WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlphaGraphics, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2021-4243
1. The Parties
The Complainant is AlphaGraphics, Inc., United States of America (“United States”), represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <alphagraphicsorem.com> (the Domain Name) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2021, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2022.
The Center appointed Warwick Smith as the sole panelist in this matter on March 1, 2022. 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 carries on business as a franchisor in the field of custom print and marketing solutions. It has a chain of over 270 independently owned and operated marketing service providers, with full-service ALPHAGRAPHICS print shops, operating in five countries (the United States, the United Kingdom, Brazil, China, and Saudi Arabia).
There are 250 such ALPHAGRAPHICS service centers in the United States. One of them is in the city of Orem, Utah.
The Complainant also offers direct email marketing and mailing services, through its principal website at “www.alphagraphics.com”.
The Complainant was established in Arizona, United States, in 1970, and it began its franchising business in 1979. According to the Complaint, it became the first desktop publishing retailer in 1985. By the late 1980s, it had become the first United States – based printing franchise to expand internationally.
In August 2018, one of the Complainant’s franchisees in Montana, United States, was ranked 60th in the Printing News’ Top 100 Quick and Small Commercial Printers List, and the September 2019 annual survey of franchisees conducted by Franchise Business Review showed increased ratings for the Complainant in each of five key surveyed categories.
By 2017, the Complainant had become part of the global group MBE Worldwide (“MBE”). In 2019, MBE, operating with the trade marks ALPHAGRAPHICS, POSTNET, and MAIL BOXES ETC, reached over 2,600 service centers in 52 different countries.
The Complainant holds a number of United States service mark registrations for the mark ALPHAGRAPHICS, both as a word mark and in figurative form. All are on the Principal Register maintained by the United States Patent and Trademarks Office. The earliest of these registrations was a registration of the word mark on April 8, 1980, for photocopy, rapid print and mass mailbag services in International Class 35 (United States registration number 1132841). There was a further registration of the word mark in September 1986 (United States registration number 1408868), covering photocopying services in International Class 35, hard and soft cover binding services in International Class 40, and rapid printing and various other services in International Class 42.
A figurative version of the ALPHAGRAPHICS mark, with the “alpha” portion in red stylized lettering and the “graphics” portion in grey stylized lettering, was registered in August 28, 2012, covering a variety of services in International Classes 35, 38, 40 and 42 (United States registration number 4199650). There was a further registration of a figurative version of the mark (United States registration number 5415867), on March 6, 2018.
The figurative version of the mark registered in the United States under number 4199650, was also registered internationally under the Madrid Protocol, on June 22, 2010, with designations, inter alia, for the European Union, China, and Bahrain.
The Domain Name was registered on May 8, 2021. The Complainant says that it has been randomly redirected to different parking pages with commercial offers, or to third parties’ websites. It says that every attempt it made to connect to a website at the Domain Name appeared to bring it to a separate webpage.
In accordance with usual practice, the Panel attempted to visit the website at the Domain Name on March 3, 2022. That attempt was unsuccessful, as access to the site appeared to be blocked.
5. Parties’ Contentions
The Domain Name is confusingly similar to the ALPAHGRAPHICS mark, in which the Complainant has rights. The mark is wholly incorporated within the Domain Name, and the addition of the city name “Orem” serves only to suggest that the Domain Name is likely to be linked to a local Alphagraphics center in the city of Orem.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant, and the Complainant has no evidence that the Respondent is commonly known by the Domain Name.
The mark ALPHAGRAPHICS is made up of a fanciful combination of words, and that strengthens the inference that the Domain Name was registered for the purpose of misleading consumers, or to tarnish the Complainant’s mark, or to prevent the Complainant from reflecting its mark in a corresponding domain name. Given that the Domain Name entirely contains the Complainant’s trade mark, it is very difficult to conceive of any possible right or legitimate interest which the Respondent could have in the Domain Name.
The Domain Name was registered and is being used in bad faith.
First, the Respondent could not have been unaware of the ALPHAGRAPHICS mark when it registered the Domain Name. The Domain Name was registered long after the Complainant registered its ALPHAGRAPHICS trade marks, and long after the Complainant registered the <alphagraphics.com> domain name at which it operates its main website. The fact that the ALPHAGRAPHICS mark is made up of a fanciful combination of words supports the inference that the Domain Name was registered in bad faith, as does the fact that the mark has achieved notoriety, particularly in the United States where the city of Orem is situated.
Taking those matters into account, it is inconceivable that the Respondent intended to use the Domain Name in a way that was not related to the Complainant’s activities. The Respondent’s intention was most likely to capitalize on the Complainant’s reputation in its ALPHAGRAPHICS mark, by diverting Internet users seeking information about this distinctive sign to the Respondent’s own website, where sponsored links are published.
With respect to the issue of bad faith use of the Domain Name, the Domain Name randomly redirected to different webpages with commercial offers, sponsored links, and a page with an automated download of the software of a third party. That use indicates that the Respondent has been acting in bad faith to derive commercial gain, by earning commissions whenever an Internet user visits its website and clicks on one of the sponsored links.
Furthermore, redirecting to downloading pages without any verification is prima facie an attempt to use the Domain Name to share malware and scam content. UDRP panels have held that the use of a domain name for purposes other than to host a website – such as phishing or malware distribution – may constitute bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of two ALPHAGRAPHICS wordmarks in the United States. Those registrations sufficiently establish that it has rights in the ALPHAGRAPHICS mark for the purposes of paragraph 4(a) (i) of the Policy.
Turning to the question of confusing similarity, the Panel notes first that the “.com” generic Top-Level Domain (“gTLD”) is not taken into account in the comparison that is required by paragraph 4 (a)(i). 1 The only issue to be decided under paragraph 4(a)(i) is whether the “alphagraphicsorem” part of the Domain Name is confusingly similar to the Complainant’s ALPHAGRAPHICS mark.
“Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
In this case, the ALPHAGRAPHICS mark clearly is recognizable within the Domain Name, and the addition of the geographical name “Orem” does nothing to prevent a finding of confusing similarity.
For those reasons the Panel is satisfied that the Complainant has proved this element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual business or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
“While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, there is nothing to suggest that the Respondent (or any entity associated with the Respondent) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized the Respondent to use its ALPHAGRAPHICS mark, whether in a domain name or otherwise. On the evidence, there is no basis on which the Respondent might have contended for a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy.
The Respondent has not been using the Domain Name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, and there is no evidence that the Respondent has made any “demonstrable preparations” for any such use. The Domain Name has allegedly been used to redirect Internet users to third parties’ websites, apparently for the purpose of deriving pay-per-click (“PPC”) or similar revenue.
That use is insufficient to establish any bona fide offering of goods or services. The position under the Policy is summarized in WIPO Overview 3.0, section 2.9, as follows:
“Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”
In this case, the Domain Name does not consist of a dictionary word or phrase. It consists of a fanciful combination of two words, each common enough on its own but with no dictionary meaning in combination, coupled with the name of a city. It is hard to imagine that the Respondent could have selected the Domain Name without having the Complainant’s mark in mind, and the likelihood in those circumstances is that the Respondent’s intention was indeed to trade off the Complainant’s goodwill in its mark.
Nor is there any evidence to support any right or legitimate interest under the “legitimate noncommercial or fair use” provisions of paragraph 4(c)(iii) of the Policy. Pointing a disputed domain name to websites containing sponsored links to third party websites, shows that the domain name has not been put to a noncommercial use, and the deliberate, unauthorized use of a trade mark owner’s mark in a disputed domain name for commercial gain could not, at least in normal circumstances, amount to a fair, or legitimate, use of the domain name.
For those reasons the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move to the Respondent the onus of showing that the Respondent has some right or legitimate interests in respect of the Domain Name.
In the absence of any Response, the Respondent has not discharged that onus. The Complainant has therefore made out its case under paragraph 4 (a) (ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder 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 holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
The Panel accepts that the Complainant has also proved this element of the Complaint.
First, the Panel’s findings that the Domain Name is confusingly similar to the Complainant’s ALPHAGRAPHICS mark, and that the Respondent has no rights or legitimate interests in respect of the Domain Name, are in combination consistent with the possibility of bad faith on the part of the Respondent.
Secondly, the Panel accepts the Complainant’s submission that the Respondent must have been aware of the Complainant and its mark when the Domain Name was registered. It is true that there is no direct evidence of where the Respondent resides or carries on business (because of the use of a privacy shield when the Domain Name was registered), but the use of the name of a fairly small United States city in the Domain Name suggests that the Respondent either resides in the United States, or is at least familiar with the state of Utah, where Orem is located. The fact that there is an ALPHAGRAPHICS print shop in Orem tends to reinforce the view that the Respondent was aware of both the Complainant and the Orem print shop.
Thirdly, the Complainant’s mark consists of a made-up combination of words, which are inherently more likely to have been copied in the Domain Name than selected by chance.
Fourthly, the Panel considers it highly likely that anyone registering a domain name consisting of the expression “alphagraphics” coupled with the name of a city, would have checked who held the domain name <alphagraphics.com> before proceeding with the registration. That check would have immediately led to the Complainant and its business.
Taking those factors into account, and noting that the Respondent has not filed any Response, the Panel finds that the Respondent was probably aware of the Complainant and its ALPHAGRAPHICS mark when the Domain Name was registered.
It is difficult to conceive of any use to which the Respondent might have put the Domain Name that would not have misled some Internet users into believing that any website at the Domain Name would be that of the Complainant or one of its franchisees, or would at least be associated or affiliated with, or endorsed in some way by, the Complainant. Those familiar with the Utah city of Orem, in particular, would be likely to assume that such website would feature an “Alphagraphics” print shop in Orem.
In the absence of any contrary explanation from the Respondent, the Panel infers that, in registering the Domain Name, the Respondent intended to create that misleading impression, and that the Domain Name was thus registered in bad faith.
Turning to the issue of bad faith use of the Domain Name, the submitted use appears to have been the linking of the Domain Name to a number of different websites of third parties, containing sponsored links designed to generate revenue. The Respondent has not denied such use, and in the absence of a denial the Panel accepts the Complainant’s assertion that that is what has occurred. That use is precisely the kind of use at which paragraph 4 (b)(iv) of the Policy is directed – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or online locations, by creating a likelihood of confusion with the Complainant’s ALPHAGRAPHICS mark as to the source, sponsorship, affiliation or endorsement of the websites or other online locations to which the Domain Name has resolved.
That is enough to resolve the Complaint in the Complainant’s favor, and there will be an order for transfer of the Domain Name accordingly. It is not necessary to address the Complainant’s submissions relating to malware, scams, phishing or other bad faith behavior.
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, <alphagraphicsorem.com>, be transferred to the Complainant.
Date: March 4, 2022
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), notes at section 1.11 that the gTLD is a standard registration requirement, and as such is disregarded when applying the confusing similarity test under paragraph 4 (a)(i) of the Policy.
2 Orem, being a city in the state of Utah, United States.