WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liquid 2D Inc. v. Domains By Proxy, LLC / Schergeil Parvez / Cust Dom
Case No. D2017-2139
1. The Parties
The Complainant is Liquid 2D Inc. of Montreal, Quebec, Canada, represented by Mark Sumbulian, Canada.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Schergeil Parvez of Karachi, Pakistan / Cust Dom of Florida, United States, represented by Cowan, Liebowitz & Latman, PC, United States.
2. The Domain Names and Registrars
The disputed domain names <pixelslogodesign.com>, <pixelslogodesign.me> are 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 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.
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 November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2017. On November 22, 2017, the Center received an email from the Respondent requesting a four calendar day extension to submit a Response. The Center granted the requested extension and confirmed that the new deadline for Response was December 3, 2017. The Response was filed with the Center on December 1, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on December 8, 2017. 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.
The Respondent Schergeil Parvez having been identified by the Registrar, and the Respondents Schergeil Parvez and Cust Dom having been named in the Response, the Panel determines that both these parties in addition to the party originally named by the Complainant shall stand as the Respondent in this proceeding.
4. Factual Background
The Complainant is a corporation incorporated under the laws of Canada. It provides graphic art services including the custom design of logos.
The Complainant is the owner of Canadian Trademark Registration Number TMA680712 for the word mark PIXELLOGO, registered on January 30, 2007, in Class 42 for "Graphic art services and logo design services namely the custom design of logos for others."
The Complainant operates a website at "www.pixellogo.com" which offers logo and other design services.
The disputed domain name <pixelslogodesign.com> was registered on December 5, 2015. The disputed domain name <pixelslogodesign.me> was registered on May 24, 2017.
The disputed domain names have been used to resolve to websites at "www.pixelslogodesign.com" and "www.pixelslogodesign.me" which offer logo and other design services.
5. Parties' Contentions
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark in which it has rights, namely its Canadian trademark PIXELLOGO. The Complainant observes that each of the disputed domain names has the terms "pixel" and "logo" as their essential components and argues that the addition of the descriptive term "design" does nothing to reduce or eliminate the risk of confusion. Indeed, the Complainant contends that the risk of confusion is increased both because its trademark has been registered for design services and because the Respondent actually uses the disputed domain names to offer similar services.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It asserts that the Respondent has not commonly been known by the disputed domain names and has no trademark or service mark rights with regard to the disputed domain names. Further, the Complainant contends that the Respondent is making illegitimate commercial use of the disputed domain names by using them for websites selling identical services to those of the Complainant and by misrepresenting to consumers that they are accessing the Complainant's own website.
The Complainant submits that the Respondent's activities have caused actual confusion to consumers and submits a sworn statement from its President which refers to a number of customer complaints about confusion and also poor service having been provided by the Respondent. The Complainant also submits an email from a party claiming to have been having been "scammed" by the Respondent, which that party describes as "your competitor with almost the same name."
The Complainant produces a page of "Yelp.com" consumer reviews of the Respondent's services, which comprise 11 uniformly negative and critical reviews concerning the Respondent and its services. The Complainant also exhibits a page from"Scamadviser.com" referring to the Respondent's website and stating "Low Trust Rating. This Site May Not Be Safe to Use". The Complainant produces a Google search result against the term "pixellogo" which returns the Respondent's website immediately after that of the Complainant and states that the Respondent's activities are tarnishing the Complainant's trademark.
The Complainant submits that the disputed domain names have been registered and are being used in bad faith. In particular, on the basis of the facts alleged above, the Complainant contends that the Respondent has registered and is using the disputed domain names with intent to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or the services offered on them.
The Complainant requests the transfer of the disputed domain names.
The Respondent disputes that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. It asserts that the Complainant's trademark PIXELLOGO comprises two generic terms that lack distinctiveness and that the Complainant's trademark registration is insufficient to give rise to rights for the purpose of the Policy. The Respondent further argues that the disputed domain names comprise three elements whereas the Complainant's mark comprises two and that "pixel" also differs from "pixels". The Respondent also contends that the term "design" is sufficient to distinguish the disputed domain names from the Complainant's trademark because of the generic nature of that trademark.
The Respondent submits that it does have rights or legitimate interests in respect of the disputed domain names. In particular, the Respondent states that it has at all material times made a bona fide offering of goods or services through its websites to which the disputed domain names resolve. The Respondent contends that it has provided logo design and other services to customers under the name "Pixels Logo Design" and produces screen prints of its relevant websites. The Respondent asserts that these websites use the Respondent's name and mark and not the Complainant's and points out that its logo and that of the Complainant are different. The Respondent says that its websites provide contact information by phone and email as well as a "live chat" facility and that the Respondent has operated the relevant websites since 2015. The Respondent says that, by virtue of these matters, it has legitimately come to be known by the name "Pixels Logo Design".
The Respondent further submits that it had no knowledge of the Complainant, its business, its website or its trademark at the time of registering the disputed domain names. It states that the Respondent is not located in Canada and that Canada is not its target market. The Respondent contends that the Complainant has failed to establish any basis upon which to find or infer that the Respondent was actually or constructively aware of the Complainant's trademark at the time it registered the disputed domain names.
The Respondent also states that it has never used the disputed domain names for the purpose of "cybersquatting" or to offer for sale to the Complainant or a competitor, and that contrary to the Complainant's assertions, its websites are not misleading. The Respondent contends in particular that the parties' respective websites look nothing alike, that the Respondent has copied nothing from the Complainant and that there has been no intention to mislead Internet users or divert business away from the Complainant.
The Respondent denies having registered or used the disputed domain names in bad faith. It repeats that it was unaware of the Complainant's trademark at the time it registered the disputed domain name or that it intended in any manner to capitalize on the Complainant's goodwill. The Respondent asserts that the Complainant has failed to provide any evidence of an intention to mislead and merely presents conclusory allegations. Concerning the quality of its service, the Respondent submits screen prints of a number of "Trustpilot" reviews and states that it has achieved an 82% "excellent" approval rating.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has a Canadian trademark registration for the mark PIXELLOGO. Both the disputed domain names combine the terms "pixels", "logo," and "design". In the view of the Panel, the combination of the terms "pixels" and "logo" render the disputed domain name confusingly similar to the Complainant's trademark and the addition of the descriptive term "design" is not effective to dispel the risk of confusion. The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel notes, however, that the test under paragraph 4(a)(i) of the Policy is a threshold test intended to establish the standing of a complainant to bring the proceedings and will not typically involve a qualitative assessment of that complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has established to the satisfaction of the Panel that it operates an online logo design business under the name "Pixels Logo Design" and that it has done so since before being made aware of the present dispute. The principal question for the Panel, therefore, is whether the Respondent's business constitutes a bona fide offering of goods or services, or whether it is in fact a sham intended to disguise the Respondent's targeting of the Complainant's trademark and the goodwill attaching to that trademark.
In this case, based on the Panel's review of the Complainant's evidence and of the Respondent's website, the Panel accepts that there is material in the public domain that is highly critical of the Respondent and its services. However, that evidence affirms that the Respondent is indeed operating a business, whether or not to general acclaim. Furthermore, the Respondent has countered the Complainant's evidence with positive publicity concerning the services it provides. In the view of the Panel, the question of whether the Respondent is offering bona fide services is not addressed to the quality or otherwise of those services, but merely to the issue of whether the business is a sham and a pretext for an improper registration. On the balance of the evidence in this case, the Panel does not find the Respondent's business to be a sham and considers it to constitute a bona fide offering of goods or services for the purposes of the Policy.
A further question arises, however, of whether the disputed domain names are inherently misleading in amounting to an impersonation of the Complainant. Certainly they are similar to the Complainant's trademarks and the additional term "design" also adds to the potential for confusion. However, in this context a qualitative assessment of the Complainant's trademark is relevant and the Panel finds in this regard that that trademark comprises the combination of two dictionary terms, namely "pixel" and "logo". A trader who adopts a trading name based on dictionary terms must accept some risk of confusion and furthermore, in this particular case, the Complainant has provided no evidence of the reputation of its trademark, particularly outside Canada. While the Panel accepts that geographical location may be of limited relevance to online services, the Panel is not persuaded on balance that an Internet user would be bound to assume that the disputed domain names are operated or authorized by the Complainant.
In the circumstances, the Complainant has failed to establish to the satisfaction of the Panel that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant therefore necessarily fails.
C. Registered and Used in Bad Faith
In the light of the Panel's finding under section B above, it is unnecessary to consider the element of bad faith in any detail. The Panel comments, however, that in order to establish bad faith the Complainant would need to establish that the Respondent both registered and has used the disputed domain name in the knowledge of the Complainant's trademark and with the intention of unfairly benefiting from the goodwill attaching to that trademark. While it is impossible definitively to determine the Respondent's state of knowledge at the time it registered the disputed domain names, the Complainant has failed to establish to the satisfaction of the Panel, on balance, that any of the indicators of bad faith set out in paragraph 4(b) of the Policy are present in this case and the Panel would not therefore find that the disputed domain names were registered and have been used in bad faith.
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Date: December 13, 2017