WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fastsigns International Inc. v. Reserved for Customers, MustNeed.com
Case No. D2015-2160
1. The Parties
The Complainant is Fastsigns International Inc. of Texas, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Reserved for Customers, MustNeed.com of Taipei, Taiwan, China.
2. The Domain Name and Registrar
The disputed domain name <signwave.com> is registered with Moniker Online Services, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2015, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The registration agreement is in English.
The Center verified that the Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 15, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant describes itself as a graphics and visual communications partner. This appears to mean that it provides services to other businesses related to the provision of signs, graphics, printing, promotional products and other marketing services.
The Complainant established this business in 1985. By the time the Complaint was filed, the Complainant conducted its business from some 590 centers around the world including offices in the United States of America, the Caribbean, Mexico, Brazil, the United Kingdom, the United Arab Emirates and Australia. While in many of those countries it appears to operate under the name FASTSIGNS, in Australia it has been providing its services under or by reference to the trademark SIGNWAVE since 1992. It also promotes and supplies its services in Australia through a website at <signwave.com.au>.
Amongst other things, the Complainant has registered SIGNWAVE as a trademark in Australia, Registered Trade Mark No. 576362 in relation to graphic design services in International Class 42 which was registered from April 10, 1992. It also has other trademark registrations for SIGNWAVE with additional wording or figurative elements.
The Complainant alleges that the disputed domain name has been registered since August 2002. That is, almost 10 years after the Complainant's use of SIGNWAVE commenced in Australia.
The disputed domain name resolves to a website which features a banner across the top stating "This domain name may be for sale". There is a representation of a traffic sign which says "RISK AHEAD". In addition there are numerous pay-per-click links for a range of signage type options such as vinyl signs, digital signs, custom banners & signs, signmakers and vehicle signs. The links refer to businesses which are not the Complainant or its Australian operation.
According to research undertaken by the Complainant, it appears that the Respondent is the holder of some 4,572 other domain names. It has also been the respondent of some 25 other disputes under the Policy; losing all except two.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the 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.
No response has been filed. The Complaint and Written Notice have been served, however, on the electronic and physical coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark for SIGNWAVE, Australian Trade Mark No. 576362. (It has also proven ownership of two other registered trademarks for SIGNWAVE plus additional elements but, in the present circumstances, it is unnecessary to refer to them further.)
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademark only by the addition of the ".com" generic Top-Level-Domain identifier. That difference may be disregarded as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) 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; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The Panel notes that the similar sounding term "sine wave" is a mathematical term referring to a particular kind of oscillation. However, the term "signwave" is not an ordinary English term. Nor is it descriptive of the services being offered by the Complainant or provided through the pay-per-click links at the website to which the disputed domain name resolves. The term "signwave" has significance in relation to signs, banners and other graphics and visual communications only through the Complainant's adoption and use of the term.
The naked use of the Complainant's trademark as the disputed domain name for a website with pay-per-click links to businesses providing the same or similar services to the Complainant is not a good faith offering of goods or services under the Policy: see e.g. Asian World of Martial Arts Inc. v Texas International Property Associates, WIPO Case No. D2007-1415 and WIPO Overview 2.0 paragraph 2.6. Neither paragraph 4(c)(i) nor paragraph 4(c)(ii) applies to such use.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see, e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. Those conditions appear to be satisfied in the present case.
In the present case, the Respondent registered the disputed domain name at least 10 years after the Complainant adopted its trademark. As noted above, the term "signwave" is not itself an ordinary English word or otherwise descriptive of the services at issue. It would appear to have significance only because the Complainant adopted the term as its trademark in relation to such services.
It is likely therefore that the Respondent was well aware of the Complainant and its trademark when the Respondent registered the disputed domain name. See, e.g. Asian World of Martial Arts Inc. v Texas International Property Associates, WIPO Case No. D2007-1415. In addition, the use the Respondent has been making of the disputed domain name is use in bad faith under the Policy. As the Complainant contends:
"The fact that the Respondent is using the Domain Name for a parking page containing commercial links which relate to the Complainant's same business activity and from which the Respondent or a third party is undoubtedly obtaining financial gain is further evidence of bad faith, given that the Respondent or a third party is unduly profiting from the Complainant's goodwill and renown. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, within the meaning of paragraph 4(b)(iv) of the Policy" (citing Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465).
The Respondent has not sought to dispute these conclusions nor to advance any other justification for its actions.
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <signwave.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: January 25, 2016