In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name taraconprecast.com, finding that the Complainant had failed to prove that the Domain Name had been registered and used in bad faith.
The Complainant was Terracon Consultants, Inc., an engineering consulting firm based in the United States. The Complainant had used the name "Terracon" in connection with its services and it registered the TERRACON trade mark in the United States in 2012. The Complainant also registered and used the domain name terracon.com for a website related to its services.
The Respondent was Tarracon Precast LLC, a manufacturer and supplier of precast concrete components for use as structural or architectural elements in building construction, also based in the United States. The Respondent used the name "Taracon Precast" in connection with its products and services. In 2016, the Respondent registered the Domain Name and has since used it to promote its products and services.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.
To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
Identity / similarity
Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was confusingly similar to its trade mark because (i) it was phonetically and visually similar as it consisted of a slight deviation in the spelling of the TERRACON trade mark with the non-distinguishing term "precast", (ii) it had caused actual confusion amongst consumers, as evidenced by misdirected invoices and communications that the Complainant had received from unrelated third parties and (iii) the confusion was heightened because the Respondent had used a logo on its website that was similar to a logo used by the Complainant for its services.
The Respondent rejected this claim and argued that (i) the Domain Name was not an intentional misspelling of the Complainant's trade mark, (ii) the Domain Name contained the distinguishing word "precast" which related to the Respondent's business and (iii) none of the individuals in the alleged evidence appeared to be relevant consumers of the parties' respective goods and services and there was no evidence that the alleged confusion resulted from the Respondent's use of the Domain Name with its website.
The Panel found that the Complainant met the requirements of the first element of paragraph 4(a) of the UDRP as the Complainant had provided evidence that it had registered its trade mark before the Respondent had registered the Domain Name and that the Domain Name was confusingly similar to the Complainant's trade mark as the "tarracon" portion of the Domain Name was arguably phonetically close to the trade mark.
Rights / legitimate interests
With regard to the second element of paragraph 4(a) of the UDRP, the Complainant contended that (i) the Respondent had registered the Domain Name years after the Complainant had registered its trade mark, (ii) the Respondent was fully aware of the Complainant's rights at the time the Respondent registered the Domain Name and (iii) the Respondent had used the Domain Name with a website to promote its engineering services in direct competition with the Complainant's services, which, in turn, had resulted in instances of actual confusion by consumers.
The Respondent considered that it had legitimate interests as the Domain Name correlated to its business name which had been adopted before the Complainant's complaint regarding the Domain Name. The Respondent also explained that it had used the Domain Name legitimately with a website that solely related to its business and precast products.
The Panel declined to address the issue of rights and legitimate interests because it found that the Complainant had not established the third element of bad faith registration and use.
With regard to the third element, the Complainant contended that (i) its trade mark was well known to consumers in the engineering consulting industry before the Respondent registered the Domain Name, (ii) the Respondent was aware of the Complainant and its trade mark when it registered the Domain Name to misleadingly attract internet users to a website to promote its services and (iii) consumers had been confused as evidenced by several misdirected communications that the Complainant had received.
The Respondent considered that there was no evidence that it had used the Domain Name unfairly or to take advantage of the Complainant's rights in its trade mark. The Respondent explained that its precast business was distinct from the Complainant's geotech engineering services and that the Respondent would have no benefit in trading on the Complainant's trade mark since the Complainant had no experience in manufacturing precast components.
The Panel concurred and held that the Complainant had failed to meet the requirements of the third element of paragraph 4(a) of the UDRP because the evidence did not show that the Respondent had registered the Domain Name to expressly or opportunistically exploit the Complainant's trade mark. The Panel found that the Complainant had not provided evidence regarding its claimed notoriety in the engineering consulting industry prior to the Domain Name registration. As a consequence, the Panel was not convinced that the Complainant was well known throughout the United States at the time of registration of the Domain Name. The Panel also pointed out that the evidence submitted showed that (i) the Respondent had been in the business of manufacturing and supplying precast concrete components since at least 2016, (ii) the Respondent was not a competitor of the Complainant, (iii) the Respondent had only used the Domain Name, containing the industry term "precast", for a website to promote its precast products and services which did not include anything that arguably related to or conjured up the Complainant. On the allegation of actual confusion in the form of misdirected communication, the Panel noted that even though there was a possibility that the Respondent might have had some knowledge of the Complainant and its services, the Complainant had not established that the Respondent's goal was to exploit the Complainant's rights in the trade mark for the purposes of promoting the Respondent's business manufacturing and supplying precast components. The Panel considered that none of the evidence submitted by the Complainant had established any attempt by the Respondent to capitalise in bad faith on rights that the Complainant might have enjoyed at the time that the Domain Name was registered.
The Panel indicated, in its conclusion, that any potential trade mark infringement or unfair competition claim could be brought in another forum, as the issues were beyond the scope of a UDRP proceeding.
Reverse Domain Name Hijacking
The Respondent claimed that the complaint had been brought in bad faith and constituted a case of Reverse Domain Name Hijacking as there was no basis for the Complainant's false statement that the Respondent had made use of a logo similar to the Complainant's. The Respondent however admitted that, on one page of its website, it had used an icon which bore a resemblance to the Complainant's logo. The Reverse Domain Name Hijacking claim was also based on the Respondent's argument that the Complainant had failed to disclose, in its complaint, that the Respondent was in the precast business and simply portrayed it as competing with the Complainant's engineering services.
The Panel, however, held that the Complainant's claim was not objectively unreasonable or brought in bad faith, particularly as the Complainant perhaps had a potential claim for trade mark infringement and unfair competition. The Panel noted that the Respondent had not denied that it had in fact used a logo or icon that was arguably similar to the Complainant's trade mark and that, at one point, the Respondent's website did make reference to engineering services and that the web pages submitted by the Complainant actually made reference to the Respondent's precast business. The Panel therefore denied the Respondent's Reverse Domain Name Hijacking claim.
This case illustrates how the failure to prove a registrant's intent to exploit another party's trade mark, notoriety or business at the time of domain name registration can be fatal to a claim for bad faith registration and use of the domain name.
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