Respondent argues that the generic sense of the Domain Name is appropriate for a planned website selling the Respondent’s “architectural software” as described in the Respondent’s pending trademark application. Such software was not the focus of the Respondent’s former website associated with the Domain Name, however, which offered many of the same network and website services as the Complainant does.
The Respondent denies any attempt to mislead Internet users and argues that the current and planned uses of the Domain Name would not infringe the Complainant’s trademark rights (assuming they were enforceable) because the Respondent’s businesses are in different trademark classes than the Complainant’s. This argument is not persuasive. By creating initial interest confusion, a Domain Name that is identical or confusingly similar to an established trademark may produce commercial gain even if the registrant is not competing in the same business as the Complainant. That is often the case, for example, with cybersquatters who use a well-known brand name to attract visitors to a website displaying third-party advertising or unrelated products such as pornography.
Significantly, the Response ignores the Complainant’s evidence that the Respondent formerly used the Domain Name for a directly competing business. In many cases, that website used language strikingly similar to text found on the Complainant’s website or social media sites. Here, for example, is how the Respondent’s former website characterized the Respondent’s business:
“Our firm has broad experience in network infrastructure, end-user support, web-based development, managed hosting, and web-related technologies. We provide services for total outsourcing and project-based support.
“For network support services, our focus is on the Mid-Atlantic region including DC, Maryland, North Carolina, and Virginia. For managed hosting, web design and development, software development, and technology consulting we offer services throughout the United States.”
The first paragraph quoted above appears verbatim on the Complainant’s Facebook page and the LinkedIn profiles of several current and former employees of the Complainant. The Panel notes that the phrasing of the two quoted paragraphs is not unique to the Complainant: a Google search reveals that the same (or nearly the same) language is used on the websites of several other, apparently unrelated, IT services companies, including MJ Network Solutions (Florida), Digital Pathways consulting LLC (New Jersey and Pennsylvania), and TOS AdVEN (India). It is unclear on this record which company originated the phrases, but it is significant that the Respondent described itself with the same words used by the Complainant, a company with a corporate name and trademark nearly identical to the Domain Name.
There are also similarities between the Complainant’s website and the Respondent’s former website in describing specific consulting services. Some of the language is nearly identical, such as the passage on IT security reviews:
The Complainant’s website: “We routinely conduct third-party IT security reviews and penetration testing in conjunction with IT audits as independent engagements.”
The Respondent’s former website: “We routinely conduct third-party IT security reviews and penetration testing in conjunction with IT audits and as independent engagements.”
Other passages use very similar language, such as this one on interim IT management:
The Complainant’s website: “Our senior IT consultants are prepared to step in as active managers of your IT department on short notice, whether due to a temporary vacancy or a crisis situation.”
The Respondent’s former website: “Whether filling in for a manager on temporary leave or stepping into a crisis situation, our senior IT consultants understand how to take over active management of a department on short notice.”
The Panel notes that similar language appears on other IT consulting websites. But again, the similarity with the Complainant’s website highlights the fact that the Respondent’s former website advertised competing services, and in a manner that may have reinforced the initial confusion created by the similarity of the Domain Name itself.
The Respondent’s conduct after being notified of the Complainant’s trademark claims tends to reinforce an inference of bad faith. The Respondent replied evasively to the Complainant’s communications, suggesting that some other company was responsible for the Respondent’s former website, and ignored subsequent communications. The Respondent then changed the website content and ultimately redirected the Domain Name to a website for an entirely different business. The Respondent next filed a trademark application and sent an email to the Complainant’s representative in November 2014 saying, “We are trademarked and OWN All American Technology Services,” apparently referring to a dissolved company and a pending trademark application. Finally, the Response submitted in this proceeding failed even to address the issue of the Respondent’s former website offering competing services, with language mimicking the Complainant’s.
On the available record, the Panel concludes that the probability is that the Respondent chose its company name, trade name, and corresponding Domain Name, all nearly identical to the Complainant’s mark, with the hope of misleading Internet users for commercial gain. The similarity of services offered on the Respondent’s former website, often described in the same words used by the Complainant, strongly suggests that the Respondent was aware of the Complainant and sought to trade on its reputation. Thus, it is likely that the Domain Name was selected for its trademark value rather than for its generic sense. That constitutes bad faith for purposes of the third element of the Policy and also undermines the Respondent’s claims to rights or legitimate interests under the second element of the Policy.
The Panel concludes that the second and third elements of the Policy have been established.
D. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO Overview 2.0, paragraph 4.17, explains the consensus approach to Reverse Domain Name Hijacking claims as follows:
“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g., in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.”
The Complainant in this proceeding prevailed on all three elements of the Policy. The Panel does not find evidence of bad faith or abuse of process, nor does there appear to be a pattern of harassment. Consequently, the Panel declines to enter a finding of Reverse Domain Name Hijacking against the Complainant.
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, <allamericantechnologyservices.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: January 9, 2015