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RuggedCom, Inc. v. LANstore, Inc. [2005] GENDND 1942 (15 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RuggedCom, Inc. v. LANstore, Inc.

Case No. D2005-0760

1. The Parties

The Complainant is RuggedCom, Inc., Concord, Ontario, Canada, represented by Riches, McKenzie & Herbert LLP, Toronto, Ontario, Canada.

The Respondent is LANstore, Inc., Fremont, California, United States of America, represented by Berliner Cohen, San Jose, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ruggedcom.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2005. On July 19, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 19, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 4, 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2005. The Response was filed with the Center on August 30, 2005.

The Center appointed James A. Barker, Christopher J. Pibus and M. Scott Donahey as panelists in this matter on October 14, 2005. The Panel finds that it was properly constituted. Each member of 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.

On November 8, 2005, after the original date for the decision but before the decision was notified, the Respondent made a supplemental submission to the Center. That submission attached a decision made under the Nominet UK dispute resolution policy in relation to the domain name <ruggedcom.co.uk>, in which both the Respondent and Complainant were parties. On November 9, 2005, the Complainant made a supplemental submission in reply to that of the Respondent, essentially denying the relevance of that decision and indicating that, in any event, it would appeal it (as it can under the Nominet policy). The Policy does not make explicit provision for such submissions. However, in accordance with paragraph 10(a) of the Rules and to ensure fairness to both parties, the Panel decided to consider those submissions and accordingly extended the due date for this decision to November 15, 2005.

4. Factual Background

The Complainant’s mark is registered in Canada and in the United States of America (US), with filing dates of April 26, 2001 and September 19, 2001 respectively. The Complainant also operates a website at “www.ruggedcom.com”. The Complainant and Respondent are apparent competitors, both offering information technology-related products and services, including Ethernet products. The disputed domain name was registered by the Respondent on November 8, 2004.

5. Parties’ Contentions

A. Complainant

The following contentions are summarized from the Complaint.

Identical or Confusingly Similar

The Complainant bases this Complaint on its registered trademark RUGGEDCOM as it uses this mark as both a registered trademark and a trade name to distinguish its products and services from those of other businesses. The Complainant asserts that it has rights in the registered trademark, RUGGEDCOM, since before the date of registration of the domain name by the Respondent on November 8, 2004.

The Complainant uses its registered trademark in Canada and in the United States in association with: communication routers, switches, gateways, computers and modems and in providing services such as remote monitoring of computer network and communication network design, remote and on-site network management, and services in the field of networking, communication design and management. The Complainant uses and promotes, at significant cost, its mark worldwide. The Complainant also uses its mark as its corporate name, and has a website at “www.ruggedcom.com”.

The disputed domain name is identical to the Complainant’s mark, and so there is a likelihood of confusion with the Complainant’s mark.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no legitimate interests in the disputed domain name, because there is an absence of the circumstances set out in paragraph 4(c) of the Policy. The Complainant additionally asserts that the Respondent never used the disputed domain name in good faith; has no relevant rights in a mark; used the domain name to tarnish the Complainant’s mark; the domain name is not a geographical name of the location of the Respondent; the Respondent registered and used the disputed domain name in bad faith.

Registered and Used in Bad Faith

The Respondent is a competitor of the Complainant. The Respondent was incorporated in the state of California on July 27, 2004. The Respondent is also related to another direct competitor of the Complainant, through their common principal.

The Respondent has used and continues to use the disputed domain name in bad faith, to re-direct Internet users to the Respondent’s website at “www.lanstore.com”, where the Respondent offers similar products in direct competition with the Complainant. Shortly after the Complainant discovered it, the Registrant placed the website at the disputed domain name “Under Construction”. Once negotiations broke down, the Respondent started up the website as a “quasi-information site” directing users to its website by a direct link.

The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, which is a competitor of the Respondent. As an indication of the purpose to disrupt the Complainant’s business, the Respondent’s website uses “ruggedcom.com” as a meta name to direct customers looking for the Complainant to the Respondent’s website at “www.ruggedcom.net”.

B. Respondent

The following contentions are summarized from the Response.

Identical or Confusingly Similar

The Complainant is not entitled to relief under the Policy because it has no valid trademark rights in the mark RUGGEDCOM. The alleged trademark rights that Complainant claims in the disputed domain name are invalid because the terms “rugged” as well as the related terms “rugged computer”, “rugged communications”, and their derivatives or abbreviations, are commonly used generic names for particular types of products sold in the Complainant’s industry.

The Respondent refers to the incidence of such terms, for example, as can be found in a Google search. The Respondent also cites US cases, including decisions of the US Patent and Trademark Office, in support of the proposition that generic words generally lack sufficient distinctiveness to be registered as trademarks.

Rights or Legitimate Interests

The Respondent claims a legitimate interest in the disputed domain name. The domain name is one that Respondent is legitimately connected to or entitled to use because it is a generic term for common products in the Complainant’s and the Respondent’s industry. In addition, the Respondent has purchased a number of domain names that include common industrial Ethernet-related terms, in order to develop websites directed to potential customers or persons interested in learning more about industrial Ethernet products.

Registered and Used in Bad Faith

The Respondent had not registered or used the disputed domain name in bad faith, because the Complainant cannot properly assert trademark rights in the generic terms “rugged” and “ruggedcom”.

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

The Complainant has rights in its mark

There is no dispute in this case that the Complainant has registered the trademark RUGGEDCOM in Canada and in the US, on the principal register of the US Patent and Trademark Office (USPTO). In support of those rights, the Complainant provided copies of printouts from the databases of the USPTO and the Canadian Intellectual Property Office. Those copies indicate that the Complainant’s mark was filed in Canada on April 26, 2001 and in the US on September 19, 2001.

The Respondent, however, argues that the Complainant’s registered mark is not valid. The Respondent argues this on the basis that the Complainant’s mark includes terms that are generic, and so is not capable of being distinctive as a trademark.

The Respondent’s argument in this respect fails for three reasons. Firstly, and most importantly, the ownership of a registered trademark satisfies the threshold requirement of having trademark rights for the purpose of the Policy. (See item 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and the cases relevantly cited in that overview.)

Secondly, previous panel decisions under the Policy have clearly indicated that US registration establishes a presumption of validity in US trademark law. (See for example, The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh, WIPO Case No. D2003-0690.) The Respondent might say that it has rebutted that presumption in its Response. But it has not. The registration of the mark, and its presumption of validity, satisfies the requirement of the Policy that the Complainant “has rights” in its mark. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the weight of prior panel decisions is that only in “highly limited circumstances [may a panel examine the circumstances of a trademark registration]. Trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) may not always be owed the same deference as examined registrations”. However, the Complainant’s mark is registered on the principal register of the USPTO, and is registered in Canada. In both jurisdictions, trademark registrations follow a process of examination.

Thirdly, the Respondent’s evidence of genericness does not include any proof that the combination mark RUGGEDCOM itself is generic or commonly used in the trade. Rather, the Respondent’s evidence focuses on the use of the component elements “rugged” and “com”. There is no evidence that the mark itself is used other than by the Complainant.

Accordingly, the Panel finds that the Complainant has rights in its registered mark RUGGEDCOM for the purpose of paragraph 4(a)(i) of the Policy. That finding is not to deny the Respondent’s arguments and evidence that the nature of the mark includes terms generic in its industry. Rather, for the reasons set out above, those arguments do not displace the evidence that the Complainant “has rights” for the purpose of the Policy. If the Respondent is correct in its argument against the validity of the Complainant’s mark, then a remedy may more appropriately be sought in court proceedings.

The disputed domain name is identical to the mark

It is well-established in proceedings under the Policy that gTLD extensions, in this case “.net”, are to be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark. Disregarding that extension, the disputed domain name is identical to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent claims that it has a legitimate interest in the disputed domain name, because that domain name contains generic terms for common products.

Prior panel decisions have found that, if a respondent is using a generic word to describe its product/business or to profit from the generic value of the word without intending to take advantage of the complainant’s rights in that word, then it has a legitimate interest. See item 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

As set out above, the Complainant relevantly “has rights” in its mark for the purpose of the Policy. For the reasons set out below, the Panel finds that the Respondent intended to take advantage of the Complainant’s rights. The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting its business, which constitutes bad faith under paragraph 4(b)(iii) of the Policy.

Paragraph 4(b)(iii) contains, in effect, three elements that must all be satisfied for a finding against the Respondent. These are that:

- the Respondent knew of the Complainant’s business. For the Respondent to have the primary purpose of disrupting its competitor, it is obvious that the Respondent must have known of the Complainant’s business. (It is not necessary that the Respondent knew or believed that the Complainant has rights in a mark. It is possible a respondent might seek to disrupt its competitor without a complainant having rights in a mark. But a respondent must at least be aware of the complainant’s competing business to have any intention to disrupt it.)

- the “primary purpose” of the Respondent’s registration of the disputed domain name was to disrupt the Complainant’s business. From the terms of paragraph 4(b)(iii), it is not necessary to show that the Complainant’s business was actually disrupted - only that the Respondent’s primary purpose is disruption. Also, the intent to disrupt must be the ‘primary’ purpose. No finding could be made under paragraph 4(b)(iii) if the Respondent’s purpose in registering the domain name is primarily and legitimately connected to its own business, or had some other primarily legitimate purpose, even if the Respondent incidentally intended to disrupt a competitor.

- the Respondent and the Complainant are competitors.

The Respondent knew of the Complainant’s business

The Panel finds that the Respondent knew of the Complainant’s business when it registered the disputed domain name. Both the Complainant and Respondent offer “industrial Ethernet” and related products and services. The market in which both operate is particular and defined. Both offer products and services that compete with the other. Both are located in relatively close jurisdictions. From evidence supplied by the Complainant, the Respondent used the Complainant’s entire website address (“ruggedcom.com”) as a meta name in its website. That would require a deliberate choice by the Respondent. It seems unlikely that the Complainant’s website address was chosen by accident.

There was a “primary purpose” under paragraph 4(b)(iii)

The Respondent claims that its purpose in registering the disputed domain name, and a number of others, was “to develop websites directed to potential customers or persons interested in learning more about industrial Ethernet products”. The Respondent supports this contention with a declaration in the same terms by its General Manager.

The Respondent gave no further explanation of its purpose in registering the disputed domain name. The Panel accepts that it may have been a purpose of the Respondent to develop a website at the disputed domain name for potential customers and interested persons. But, without any further explanation, there is evidence casting doubt that it was the Respondent’s ‘primary purpose’. The evidence (below) instead suggests that the Respondent’s primary purpose was one falling within paragraph 4(b)(iii) of the Policy.

Most tellingly, the Respondent incorporated the Complainant’s website address as a meta tag in the website to which the disputed domain name referred. That incorporation would create the risk that Internet users searching for the Complainant’s usual web address might be directed or diverted to the Respondent’s site. The Respondent would likely have been aware of that risk, and so to have created it deliberately. Further, the likelihood that the Respondent knew of the Complainant’s business suggests that the Respondent knew of the Complainant’s rights in its mark. This evidence supports a finding that the Respondent’s primary purpose in registering the domain name was to disrupt the Complainant’s business by drawing Internet traffic away from the Complainant’s website.

The Complainant also provided evidence, not refuted by the Respondent, that on March 18, 2005, the disputed domain name reverted to a website which featured on its homepage the heading “RuggedCom.net” and information under the heading “Industrial Ethernet”. The Complainant’s evidence does not indicate that that site referred to the Respondent. But, even if it did, it is difficult to understand how a site that makes no clear mention of the Respondent would be one primarily directed at the Respondent’s potential customers. The same point applies to the website to which the disputed domain name refers at the date of this decision where, after a long list of links apparently relating to industrial Ethernet, a link is included to the Respondent’s website at “www.lanstore.com”. The site itself only provides links to other sites – it provides no associated text relating to industrial Ethernet or otherwise.

The Respondent also contended that the site was directed to “persons interested in learning more about industrial Ethernet”. But the Respondent did not explain how that more general purpose primarily and directly relates to its own business.

The Complainant provided evidence that on March 20, 2005, the Respondent’s website then featured only the statement “Under Construction”. The Respondent did not explain why the site, if established to provided information, would do so one moment, and then at another be placed “Under Construction”.

Neither did the Respondent explain why it intended to develop the website at the disputed domain name, separate to its own pre-existing website at “www.lanstore.com”. The Respondent did not explain why, if it intended to use the disputed domain name primarily and legitimately in connection with its own business, and for its potential customers, it did not simply refer the disputed domain name to its own website.

As noted above, the Respondent provided a declaration “under penalty of perjury” by its General Manager, to the effect that the Respondent reserved the disputed domain name “for legitimate purposes”. Being such a declaration, it was no doubt carefully drafted. It is notable that the declaration denies registration for a bad faith purpose described in paragraph 4(b)(i) of the Policy. There is no statement in the declaration disputing that the Respondent registered the disputed domain name contrary to paragraph 4(b)(iii) of the Policy.

The Respondent and Complainant are competitors

It is clear that the Respondent and Complainant are competitors. Both compete in the same market in relation to industrial networking products.

Accordingly the Panel finds, on the balance of probabilities, that all of the elements under paragraph 4(b)(iii) of the Policy are satisfied.

Other Matters

Conflict of fact and evidence

The Respondent additionally argues, by reference to prior proceedings under the Policy, that where there are significant conflicts of fact and evidence in relation to a domain name which may be generic, the applicable domain name dispute resolution policy should be exercised with caution, or not at all.

There is no doubt that the Panel should make its decision carefully. The Panel finds that there is sufficient evidence in this case to make a finding under the Policy.

Other legal proceedings

The Respondent’s supplemental submission attached a single expert decision under the Nominet dispute resolution policy, dated November 7, 2005. That decision involved the parties in this case, in relation to the domain name <ruggedcom.co.uk>. The expert in that case declined to make a finding in favor of the Complainant. That finding was apparently on the basis that the Nominet policy provides (in the definition of “rights” in a mark) that a complainant “will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business” and that the domain name in that dispute was descriptive.

The Respondent made no argument in its supplemental submission. It simply attached the Nominet decision noting that it was issued on November 7, 2005. It seems implied that the Respondent considers that the Nominet decision should be taken into account in these proceedings.

For all the reasons set out above, the Panel sees no reason from the Nominet decision for changing its view in this case. In any event, the terms of the Nominet policy are substantively different to the terms of the UDRP.

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 name, <ruggedcom.net>, be transferred to the Complainant.

Dated: November 15, 2005