WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dwight M. Sheldon v. Domains By Proxy, LLC / Cesar Lara

Case No. D2018-0984

1. The Parties

Complainant is Dwight M. Sheldon (“Complainant” or “Mr. Sheldon”) of Oregon City, Oregon, United States of America (“United States”), represented by Tonkon Torp LLP, United States.

Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Cesar Lara of Carlisle, Pennsylvania, United States, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <pantorouter.com> 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 May 3, 2018. On May 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on May 18, 2018.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. An email constituting the Response was filed with the Center on May 19, 2018.

The Center appointed Richard W. Page as the sole panelist in this matter on May 29, 2018. 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

Complainant and his fellow trademark owners Kuldeep Singh and Matthias Wandel (the “Owners”) are the owners of the PANTOROUTER Mark and registered the PANTOROUTNER Mark on the United States Patent and Trademark Office’s (“USPTO”) Principal Register (Reg. No. 4972348, dated June 7, 2016). The PANTOROUTER Mark is used in connection with “power tools, namely, router.”

As noted in the trademark registration, the Owners have been using the mark continuously in various phases of their businesses since at least 2010, before actual registration. The Complaint includes as an annex a screen capture of a YouTube video uploaded to Complainant’s website by PANTOROUTER Mark owner Matthias Wandel on December 12, 2010. The video had more than 1 million views as of May 2, 2018. Mr. Wandel’s website at “www.woodgears.ca” was referenced in the YouTube video description on December 9, 2010.

The Disputed Domain Name was registered on September 29, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends, consistent with the information provided in the PANTOROUTER Mark registration, the Owners of the PANTOROUTER Mark established common law rights at least as early as 2010. Formal registration of the PANTOROUTER Mark was on June 7, 2016.

Complainant contends that the Disputed Domain Name is confusingly similar to the PANTOROUTER Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the entirety of the PANTOROUTER Mark is contained in the Disputed Domain Name with the exception of the generic Top-Level Domain (“gTLD”) suffix “.com” which is not distinctive.

Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Complainant further alleges that neither he, nor any other of the Owners, has given permission or license to Respondent for use of the PANTOROUTER Mark.

Complainant further alleges that Respondent has not used the Disputed Domain Name for any “bona fide offering of goods” prior to notice of this dispute. Up until at least October 5, 2016, the website at the Disputed Domain Name <pantorouter.com> was an empty page saying that it was under construction. Complainant alleges that sometime after receiving a demand letter from Complainant, Respondent replaced the empty page with what is now mostly an empty shell that is under construction and offers no goods or actual services other than a vague reference to woodworking.

Complainant further alleges that Respondent is not “commonly known by” the Disputed Domain Name and Complainant has found no evidence of such. The actual registrant of the Disputed Domain Name is an individual named Cesar Lara, and he has never operated a functional website associated with the Disputed Domain Name.

Complainant argues that Respondent does not make a noncommercial or fair use of the Disputed Domain Name.

Complainant asserts that Cesar Lara had actual knowledge of the PANTOROUTER Mark before registering the Disputed Domain Name and expressly chose the Disputed Domain Name to profit off of Complainant’s trademark, either by directing traffic to Respondent’s own website in the same industry or using ownership of the Disputed Domain name as leverage for entering into a business relationship with the Owners.

Complainant avers that the Owners began using the PANTOROUTER Mark at least as early as December 2010. Respondent acquired the Disputed Domain Name on September 29, 2012, nearly two years after the Owners first began using the PANTOROUTER Mark.

Complainant further avers that in April of 2015, Complainant exchanged emails with Mr. Lara regarding the Disputed Domain Name. In this exchange, Mr. Lara stated “I saw Mathias Wandel’s video building the PantoRouter several years ago. At that time I went to his website woodgears.ca looking to buy the PantoRouter, but he only had plans and not the machine itself. The PantoRounter I think is the best machine ever invented and believe every woodworker should have it. This is why I purchased the domain name several years ago and had plans to talk to Mathias to allow me to build it using his plans and sell it to people here in the US, but I have not been able to do so yet.” This clearly shows that Mr. Lara was aware of the Owners’ use of the PANTOROUTER Mark and also that he had no rights in the mark at the time he registered the Disputed Domain Name. It also shows that he acquired the Disputed Domain Name in an effort to establish leverage for entering into a relationship with Mr. Wandel.

Complainant further avers that in August of 2016, Mr. Lara again exchanged emails with Mr. Sheldon. In this exchange, Mr. Lara forwarded to Mr. Sheldon an email exchange he had with Mr. Wandel. In that exchange with Mr. Wandel, Mr. Lara states that he is “keeping the domain name (pantorouter.com) and would like to work with you on perhaps putting a link of hybridpantorouter.com on my site until we can come up with a business solution that would the fair for all of us”. Complainant further avers that essentially Mr. Lara is holding the Disputed Domain Name that exploits the PANTOROUTER Mark hostage in an attempt to force Mr. Wandel and Mr. Sheldon to enter into a business relationship with him. Complainant argues that this is the very definition of bad faith.

Complainant continues that, despite this bad faith on Respondent’s part, Complainant and the Owners have made numerous attempts to come to a business arrangement regarding leasing or licensing the Disputed Domain Name in exchange for a business partnership, as Mr. Lara intended when he in bad faith registered the Disputed Domain Name. However, Mr. Lara’s insistence on exorbitant compensation and terms for such a lease or license have caused the parties to fail to come to an agreement.

Complainant continues that Respondent’s website as currently operated at the Disputed Domain Name <pantorouter.com> appears to be offering services in the woodworking industry. This is the same industry in which the Pantorouter® device is sold. Complainant and the Owners have not sponsored, are not affiliated with, and have not endorsed Respondent’s website or his services. Respondent is thus using the Disputed Domain Name to attract woodworking consumers interested in the Pantorouter® device to his website where he then appears to intend to offer his woodworking services instead of anything to do with the Pantorouter® device.

Complainant continues that Respondent is also clearly aware of the confusion that his use of the Disputed Domain Name is causing. On his website’s homepage, Respondent has recently placed links to the Owners’ websites. Respondent is thus aware that consumers will be confused by his use of the PANTOROUTER Mark in his Disputed Domain Name when he has no affiliation or connection with the Pantorouter® product.

B. Respondent

Respondent sent an email to the Center in which he included email communications between himself and Mr. Sheldon about the Pantorouter® device. No other Response had been filed.

Respondent notes that he registered the Disputed Domain Name on September 29, 2012. Mr. Sheldon first approached Respondent on April 13, 2015. Respondent notes that Complainant did not register the PANTOROUTER Mark until June 7, 2016. Respondent had numerous communications with Mr. Sheldon concerning a prospective partnership between Respondent and the Owners to develop the Pantorouter® device. Respondent confirms that there is no agreement between himself and Complainant or the Owners.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the PANTOROUTER Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that he has common law trademark rights in the PANTOROUTER Mark, as evidenced by his disclosures of prior use in the registration with the USPTO on June 7, 2016.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested Complainant’s assertion that he has common law trademark rights or that Complainant registered the PANTOROUTER Mark with the USPTO.

Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable trademark rights in the PANTOROUTER Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the PANTOROUTER Mark pursuant to paragraph 4(a)(i) of the Policy.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is identical or confusingly similar to a registered trademark. The Panel notes that the entirety of the PANTOROUTER Mark is in the Disputed Domain Name. As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety typically is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. SeeRapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.

Complainant further argues, and the Panel agrees, that when a Disputed Domain Name incorporates an entire trademark with only the addition of a required element like the gTLD “.com”, it is still confusingly similar to the trademark as the addition of “.com” does not eliminate the likelihood of confusion. See, F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the PANTOROUTER Mark pursuant to paragraph 4(a)(i) of the Mark.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 PANTOROUTER Mark.

Complainant further alleges that Respondent has not used the Disputed Domain Name for any “bona fide offering of goods” prior to notice of this dispute. Up until at least October 5, 2016, the website as <pantorouter.com> was an empty page with what is now mostly an empty shell that is under construction and offers no goods or actual services other that a vague reference to woodworking.

Complainant further alleges that Respondent is not “commonly known by” the Disputed Domain Name and Complainant has found no evidence of such. The actual registrant of the Disputed Domain Name is an individual named Cesar Lara, and he has never operated a functional website associated with the Disputed Domain Name.

Complainant argues that Respondent does not make a noncommercial or fair use of the Disputed Domain Name.

The Panel finds that Complainant has come forward with sufficient evidence to make a prima facie case that Respondent has no rights or legitimate interests in the PANTOROUTER Mark.

Respondent in his email exchanges with Mr. Shelton admits that he has not done any production or promotion of the Pantorouter® device. The Panel infers from these emails that Respondent is not commonly known by the Disputed Domain Name or engaged in a noncommercial or fair use of the Disputed Domain Name.

Therefore, the Panel finds that Complainant has made the requisite showing under paragraph 4(a)(ii) of the Policy that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of PANTOROUTER Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed 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

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] 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 PANTOROUTER Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor found to support a finding of bad faith is Respondent’s actual knowledge of Complainant’s trademark rights when Respondent registered the Disputed Domain Name. Complainant has alleged and Respondent has admitted that Respondent knew of Complainant’s product and registered the Disputed Domain Name based upon this knowledge. Actual or constructive knowledge of Complainant’s rights in the trademark is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).

Respondent further acknowledges that he has been negotiating for a partnership interest with Complainant and the Owners as the consideration for transfer of the Disputed Domain Name.

The Panel finds that Respondent did have actual knowledge of Complainant’s device and registered the Disputed Domain Name with the intention of profiting from development of the Pantorouter® device.

Based upon these circumstances the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <pantorouter.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: June 10, 2018