WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

T.W. Clark Construction, LLC v. Willa Kinn

Case No. D2019-1216

1. The Parties

The Complainant is T.W. Clark Construction, LLC, United States of America (“United States”), represented by Lee & Hayes, United States.

The Respondent is Willa Kinn, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <twclarkconstruction.com> (“Domain Name”) is registered with One.com A/S (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019. On May 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 6, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on June 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2019.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 10, 2019. 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 July 11, 2019, the Panel issued Procedural Order No. 1 to the Parties, the relevant text being reproduced below.

“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties”.

The Panel notes that:

1. The Complaint and Amended Complaint do not provide any evidence that the Complainant owns a registered trade mark, rather the Complainant asserts that it is the owner of the United States common law trade marks TW CLARK and TW CLARK CONSTRUCTION for use in commercial and private construction services.

2. Section 1.3. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides in response to the question: “[w]hat does a complainant need to show to successfully assert unregistered or common law trademark rights?”, that

“[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

3. The Complainant, other than an assertion of use and a print-out of three pages of its website provides no specific evidence supporting its assertions of common law trademark rights in TW CLARK and TW CLARK CONSTRUCTION.

Therefore the Panel makes the following orders:

1. The Complainant has until July 15, 2019, to file any supplemental statements or documents providing any additional information that would establish that it holds unregistered or common law trade mark rights in TW CLARK and TW CLARK CONSTRUCTION.

2. The Respondent shall thereafter have until July 19, 2019, to file any response to the Complainant’s supplemental statement(s).

3. Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to [email]@wipo.int for forwarding to the Panel.

4. The Panel will deliver its decision on or before August 1, 2019.

Neither party provided a timely reply or additional information in response to Procedural Order No. 1 but on July 29, 2019 the Complainant filed a request for an extension and on August 3, 2019, before the Panel issued its decision, the Complainant filed a response to Panel Order 1 in the form of a declaration of Steve Sunleaf, owner of the Complainant, providing additional information in respect of unregistered or common law trade mark rights held by Complainant in TW CLARK and TW CLARK CONSTRUCTION.

On August 5, 2019, the Panel issued Procedural Order No. 1 to the Parties, the relevant text being reproduced below.

“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties”

The Panel notes that:

1. The Complainant on August 3, 2019 filed a response to Panel Order 1 (“Additional Evidence”). Complainant’s Additional Evidence was filed outside the deadline for the filing of additional information set out in Panel Order 1 however the Panel has exercised its discretion to admit the Additional Evidence.

Therefore the Panel makes the following orders:

2. The Respondent shall thereafter have until August 19, 2019 to file any response to the Additional Evidence.

3. Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to [email]@wipo.int for forwarding to the Panel.

4. The Panel will deliver its decision on or before August 29, 2019.

The Respondent did not file any response to the Additional Evidence.

4. Factual Background

The Complainant is a company based in Washington State, United States, that was founded in 1998 and provides construction services. The Complainant does not hold any registered trade marks though it alleges that it has common law trade mark rights in TW CLARK and TW CLARK CONSTRUCTION (the “TW CLARK Marks”).

The Domain Name <twclarkconstruction.com> was registered on January 25, 2019. The Domain Name is inactive and there is no evidence of any website use. The evidence in the Complaint is that the Respondent has used use the Domain Name <twclarkconstruction.com> as the return address for at least one email which was sent by the Respondent but purported to be an official email from representatives of the Complainant, giving directions for the payment of funds to an account unconnected to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s TW CLARK Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

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

The Complainant is the owner of the TW CLARK Marks having common law rights in the TW CLARK Marks. Complainant has used the TW CLARK Marks continuously since 1998 for its advertising and sales including on its website, e-mail, letterhead, construction site banners and construction bids. The Domain Name utilizes the TW CLARK Marks in their entirety as the primary portion of the Domain Name.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the TW CLARK Marks. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name is used for emails impersonating the Complainant, which does not grant the Respondent rights or legitimate interests in the Domain Name.

The Domain Name was registered and is being used in bad faith. The Domain Name is being used, amongst other things, to create emails to impersonate the Complainant for the purpose of directing that amounts be paid to bank accounts other than those operated by the Complainant. This amounts to an attempt to perpetuate fraud.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant does not appear to own any registered trade marks, rather it asserts that it has common law rights in the TW CLARK Marks.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states, in response to the question: What does a complainant need to show to successfully assert unregistered or common law trademark rights?

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.

As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.

Also noting the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.

The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.

Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.

The Complaint addresses the question of whether the Complainant has common law trade mark rights as follows:

T.W. Clark Construction, LLC is the owner of United States common law trademarks TW CLARK and TW CLARK CONSTRUCITON, for use in connection with commercial and private construction services. Attached as Annex 4 is a screenshot from T.W. Clark’s website that demonstrates the use of its mark…The TW CLARK and TW CLARK CONSTRUCTION trademarks have been in use since 1998.

The Complainant’s Additional Evidence provides additional evidence as the manner in which the TW CLARK Marks have been used.

In the present case the Complainant has used the TW CLARK Marks for over 20 years as distinctive identifiers of the Complainant’s construction services. During the 20 years, the TW CLARK Marks have been advertised on the Complainant’s website, email, letterhead, construction site banners, and other marketing material. While there is limited evidence in the Complaint of the Complainant’s size or geographical reach, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trade mark rights (and as a result, standing) under the Policy.

An additional relevant factor in determining whether the Complainant has rights is the Respondent in acquiring the Domain Name and using it for fraudulent email purposes, has clearly targeted the Complainant’s TW CLARK Marks, which supports the assertion by the Complainant that the TW CLARK Marks have acquired a relevant reputation. While the evidence in the Complaint is somewhat limited, on balance the Panel finds that the Complainant does have sufficient common law or unregistered trade mark rights in the TW CLARK Marks arising from its 20 years use to satisfy the requirements under the Policy.

The Panel finds the Domain Name is identical to the Complainant’s TW CLARK CONSTRUCTION Mark and confusingly similar to Complainant’s TW CLARK Mark (as it wholly incorporates the TW CLARK Mark along with the term “construction” which is descriptive of Complainant’s services). Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the TW CLARK Marks or a mark similar to the TW CLARK Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name to send emails passing itself off as the Complainant and directing that payments be made to particular accounts unconnected to the Complainant. Such fraudulently conduct is not a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create at least one email account from which the Respondent sends emails purporting to be from the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the TW CLARK Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent is using the Domain Name to send spoof emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be per se evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <twclarkconstruction.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: August 21, 2019