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Ice House America, LLC v. Ice Igloo, Inc. [2005] GENDND 1261 (29 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ice House America, LLC v. Ice Igloo, Inc.

Case No. D2005-0649

1. The Parties

The Complainant is Ice House America, LLC, Atlantic Beach, Florida, United States of America, represented by Holland & Knight LLC, United States of America.

The Respondent is Ice Igloo, Inc., C/O Mike Martuch, Cocoa Beach, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <icehouseamerica.com> and <icehouseamerica.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2005. On June 22, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On June 24, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2005. The Response was filed with the Center on July 16, 2005.

The Center appointed William R. Towns as the Sole Panelist in this matter on July 25, 2005. 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 is in the ice vending business, and manufactures and sells a modular building (the “Ice House”) that produces, stores, bags and vends ice to consumers. The logos “ICE HOUSE AMERICA” and “TWICE THE ICE” are prominently displayed in the Complainant’s advertising and promotional materials and on the modular units offered for sale to the public. The Complainant has applied to the United States Patent and Trademark Office (USPTO) to register ICE HOUSE AMERICA with respect to “ice vending machines” and the “manufacturing, distributing and retail services in the field of ice vending machines. The Complainant’s pending trademark applications, filed on March 29, 2005, reflect the Complainant’s first use of ICE HOUSE AMERICA in commerce on January 1, 2004.

The Respondent registered the disputed domain names <icehouseamerica.com> and <icehouseamerica.net> on February 24, 2004. The Respondent is also in the ice vending business, and markets a similar stand alone ice vending machine (the “Ice Igloo”). The Complainant and the Respondent both are situated in Florida, and compete in connection with the sale of free standing ice making and vending units. The Respondent has made no active use of the disputed domain names, both of which currently resolve to “under construction” web pages maintained by the domain name registrar, Network Solutions, LLC.

5. Parties’ Contentions

A. Complainant

The Complainant contends that is has established common law rights in ICE HOUSE AMERICA based on its use in commerce since January 1, 2004. The Complainant has filed two applications with the USPTO seeking to register the mark in connection with its products and services, both or which are presently pending. The Complainant asserts that the disputed domain names registered by the Respondent are identical or confusingly similar to its trademark and service mark, and claims that the Respondent has no rights or legitimate interests in the domain names.

The Complainant further contends that the Respondent, a direct competitor of the Complainant, has registered and is using the domain names in bad faith solely for the purpose of blocking the Complainant from registering such names and thereby disrupting its business. The Complainant has submitted the Declaration of a prospective distributor of the Complainant, David Perry, who attempted to locate the Complainant by reference to one of the disputed domain names, <icehouseamerica.com>. After conducting a Whois data search, Perry contacted the Respondent under the mistaken belief that the Respondent was the source of ICE HOUSE AMERICA products and services. According to the Declarant, the Respondent’s representative Mike Martuch then attempted to dissuade him from contacting the Complainant.

B. Respondent

The Respondent contends that the Complainant has established no common law trademark rights in ICE HOUSE AMERICA. The Respondent argues that the Complainant has submitted no evidence that would demonstrate its use of the mark in commerce prior to the Respondent’s registration of the disputed domain names. Rather, the Respondent maintains that “TWICE THE ICE” is the slogan by which the Complainant is commonly known in the ice industry. The Respondent further asserts rights or legitimate interests in the disputed domain names on the grounds that it registered them with the expectation of using them in the ice industry, and denies any bad faith because it has made no effort to use the disputed domain names to the detriment of the Complainant. Nor, according to the Respondent, has the Complainant been prevented from registering domain names corresponding to the alleged mark.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

There is no question for purposes of paragraph 4(a)(i) that the disputed domain names <icehouseamerica.com> and <icehouseamerica.net> are identical to ICE HOUSE AMERICA, in which the Complainant asserts rights. See Lockheed Martin Corporation. v. Dan Parisi, WIPO Case No. D2000-1015; The Salvation Army v. Info-Bahn, Inc., WIPO Case No. D2001-0463. Nor under paragraph 4(a)(i) is it necessary for the Complainant to demonstrate that its rights in the mark arose prior to the Respondent’s registration of the disputed domain names. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. See PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437.

Accordingly, the critical issue, as raised by the Respondent, is whether the Complainant has established common law trademark or service mark rights in ICE HOUSE AMERICA, since the Complainant has yet to obtain registration of the mark. The term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). In short, common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, [1996] USCAFED 239; 77 F.3d 1372 (Fed.Cir. 1996).

The Respondent’s claim that there is no evidence to support the Complainant’s assertion of common law rights is unpersuasive. Both the Complainant’s advertising and promotional materials and its modular products offered for sale to the public prominently display the ICE HOUSE AMERICA logo. The fact that David Perry sought to contact the Complainant through an internet search for “icehouseamerica” is anecdotal evidence that the public indeed has come to identify ICE HOUSE AMERICA with the Complainant’s goods and services. In addition, the initial interest confusion arising from the Respondent’s registration of two domain names reflecting ICE HOUSE AMERICA is compelling circumstantial evidence of public identification of the Complainant as the source of the goods and services marketed under the ICE HOUSE AMERICA name.¹

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant notes that the Respondent has not been commonly known by the disputed domain names <icehouseamerica.com> and <icehouseamerica.net>, and that the Respondent has never used “ICE HOUSE AMERICA” in any advertising or promotional materials respecting its products or services. The Respondent does not deny this. The Complainant further observes that the parties are direct competitors located in proximity to one another in the State of Florida, and that the Respondent thus would have been aware of the Complainant’s use of the ICE HOUSE AMERICA name at the time the Respondent registered the disputed domain names. The Respondent has not disputed this.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii). The circumstances set forth in the Complaint are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial 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.

The Respondent has not claimed to be making any noncommercial use of the disputed domain names. To the contrary, the Respondent states that it has made no commercial or noncommercial use whatsoever of the disputed domain names since acquiring them in February 2004. Nor has the Respondent offered any evidence of demonstrable preparations to use the domain names in connection with any bona fide offering of goods or services. The Respondent’s claim to have registered the disputed domain names with a view to the possible acquisition of an ice production facility called The Ice House is not a sufficient showing under paragraph 4(c)(i).

Hence, the Respondent has failed to establish rights to or legitimate interests in the disputed domain names under any of the specific provisions of paragraph 4(c). The Respondent also argues, however, that the disputed domain names consist entirely of common words that would be of interest as domain names in the ice industry, and that it registered the domain names in anticipation of such commercial use. While there are Panel decisions holding that the UDRP was not intended to permit a party who utilizes a common word as trademark or service mark from barring domain name registrants from using the common word in combination with other common words, See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230, those decisions clearly are inapposite in the context of this case. Here, the Respondent has registered two domain names that are identical to the mark of a direct competitor – a mark that is distinctive and does not consist merely of one common word.

Accordingly, the Panel concludes that the Complainant has met its burden under paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt 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 its website or location.

The circumstances of this case lend credence to the Complainant’s contention that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its mark in a corresponding domain name, but proof that the Respondent has engaged in a pattern of such conduct – a requirement under paragraph 4(b)(ii) – is lacking. Similarly, the fact that the Respondent has made no active use of the domain names for almost one and one-half years ago tends to militate against the Complainant’s contentions of bad faith registration and use under paragraphs 4(b)(iii) and (iv), although the Complainant has offered unrebutted anecdotal evidence that on one occasion the Respondent attempted to dissuade a consumer who visited its website from doing business with the Complainant.

The Panel notes, however, that the examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Under Telstra, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. The Telstra requirements are met where “the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (emphasis in original).

The Panel finds from the totality of the circumstances that the Respondent registered the disputed domain names in bad faith and that the Respondent is continuing to act in bad faith. The circumstances plainly reflect the Respondent’s adoption of the disputed domain names in order to prevent the Complainant from registering gTLD “.com” and “.net” domain names corresponding to its mark. The Respondent’s protestations to the contrary lack credibility. Further, under the circumstances of this case, the Panel cannot conceive of any plausible actual or contemplated active use the Respondent could make of domain names that would not infringe on the Complainant’s rights.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <icehouseamerica.com> and <icehouseamerica.net>, be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: July 29, 2005