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Stephen Fossler Company v. LaPorte Holdings [2005] GENDND 1428 (29 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stephen Fossler Company v. LaPorte Holdings

Case No. D2005-0697

1. The Parties

The Complainant is Stephen Fossler Company, Crystal Lake, Illinois, United States of America, represented by Seyfarth Shaw LLP, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <stephenfossler.com> and <stephenfosslercompany.com> are registered with NameKing, Inc. Los Angeles, California, United States of America, operating as “nameking.com.”

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2005. On July 1, 2005, the Center transmitted by email to Nameking.com a request for registrar verification in connection with the domain names at issue. On July 2, 2005, Nameking.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 15, 2005. The Center verified that the Complaint together with the amendment to 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 July 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on August 9, 2005.

The Center appointed Timothy D. Casey as the sole panelist in this matter on August 18, 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

Stephen Fossler Company is a manufacturer and provider of embossed foil seals, as well as plaques, pens, mugs, stationary, and other personalized business marketing or promotional products. Stephen Fossler Company is the owner of the United States Trademark for the word mark STEPHEN FOSSLER COMPANY (Serial No. 78493747), in International Class 016 for personalized embossed foil seals (first used in the United States of America in 1970), and in International Class 035 for mail order catalog services and online ordering services featuring personalized embossed foil seals; printed matter; personalized promotional items; key tags/rings; signs and banners; plaques, etc. (first used in the United States of America in 1999). Stephen Fossler Company is the owner of the United States Trademark for the design mark STEPHEN FOSSLER COMPANY (Serial No. 78493764), in the same International Classes, for the same goods, and claiming the same first use as the word mark. Stephen Fossler Company is also the owner of the United States Trademark for the word mark FOSSLER (Serial No. 78492793), in the same International Classes, for the same goods, and claiming the same first uses as the above marks.

According to records available via the Internet Archive’s Wayback Machine, from at least November 25, 2002 to September 23, 2004, the <stephenfossler.com> domain name resolved to a website including specific links to providers of seals, labels, banners, anniversary items and other marketing and promotional items, as well as the names STEPHEN FOSSLER and STEPHEN FOSSLER COMPANY. The Internet Archive included no records regarding the <stephenfosslercompany.com> domain name. Complainant provided copies of the home page from the website corresponding to the <stephenfossler.com> domain name and a copy of a nearly identical home page from the website corresponding to the <stephenfosslercompany.com> domain name. Neither disputed domain name currently resolves to any active website.

5. Parties’ Contentions

A. Complainant

Complainant has been a leading supplier of personalized embossed foil seals, printed matter and newspapers for use in business advertising since 1970, under the STEPHEN FOSSLER COMPANY and FOSSLER trademarks (herein “the Fossler Marks”). Complainant has also used the FOSSLER Marks in conjunction with the goods recited within the International Class 035 trademark registration since 1999. Complainant asserts ownership of the FOSSLER Marks registered with the United States Patent and Trademark Office as set forth in Section 4 above.

Complainant owns the domain names <fosslerseals.com> and <stephen-fossler.com>, which resolve to Complainant’s website at which Complainant promotes and advertises its goods and services. Complainant has owned these domain names since 1996 and 2004, respectively. Complainant states that the disputed domain names are identical or confusingly similar to the FOSSLER Marks and Complainant’s domain names.

Complainant asserts that Respondent has no rights or legitimate interest in respect of the disputed domain names. Complainant is unaware of any use, attempted use or demonstrable preparations to use the disputed domain names with a bona fide offering of goods and services, or that Respondent has ever been commonly known by the disputed domain names. Respondent makes no legitimate non-commercial or fair use of the disputed domain names, but rather uses the disputed domain names to intentionally, misleadingly divert consumers or to tarnish the FOSSLER Marks for Respondent’s commercial gain. Complainant asserts that the disputed domain names resolve to a web page that “purports to be a search portal for seals, labels, banners, among other products.” Complainant has not authorized or licensed Respondent to use the FOSSLER Marks.

Complainant effectively asserts that Respondent is engaged in the business of cybersquatting. In addition to the particular use being made by Respondent of the disputed domain names, Complainant points to nine prior UDRP decisions involving Respondent, as well as an individual (Henry Chan) and another company (Horoshiy, Inc.) allegedly operating as Respondent’s alter egos. In each of these cases, the Respondent (or its alter ego) was found to have registered and used the disputed domain names in bad faith. The concerned cases are the following:

- Krome Studios Pty, Ltd v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707,

- Societe des Hotels Meridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849,

- Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611,

- Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620,

- Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625,

- InfoSpace, Inc. v. Horoshiy, Inc., NAF Claim Number FA0406000282775,

- Avery Dennison Corporation v. Horoshiy, Inc., NAF Claim Number FA0406000289048,

- Citigroup Inc. v. Horoshiy, Inc., NAF Claim Number FA0406000290633,

- ADP of North America Inc. v. Horoshiy, Inc., NAF Claim Number FA0407000304896.

Complainant has requested that the disputed domain names be transferred to Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and

2. The respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

3. The respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

A. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the disputed domain names are identical or confusingly similar to the Complainant’s marks.

The Complainant has provided the registration documents for the FOSSLER Marks registered in the United States of America. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark under paragraph 4(a)(i) of the Policy.

The second requirement is that the disputed domain names are identical or confusingly similar to the marks. With the exception of spaces between words, which are not possible in domain names anyway, the <stephenfosslercompany.com> domain name is identical to one of Complainant’s trademarks. Although the <stephenfossler.com> domain name is not identical to either of the FOSSLER Marks or Complainant’s domain name, the <stephenfossler.com> domain name is certainly confusingly similar. Of course, both disputed domain names also include the “.com” top level domain signifier, but this gTLD signifier does not change the user’s understanding of either disputed domain name. A user coming upon the disputed domain names is therefore exceedingly likely to confuse the disputed domain names with the Complainant’s products and services. Hence the Panel concludes that the disputed domain names are, for the purposes of the Policy, confusing similar to the Complainant’s marks.

The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the disputed domain names are confusing similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, that the Respondent is using the disputed domain names to take advantage of the Complainant’s goodwill, and that the Respondent is not making any bona fide offering of goods or services using the disputed domain names.

The Respondent has not responded to these assertions. However, in the interests of ensuring a fair application of the Policy, the Panel considers it relevant to consider whether there is any evidence to support the application of the examples provided in paragraph 4(c) of the Policy. Paragraph 4(c) provides the following examples of activities of the Respondent, which may lead to its obtaining rights or a legitimate interest in the domain name:

“(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 trademark or service mark rights; or

(iii) you are 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.”

There is no evidence that any of the scenarios of paragraph 4(c) apply to the Respondent. Given the nature of the content that Respondent has provided on the websites to which the disputed domain names resolve, the Respondent’s usages of the disputed domain names appear to be calculated to attract mistaken users to the Respondent’s websites. There is no evidence that the Respondent was ever known by a name similar to the disputed domain names. Nor is there evidence of legitimate non-commercial or fair use of the disputed domain names, nor any other bona fide offering of goods and services by the Respondent, other than the provision of competing goods and services using the Complainant’s marks, which on its own is insufficient to constitute a bona fide offering of goods and services.

As a result the Panel concludes that, even having considered the possible application of paragraph 4(c), the Respondent has no rights or legitimate interests in the disputed domain names. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the disputed domain names in bad faith and has used them in bad faith. The Complainant makes a number of submissions in relation to this point (see section 5, above) the strongest of which are (1) the claim that the Respondent registered and uses the domain names to lure users to his site in a mistaken belief that the site stems from the Complainant, and (2) the claim that Respondent is a cybersquatter.

The former claim is based on the bad faith exemplar outlined in paragraph 4(b)(iv) of the Policy, which reads:

“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:

…

(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.”

The Respondent has registered and used domain names that are very likely to be confused with the marks of the Complainant, and has served up competitive content from its corresponding websites. It is clear that Respondent has used the disputed domain names to attract users to its websites for commercial gain, by creating confusion in the minds of Internet users as to the source of the website. The requirements of paragraph 4(b)(iv) are clearly made out, and as a result the activity of the Respondent is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

In addition, the nine cases cited by Complainant of Respondent’s prior bad faith registrations and uses should be sufficient to satisfy Complainant’s assertion that Respondent is a cybersquatter, but for the fact that little clear association is drawn between Respondent and the alleged alter egos. Nevertheless, this decision marks at least the third time in which Respondent (LaPorte Holdings) has been found to be using domain names in bad faith. It has been held several times that this kind of behavior evidences bad faith registration and use pursuant to Policy paragraph 4(b)(ii), as for example in Philip Morris Inc. v. r9.net, WIPO Case No. D2003-0004, and in Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd, WIPO Case No. D2000-1384. Other panels have even concluded that a respondent’s mere involvement in a large number of cases under the UDRP proves that the respondent’s use and registration of the disputed domain name falls within the concept of bad faith (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430)(a case notably involving Respondent’s alleged alter ego).

The Panel therefore concludes that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <stephenfosslercompany.com> and <stephenfossler.com> be transferred to the Complainant.

Timothy D. Casey
Sole Panelist

Dated: August 29, 2005