BODIS

Poles Inc : Generic #domain trumps trademark claims in #UDRP

UDRP has been denied.

The domain PolesInc.com was challenged in a UDRP by the owners of Poles.com. The latter, is a fully formed corporation, using the domain since 1997.

On the other hand, the owner of PolesInc.com uses it to redirect traffic to its own pole restoration business, RAM Utilities LLC.

The two parties communicated almost a decade ago, and the PolesInc.com registrant offered to sell it at various prices, ranging from $45,000 to $225,000 dollars.

The Complainant in this UDRP denied that “Poles Inc” is a generic term, as it has owned a registered trademark for POLES, INC since 2012.

The panelist, however, noted that the domain PolesInc.com was registered in 2009 and predates the trademark.

The decision was thus in favor of the Respondent, and the domain PolesInc.com will remain with them.

Full details of this UDRP decision follow:

Poles, Inc. v. Joel Rovang

Claim Number: FA1804001784460

PARTIES

Complainant is Poles, Inc. (“Complainant”), represented by William J. Robers of Sparks Willson Borges Brandt & Johnson, P.C., Colorado, USA. Respondent is Joel Rovang (“Respondent”), represented by McGinnis McGinnis of Foley & Lardner LLP, Wisconsin, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <polesinc.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Nelson A Diaz (ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.

On May 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <polesinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@polesinc.com. Also on May 1, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on May 25, 2018.

On May 30, 2018 an Additional Submission by Complainant was received complying with Supplemental Rule 7.

On June 5, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A Diaz (ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant uses its POLES, INC. mark to promote its products and services in the utilities industry. Complainant has rights in the marks through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,249,154, registered Nov. 27, 2012). See Compl. Annex 4. Complainant also has common law rights that date back to 1997 when it registered its <poles.com> domain name. See Compl. Annex 5. Respondent’s <polesinc.com> domain name is identical to Complainant’s POLES, INC. mark.

Respondent has no rights or legitimate interests in the <polesinc.com> domain name. Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent intentionally diverts users to the disputed domain name for commercial gain. Respondent has also repeatedly attempted to sell the disputed domain name to Complainant.

Respondent registered and is using the <polesinc.com> domain name in bad faith. Respondent attempted to sell the disputed domain name to Complainant for far more than out-of-pocket costs. Respondent also uses the disputed domain name to disrupt Complainant’s business as Respondent diverts internet traffic to its website, which offers competing goods and services. Furthermore, Respondent attempts to attract users, for commercial gain, by creating confusion between Complainant’s mark and the disputed domain name.

B. Respondent

Respondent registered the <polesinc.com> domain name on April 1, 2009, which Respondent uses in connection with its utility pole inspection business. See Resp. Annex A. Respondent’s registration of the disputed domain name predates Complainant’s USPTO registration for the POLES, INC. mark. Complainant cannot establish common law rights in the POLES, INC. mark. Respondent’s disputed domain name is identical to the mark, to the extent that Complainant has any trademark or service mark rights. Instead, Complainant’s POLES, INC. mark contains the generic term “poles” coupled with the generic company designation “inc.,” which is insufficient to support Complainant’s exclusive right in the mark.

Respondent has rights or legitimate interests in the <polesinc.com> domain name. Respondent selected the disputed domain name as it is descriptive of its utility pole inspection business. Additionally, Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In fact, Respondent has used the disputed domain name to redirect users to its primary website and uses an email address connected with the disputed domain name.

Respondent did not register or use the <polesinc.com> domain name in bad faith. Respondent’s registration of the disputed domain name predates Complainant’s earliest known rights in the POLES, INC. mark. Furthermore, Respondent did not register or use the disputed domain name with the sole intent of selling it for out-of-pocket costs. Rather, Respondent used the disputed domain name for a legitimate use. Further, the mere act of selling a domain name is not prima facie evidence of bad faith. Finally, Complainant’s claim must be barred by laches since Complainant waited nearly seven years to file this complaint.

C. Additional Submissions

Complainant argues that the term “poles” is merely descriptive is incorrect. Complainant registered the <poles.com> domain name on July 27, 1997 and began using its POLES, INC mark shortly after in 2003. Further, Complainant’s registration with the USPTO proves that the POLES, INC mark is not merely descriptive or generic.

Respondent has never formed his own company by the name of “Poles, Inc.” There is no legitimate reason Respondent would have picked the disputed domain name without also claiming that company name in some state.

Finally, Respondent had a business relationship with Complainant prior to its registration of the <polesinc.com> domain name. Complainant’s agent, Randall Gross, met with Respondent in 2009 and informed Respondent of Complainant’s existence and the <poles.com> domain name. Shortly after, Respondent registered the infringing domain name. Since its registration, Respondent has never invoiced anyone using the phrase “POLES, INC,” nor has it used the mark in marketing materials or built a website for the <polesinc.com> domain name.

FINDINGS

Respondent is not using the disputed domain name in bad faith.

DISCUSSION

Paragraph 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant claims to have rights in the POLES, INC. mark through its trademark registrations with the USPTO. Registering a mark with a governmental trademark authority, including the USPTO, is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). While Complainant argues that its USPTO registration for the POLES, INC. mark dates back to 2012, the Panel notes that the mark registered in 2012 is actually POLES, INC. WOOD POLE MAINTENANCE SOLUTIONS (e.g., Reg. No. 4,249,154, registered Nov. 27, 2012). See Compl. Annex 4. Further, The Panel notes that Complainant’s POLES, INC. mark was registered with the USPTO in 2017 (e.g., Reg. No. 5,329,761, registered Nov. 7, 2017). Id. Therefore, the Panel finds Complainant has rights through its USPTO registrations for the purposes of Policy ¶ 4(a)(i).

Complainant argues that it registered and began using the <poles.com> domain name on July 25, 1997. While Complainant does not specifically argue common law rights, the ownership of a domain name incorporating a mark may provide evidence of secondary meaning under Policy ¶ 4(a)(i). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant claims it has used its mark in the oil and gas industry since 1997; that it has used its mark in the real estate industry since 2004; and that Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”).

Next, Complainant contends Respondent’s <polesinc.com> domain name is identical to Complainant’s POLES, INC. mark, but does not specifically argue why it is identical.

While Respondent argues that its registration of the <polesinc.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

While Respondent contends that the <polesinc.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii). Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(iii).

Rights or Legitimate Interests

The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant asserts Respondent has no rights or legitimate interests in the <polesinc.com> domain name. Specifically, Complainant argues Respondent is not authorized or licensed to use Complainant’s POLES, INC. mark and is not commonly known by the disputed domain name. Lack of authorization to use a complainant’s mark may indicate a respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Further, WHOIS information may be used to support a finding that a respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). WHOIS information for the disputed domain name identifies Respondent as “Joel Rovang / Joes Rovang.” See WHOIS of Record. Thus, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Complainant contends Respondent is not using the <polesinc.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant argues Respondent attempts to divert Internet traffic to the disputed domain name for commercial gain. General diversion of users to a confusingly similar domain name for commercial gain may not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website which advertises utility pole inspection and related services. See Compl. Annex 7.

Complainant claims Respondent’s attempts to sell the <polesinc.com> domain name supports its contentions that Respondent lacks rights or legitimate interests. Attempts to sell a disputed domain name may evince a finding that a respondent lacks rights or legitimate in the disputed domain name under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides correspondence with Respondent, who first listed the price of the disputed domain name for $45,000.00 and then for $225,000.00. See Compl. Annex 6; Gross Aff. at ¶ 7, Exs. A and B.

Respondent claims that it does have rights and legitimate interests in the <polesinc.com> domain name. Specifically, Respondent argues that it uses the disputed domain name in connection with its utility pole business and for a business email address. Making a bona fide offering of goods or services at a disputed domain name may overcome a complainant’s burden that a respondent lacks rights and legitimate interests in a domain name. See Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Further, previous Panels have held that continuous use of a domain name for over seven years is sufficient to conclude that a respondent has rights and legitimate interests in a domain name. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name). Since January 2010, Respondent claims to have promoted its use of the email address, joel@polesinc.com, at its company website, <ramutilities.com>, and has used the email address to conduct business since then. See Resp. Schilz Decl. at ¶¶ 3, 5, and 6, Ex. 1. Further, the email address is used on letterhead and promotional materials related to Respondent’s business. See Rovang Decl. at 4. Therefore, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name.

Respondent also argues that the terms of the <polesinc.com> domain name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees with Respondent, that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

Registration and Use in Bad Faith

Complainant claims Respondent registered and is using the <polesinc.com> domain name in bad faith as shown by Respondent’s attempts to sell the disputed domain name to Complainant for far more than out-of-pocket costs. Offers to sell a domain name at a price in excess of out-of-pocket costs may demonstrate bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant alleges that Respondent offered to sell the domain to Complainant at a price of $200,000 and offered to trade the <polesinc.com> domain name for Complainant’s <poles.com> domain name for $140,000. See Compl. Add. Sub. p.3. Furthermore, Respondent claims it did not register or use the disputed domain name with the sole intent of selling it for out-of-pocket costs. Rather, Respondent used the disputed domain name for a legitimate use, and the mere offer to sell a domain name is not prima facie evidence of bad faith. Making a legitimate use of a domain name can evince a finding of good faith, and offers to sell a domain name are not inherently indicative of bad faith in and of themselves. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors). Accordingly, the Panel agrees that Respondent makes a legitimate use of the domain name, and did not register the domain name with the intention of selling it to Complainant or a competitor, the Panel holds that Respondent did not register the domain name in bad faith.

The Panel notes that if Respondent’s registration of the <polesinc.com> domain name predates Complainant’s first claimed rights in the POLES, INC. mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

Moreover, Respondent contends that the <polesinc.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s POLES, INC. mark. Moreover, Respondent contends that the registration and use of a domain name comprising of such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, the Panel therefore finds that Respondent did not register or use the <polesinc.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <polesinc.com> domain name REMAIN WITH Respondent.

Hon. Nelson A Diaz (ret.) Panelist

Dated: June 8, 2018


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