Sani-tred.com

The timeline behind sani-tred.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Ideal Products, LLC v. Manila Industries, Inc. Claim Number: FA0610000819490 PARTIES Complainant is Ideal Products, LLC (“Complainant”), represented by Steven L. Smilay, of Botkin & Hall, LLP, 105 E. Jefferson Blvd., Suite 400, South Bend, IN 46601-1913. Respondent is Manila Industries, Inc. (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker PO Box 703431, Dallas, TX 75370. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <sani-tred.com>, registered with Compana, Llc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Bruce E. O'Connor as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006. On October 16, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <sani-tred.com> domain name is registered with Compana, Llc and that the Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 9, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@sani-tred.com by e-mail. A timely Response was received and determined to be complete on November 9, 2006. On November 14, 2006, an Additional Submission from Complainant was received and determined to be proper in accordance with Rules 7(a) and 7(b) of the National Arbitration Forum's Supplemental Rules (the "Supplemental Rules"). On November 20, 2006, a Respondent's Objection and Reply to Complainant's Additional Submission was received and determined to be proper in accordance with Rules 7(c) and 7(d) of the Supplemental Rules. On November 15, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist. RELIEF SOUGHT Complainant requests that the domain name at issue be transferred from Respondent to Complainant. PROCEDURAL ISSUE Respondent contends that the Panel should not consider the Additional Submission of Complainant. First, Respondent contends that Rule 7 of the Supplemental Rules is an improper modification of Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), that calls for a complaint and a response and further statements or documents from either of the parties in the sole discretion and at the request of the Panel. The Panel finds it unnecessary to rule on this point, because it welcomes the Additional Submission and the Reply and exercises its discretion to accept those filings in accordance with Rules 7(a)-7(d) of the Supplemental Rules and Rules 10(a)-(d) and 12 of the Rules. Second, Respondent contends that the Additional Submission is beyond the scope of Rule 7 of the Supplemental Rules (Rule 7(f) expressly states that additional submissions must not amend the complaint or the response) and is an end-run around the 10 page limitation on the Complaint imposed by Supplemental Rule 4(a). The Panel finds that the Additional Submission does not amend the Complaint, but only responds to the arguments made by Respondent in its Response. The Panel also finds that the Reply does not amend the Response, but only responds to the arguments made by Complainant in its Additional Submission. The Panel also has the authority to waive the page limitations for the Additional Submission and the Reply under Rules 10(a)-(d) of the Rules. Thus, both the Additional Submission and the Reply have been considered in this Decision. PARTIES’ CONTENTIONS A. Complainant Complainant's SANI-TRED trademark is the subject of U.S. Trademark Registration No. 2,950,830. This registration issued on May 17, 2005, and was based on an application filed April 30, 2002 that claimed a date of first use and first use in commerce of April 23, 1993. This registration protects the mark for "liquid surface coatings for floors and walls." The domain name at issue is the same as Complainant's trademark. A website operated by Respondent using that domain name is a referral site which draws viewers to it by confusing them into thinking that they are going to a website using the <sanitred.com> domain name that has been in operation since 2003. At the website, viewers are referred to a variety of businesses, which are in competition with Complainant. Complainant has no affiliation with Respondent and has never authorized or consented to the use of its trademark in connection with this Web site or otherwise. Customers of Complainants are being confused by the existence of this website into thinking that it is connected with or authorized by Complainant. Complainant supports these contentions with corresponding exhibits and declarations. Complaint contends that Respondent has a history of using domain names for other than legitimate purposes (but refers only to a case involving a company whose name is similar to that of the Registrar in this matter). B. Respondent Respondent acquired the domain name at issue on February 15, 2005. On that date, Complainant had no right to the SANITRED trademark. Respondent points to cancellation of Complainant's U.S. Registration on March 28, 2001, to abandonment of Complainant's application for U.S. registration of SANI-TREAD on October 10, 2001, to abandonment of Complainant's application for U.S. registration of SANITREAD on February 21, 2003, and to the pendency of Complainant's application for U.S. registration of SANI-TRED. Complainant has failed to establish trademark rights from use, noting that the declarations submitted with the Complaint fail to address this issue and that the Complaint does not in way support the contention that the trademark has been in use since 1993. Respondent submits prints from an archival search (conducted on November 9, 2006) of Web sites of several newspapers of national import from January 1, 1993 through February 15, 2005, which found no stories having references to the SANI-TRED trademark. Respondent also submits prints of searches on the Web using Google and Dogpile (conducted on November 9, 2006) showing no references to the SANI-TRED trademark. Respondent is using the domain name at issue at its website that is an advertising portal that provides access to a broad range of services, and the fact that Respondent is developing advertising revenues at that website demonstrates its legitimate interest in operating the site. The links at that website are sponsored links provided by others, e.g., Google. Respondent registered the domain name at issue because Respondent believed the domain name was a term to which no party had established secondary meaning. Respondent registers thousands of names, looking for commonly used, generic, descriptive terms to which no party had exclusive rights, evidencing its good faith intent in the present matter. Given the lack of Complainant's trademark rights and Respondent's legitimate interest, it must follow that Respondent did not register and is not using the domain name in dispute in bad faith. C. Additional Submissions Complainant contends that the SANI-TRED trademark is not descriptive or generic, having been registered twice by the U.S. Patent and Trademark Office. Thus, evidence of secondary meaning through extensive use and advertising is not required to establish Complainant's trademark rights. Complainant submits prints of downloads from Merriam-Webster's Web site at <m-w.com> showing that neither SANI nor TRED nor SANI-TRED are words in the English language. If secondary meaning were required, that is established by the declarations submitted with the Complainant showing multiple instances of actual consumers seeking to find Complainant's products by searching for the trademark SANI-TRED. Complainant also submits a print of the first 10 pages of a Google search, finding over 20,000 references to SANI-TRED and contends that the overwhelming majority of the references refers or relate to Complainant's products. Complainant contends that Respondent’s business model, of providing an advertising portal, would not work unless Complainant had trademark rights in SANI-TRED, pointing out that no one would use a word that is a descriptive or generic term until it had acquired secondary meaning. Complainant contends that Respondent has provided no support for its belief that the domain name at issue was a term to which no party had established secondary meaning. Complainant contends that Respondent's registration and use of the domain name in dispute was in good faith cannot be taken at face value, given the fact that SANI-TRED is neither common, generic, descriptive, nor geographically descriptive. Complainant makes reference to three prior cases in which Respondent was found to have engaged in bad faith registration and use of the domain names in those cases. Respondent points out that as of the registration date of the domain name at issue, Complainants did not own a federal registration for the SANI-TRED trademark. The search results on Google conducted now are irrelevant to the period in question from 1993 thorough 2005, because Google only allows for searches that go back to November 2005, nine months after registration of the domain name at issue. Respondent submits a print of a Dogpile search for the period prior to registration of the domain name at issue, with no other limitation on date. This print shows no Google references for SANI-TRED. Respondent contends that SANI-TRED is descriptive, with "sani" being quite clearly a shortened term of the word sanitary and "tred" being a homophone for the word tread. The combination clearly calls to mind a "sanitary tread" which is quite descriptive of Complainant's business, which includes floor and deck coverings. Complainant has failed to show secondary meaning, and any rights gained by Complainant subsequent to registration of the domain name are irrelevant. Respondent employs a software program that selects domain names automatically, based on proprietary algorithms that assess popular, unregistered keywords, and transmits them electronically for registration, without human intervention. The purpose is to acquire generic and descriptive names, geographically descriptive designations, surnames, and acronyms for future use. Pending such use, the names are "parked" with a domain name parking service, and the parking service engages a publicly traded searching service to provide hypertext content and sponsored links. Each of these activities is conducted electronically, and Respondent is not responsible for the content appearing on the parked sites. Once notified by a holder of a registered mark, Respondent has its attorneys review the domain name in question and transfers it to the holder upon receiving a formal notice of request if the domain name is likely to infringe the registered mark. Respondent notes that the three cases cited by Complainant in its Additional Submission were instances where a response was not filed and the cases were decided based solely on the complaint. Therefore, there is little in the way of precedent to be found to be relevant to the case at hand. Respondent points out that the burden to establish [no] rights or legitimate interest in the domain name at issue falls on the Complainant, which then shifts the burden to the Respondent. Respondent's legitimate interest is evidenced by its transfer of many domain names to owners of both common law and federally registered marks over time. Respondent contends that Complainant has focused only on bad faith use. Complainant cannot show bad faith registration, as required, because Complainant did not have and was having trouble obtaining a federally registered trademark at the time of domain name registration. FINDINGS The Panel finds that Complainant's references to the Registrar here are irrelevant and have not been considered. The Panel finds that Complainant has not introduced evidence of the acquisition of secondary meaning for the SANI-TRED trademark. However, the Panel finds that such acquisition is not required due to federal registration of the trademark, as discussed below. The Panel finds that Respondent has not introduced evidence of its transfer of domain names to holders of trademarks and that such facts have not been considered. Otherwise, the Panel accepts the factual contentions of Complainant and Respondent. DISCUSSION Rule 15(a) of the Rules instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel finds that Complainant has established trademark rights in the SANI-TRED trademark, through introduction of the certificate for its U.S. registration for that trademark. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration. 15 U.S.C. §1057 (b). Respondent's introduction of and references to archival and Web searches, and Complainant's failure to establish secondary meaning in its Complaint, do not overcome the presumptions afforded by 15 U.S.C. § 1057. The SANI-TRED mark does not bring to mind the "liquid surface coatings for floors and walls" that are the precise goods for which Complainant has registered its trademark. The Respondent's remedy is to attack the trademark registration through a petition for cancellation, which action Respondent has failed to undertake. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”). The Panel finds that the domain name at issue is confusingly similar to that trademark, being identical except for addition of the generic top-level domain ".com." See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). The website being operated by or for Respondent using the domain name in dispute includes links to other websites offering coatings of the type for which the SANI-TRED trademark has been protected. The instances of actual confusion evidenced by the declarations submitted by Complainant, although hearsay, support this conclusion. The Panel finds that Complainant has met its burden under Paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice of the dispute, the Respondent’s 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 and services; or (ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The facts here do not establish the circumstances of Paragraphs 4(c)(ii) or Paragraph 4(c)(iii). There is no contention that Respondent has been commonly known by the domain name, and Respondent concedes (and in fact emphasizes) that it is making commercial use of the domain name at the website operated by or for Respondent. The circumstances of Paragraph 4(c)(i) are also not established. Respondent makes much of the fact that it obtained the domain name at issue before registration of the trademark. Although Complainant makes little of the fact in its Complaint, the application for U.S. registration of the trademark was filed well in advance of registration of the domain name at issue. The U.S. Trademark Act is clear that, once registration has occurred, the filing of the application to register the mark is constructive use of the mark, giving a nationwide right of priority on or in connection with goods specified in the registration, with certain exceptions not pertinent here. I5 U.S.C. § 1057(c). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). As of April 30, 2002 (the filing date of the application for U.S. registration of SANI-TRED), Respondent was on notice of Complainant's trademark rights. Respondent cannot say that its preparation to use the domain name was without notice of the dispute, or that its use of the domain name was a bona fide offering of goods or services, given that notice. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Respondent argues that computers operating without human intervention do registrations and use of its domain names. By Respondent's own admission, this computer search assesses popular, unregistered keywords and then automatically obtains domain name registrations for those found in the search. Respondent does do another search when given actual notice of another's trademark. Why does Respondent not program its computers to disregard keywords that are the subject of pending applications for U.S. registration, before it registers domain names? Ignorance may be bliss in love, but not at law and certainly not in the registration and use of domain names. The reckless activity engaged in by Respondents cannot come to its defense. The Panel finds that Complainant has met its burden under Paragraph 4(a)(ii) of the Policy. Registration and Use in Bad Faith Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith under Paragraph 4(a)(iii) of the Policy. The circumstances of Paragraphs 4(b)(ii) and (iv) appear to be pertinent: (ii) you have registered the 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... (iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. Respondent's bad faith registration is evidenced by 1) its registration of the domain name at issue well after the effective date (the application filing date) of the trademark SANI-TRED (see the cases cited above) and 2) its pattern of conduct in other, similar cases as reported by Complainant and not contested by Respondent. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy Paragraph 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith). Respondent's bad faith use is evidenced by the operation of a website by or for Complainant that includes links to other manufacturers of coatings. Respondent admits that the site is for commercial gain. Since Complainant has no control over that website, the net result is a likelihood of confusion with the SANI-TRED trademark as to the source, sponsorship, affiliation, or endorsement of the website by Complainant. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Respondent cannot duck its responsibility for the site by saying that others choose the content. Passive holding of a domain name is neither evidence of or against bad faith, and must be evaluated in light of all of the circumstances relating to the domain name. See Telstra Corporation Limited v.NuclearMarshmallows, D2000-0003 (WIPO Feb. 18, 2000). The Panel thus finds that Complainant has met its burden under Paragraph 4(a)(iii) of the Policy. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <sani-tred.com> domain name be TRANSFERRED from Respondent to Complainant. Bruce E. O'Connor, Panelist Dated: November 26, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.