WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kejr, Inc., d/b/a Geoprobe Systems v. Art’s Manufacturing & Supply, Inc.

Case No. D2001-1348

Complainant is Kejr, Inc., d/b/a Geoprobe Systems, a corporation organized under the laws of the State of Kansas, U.S.A., with a place of business in Salina, Kansas, U.S.A. (Kejr).

Respondent is Art’s Manufacturing & Supply Inc., a corporation with a place of business in American Falls, Idaho, U.S.A. (Art’s).

The domain names in issue are:

<geoprobesystem.com>, and
<geoprobesystem.net>.
The registrar is Network Solutions, Inc. (NSI).

The WIPO Arbitration and Mediation Center (the Center) received the Complaint via email on November 12, 2001, and in hard copy form on November 15, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Kejr made the required payment to the Center. The formal date of the commencement of this administrative proceeding is November 29, 2001.

On November 21, 2001, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On November 26, 2001, NSI transmitted via email to the Center NSI’s confirmation that (1) Art’s is the current registrant of the domain names in issue, (2) NSI Service Agreement Version 5 is in effect, and (3) the two domain name registrations are in "active status."

On November 29, 2001, the Center transmitted to Art’s Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via facsimile, post/courier and email. The Center advised, inter alia, that the Response was due by December 19, 2001, and pointed out the Response should be in accordance with requirements set out in the Rules and the Supplemental Rules.

On December 20, 2001, the Center received Art’s Response via email, and on December 7, 2001, in hard copy.

On January 9, 2002, the Center advised the parties that the Administrative Panel had been appointed, consisting of David Plant. The Center advised that absent exceptional circumstances, the panel is required to forward its decision to the Center by January 3, 2002.

The Complaint is based on a registered trademark and a registered service mark as averred by Kejr as follows:

Kejr has used "Geoprobe Systems" since at least as early as 1987, for retail store services specializing in machines and equipment for sampling, testing and analyzing, maintaining and repairing such equipment and for educational services. U.S. Service Mark Registration 2,218,102 issued January 19, 1999, for such services, based on first use in commerce in 1987 (Annex 3 to the Complaint). The application for this registration was filed November 29, 1996.

Kejr has used "Geoprobe" since at least as early as February 1988, in connection with "direct push and soil sampling machines." U.S. Trademark Registration 1,601,914 issued June 19, 1990, for "Machine for driving sampling tubes into soil, and accessories therefor ...," based on first use in commerce February 1988 (Annex 4). The application for this registration was filed November 13, 1989.

Kejr avers it is a leader in "the direct push, soil sampling and drilling industries." Kejr says it enjoys substantial goodwill and a valuable reputation in connection with its marks. Kejr avers it has expended and continues to expend "a significant amount of time, money, resources and effort to advertise and promote its goods and services under" the two marks, and to police "misuse of the marks."

Kejr avers it owns the domain names <geoprobe.com> and <geoprobesystems.com>, the latter having been registered on July 8, 1996, and the former, on March 19, 2001. Kejr states it has been operating web sites under both domain names, with the web site under <geoprobesystems.com> having been operated continuously since at least as early as July 8, 1996. Printouts regarding these Kejr registrations appear at Annex 5.

Kejr contends that (a) the domain names in issue are identical or confusingly similar to a Kejr trademark or service mark, (b) Art’s has no rights or legitimate interests in respect of the domain names, and (c) the domain names were registered and are being used in bad faith.

Kejr avers that (a) Art’s, now known as AMS, is a competitor in the soil sampling, direct push and drilling industries, and (b) both parties manufacture and sell "numerous similar and/or identical products to the same customers in the same industry." Kejr asserts that Art’s owns the domain name <ams-samplers.com> and operates its primary web site at that location. Art’s <ams-samplers.com> domain name was registered November 15, 1996 (Annex 8). Kejr states that a comparison of the home pages of the parties (Annexes 6 and 7) "readily reveals the competitive nature of the two parties ’ businesses."[1]

Kejr asserts that Art’s registered the two domain names in issue on October 5, 2000 (Annex 1). Kejr contends that because the parties had been competing for over a decade, Art’s necessarily knew of Kejr’s trademark rights in "Geoprobe" and "Geoprobe Systems". Also, Kejr is known in the industry and does business as "Geoprobe Systems". In addition, Kejr had been operating its <geoprobesytems.com> web site for at least four years prior to Art’s registration of the two domain names in issue.

Kejr claims it has trademark rights in "the marks GEOPROBE, GEOPROBE SYSTEMS, <geoprobe.com> and <geoprobesystems.com>." Kejr asserts that Art’s two domain names are "legally identical" to the registered mark "Geoprobe Systems" because the domain names are simply in the singular and differ from the registered mark by only one letter. Kejr makes the same assertion with respect to its alleged mark "geoprobesystems.com". Kejr asserts these differences do not "preclude confusion ... given the highly and directly competitive nature of the products and services offered at the sites." In support of these contentions, Kejr cites decisions in WIPO Cases Nos. D2000-1768, D2000-1686, D2000-1204, D2000-0614, D2000-0304, and D2000-0274[2].

In addition, Kejr asserts that "at an absolute minimum," Art’s domain names are "confusingly similar to the trademarks and/or service marks in which Complainant has rights," citing National Arbitration Forum decision FA95940.

Kejr asserts that in addition to the evidence of bad faith registration and use referred in the next subsection, Art’s is "void of rights or legitimate interests in the domain names." Kejr contends that its U.S. trademark registrations are evidence of Kejr’s "exclusive rights to the marks GEOPROBE and GEOPROBE SYSTEMS in the direct push, soil sampling and drilling industries." Accordingly, Art’s has no rights or legitimate interests in domain names that are "virtually identical" to Kejr’s marks and domain names. Kejr asserts also, in light of the U.S. registrations "covering goods and services" also offered by Art’s, Art’s "would not be able to use the subject domain names .... in connection with the offering of any of the goods and services provided by Respondent at the time of the notice." Kejr says that by virtue of its registered marks, it has "exclusivity to use the GEOPROBE and GEOPROBE SYSTEMS marks in connection with the above-listed and competing goods and services."

Kejr adds that Art’s "was merely using the domain names as technical pointers (i.e. links that merely redirect Internet users) to Respondent’s main website at ams-samplers. com." Thus, says Kejr, Art’s "does not conduct any legitimate business under the domains, but instead conducts their legitimate business under their arms-samplers.com mark." Kejr asserts Art’s "merely used the subject domain names to misleadingly redirect and divert" Kejr’s customers to Art’s. Kejr avers there is no evidence that, before Kejr’s February 13, 2001 notice to Art ’s, Art’s had used or made demonstrable preparations to use the two domains in connection with a bona fide offering of goods and services.[3] To the contrary, says Kejr, Art’s had used the domains "merely to link the domains to its then current site where it used its own trademarks in connection with the offering of competing goods and services."

Kejr avers that in light of the foregoing, Art’s is not, and has not been, commonly known by the two domain names.

Kejr asserts Art’s "is not making a legitimate non-commercial or fair use of the domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks" of Kejr. Art’s has not explored additional business opportunities to use the domain names which would not cause "reasonable confusion", as stated in its counsel’s July 9, 2001 letter (Annex 12). Thus, this was not Art’s purpose in originally registering and using the domain names

Kejr avers that the two domain names in issue have been registered and are being used in bad faith.

Kejr first asserts that trademark owners "often register ... domain names where the second-level domain is a common misspelling of their trademarks." Kejr appears to draw this conclusion from its view that (a) Art’s singular form of "Complainant’s trademark represent such a common misspelling," and (b) Art’s domain names "incorporate the entirety of Complainant’s GEOPROBE trademark."

Next, Kejr asserts the domain names were registered primarily for the purpose of disrupting the business of a competitor. Kejr points again to (1) the similarity of the products offered by Art’s and Kejr at their web sites, and (2) both domain names were set up as technical pointers to Art’s <ams-samplers.com> site. Thus, potential Kejr customers who typed in the singular form of Kejr’s registered mark "Geoprobe Systems" would be taken to Art’s competing web site which offered similar products as Kejr. Kejr avers:

"Towards the end of the year 2000, Complainant received numerous calls from people who were attempting to locate Complainant on the web. These individuals expressed that while trying to access Complainant’s website, they were repeatedly linked to Respondents [sic] website."

Kejr asserts that, after determining that Art’s domain names were the source of the problem, Kejr sent a cease and desist letter to Art’s President on February 13, 2001 (Annex 9). Inter alia, the letter requested Art’s to execute documents transferring the two domain names to Kejr. On March 1, 2001, counsel for Art’s replied, requesting time to consider the matter (Annex 10). The letter "indicated that, during the pendency of the review of the matter, Respondent would discontinue the practice of linking the subject domains to their website." Further, "when the links from the subject domains were not taken down as indicated ... in the March 1, 2001 letter," Kejr’s attorney telephoned Art’s counsel on March 8, 9, 12, and 14. Kejr asserts the links were taken down March 14, 2001, but Art’s has not transferred ownership of the domains to Kejr and "could reestablish the links to their site at a moment’s notice."

Kejr asserts that, on March 23, 2001, Kejr’s attorney again "contacted" Art’s attorney, who "indicated he would talk with his client early the following week and get back with counsel for Complainant." Kejr avers that, having received no communication from Art’s counsel, Kejr’s counsel sent another letter on May 11, 2001 (Annex 11), repeating the cease and desist demand and requesting transfer of ownership of the domain names. On July 9, Art’s counsel sent a letter to Kejr’s counsel, stating Art’s "is not currently using the domains in the manner that they were and that the Respondent would not be transferring the domains to Complainant" (Annex 12).

Kejr contends that Art’s registration and use in bad faith is evidenced by its "intentional attempt ...to attract for financial gain Internet user’s to Respondent’s website by creating a likelihood of confusion with Complainant’s mark ...". Kejr asserts:

"By redirecting potential customers of Complainant to Respondent’s website which offers similar products, Respondent attempted to redirect sales from Complainant to Respondent for the financial gain of Respondent. Respondent attempted to palm off of the goodwill created by Complainant in Complainant’s marks by creating not only a likelihood of confusion with the Complainant’s mark but actual confusion."

Kejr cites WIPO decisions in Cases No. D2000-1768 and D2000-0037 and National Arbitration Forum decisions in Cases No. FA95940 and FA95741.

Kejr requests that the panel decide that each of the two domain names in issue be transferred to Kejr.

The Complaint concludes with the requisite certification as to completeness and accuracy and is signed by Complainants’ counsel.

Art’s does not contest the applicability of the Policy or jurisdiction of WIPO in this proceeding. Art’s submits itself to this "mandatory proceeding".

Art’s asserts that the domain names in issue differ "in a number of respects from the trademark and/or service marks of which Complainant possesses right (GEOPROBE, GEOPROBE SYSTEMS, geoprobe.com and geoprobesystems.com)." Art’s relies on the space between Geoprobe and Systems in "Complainant’s registered trademark," and "the plural form of the Complainant’s marks." Also, Art’s claims one of its domain names (i.e. <geoprobesystem.net>) "is a wholly different and alternative top level domain." Art’s contends that the decisions cited by Kejr are inapposite because all are default decisions and in none were issues presented here contested.

Art’s claims that, before any notice from Kejr, Art’s used the domain names in connection with its bona fide offering of goods and services. Art’s states:

"Respondent has successfully participated in the direct push, soil sampling and drilling industries in which the Complainant likewise operates for approximately 14 years."

Art’s asserts that, in the industry in which both parties participate, "Geoprobe" has

"acquired generic characteristics and lacks the functions generally associated with a trademark: (i) identification of origin; (ii) identification of quality assurance; and (iii) symbolism of good will."

Thus, according to Art’s, in the industry, "Geoprobe" "essentially represents" tools equipment and/or activities, lacks the "substantial good will" claimed by Kejr, is not representative of "Complainant’s proposed ‘standards of excellence and high quality products and services’," but "is merely representative of a niche of activities affiliated with soil sampling and other similar activities." From this, Art’s concludes it has legitimate interests in the domain names.

Art’s asserts also "Geoprobe" is being used by "numerous third parties to identify similar activities." Art’s contends Kejr, "through its acts of omission as well as commission, has caused the mark in question to become generic as applied to its goods and services." Art ’s cites 15 U.S.C. § 1127. Art’s concludes this proceeding has been brought in bad faith by Kejr.

Art’s avers that both parties acknowledge they are competitors and "manufacture and sell numerous similar and/or identical products to the same customers within this industry." Art’s claims Kejr, "in efforts to keep any competition at bay," is engaging in "reverse domain name highjacking."

With respect the Kejr’s claim that Art’s uses its domain names as a "‘technical pointer’ (i.e., links that merely redirect internet users) to Respondent’s main web site at www.AMS-Samplers.com," Art’s intent was "to leverage the ubiquitous nature of the internet to benefit its bona fide offering of goods and services." Art’s avers:

"The intent of the Respondent at no time was to ‘misdirect’ internet users from Complainant’ s web site to Respondent’s web site."

Art’s asserts that "upon Respondent’s receipt" of the February 13, 2001 letter, Art’s

"in good faith, agreed and in fact did discontinue the use of the domain names in question. This action was merely an accommodation to demonstrate Respondent’s good faith while it reviewed the matter and explored additional business opportunities it may have for its use of the domain names.

"In a July 2001 letter to Complainant, which is attached as Exhibit 12 to Complainant’s filing, Respondent clearly stated that it was exploring additional business opportunities to make use of the domain names which would not cause reasonable confusion with Complainant’s goods and services. This communication ... clearly stated that Respondent believes it has a legitimate interest in respect of the domain names. Respondent continues to believe it is making a legitimate and fair use of the domain names in question.

"Respondent has communicated to Complainant and has established that it has no intent to mislead or divert customers or to tarnish the trademark or service mark of Complainant."

Art’s asserts it did not register and has not used the domain names in bad faith. Art’ s notes that upon notification from Kejr that "some confusion may exist between the domain names ... and the rights Complainant has in certain trademarks," Art’s in good faith discontinued the use of the domain names. Art’s avers the domain names were not registered in an effort to prevent Kejr from reflecting its trademarks in a corresponding domain name. Rather, Kejr "very easily could have registered the domain names in question here at any time prior to the Respondents [sic] doing so." Art’s notes that Kejr acknowledges that such opportunity existed, and that "many trademark owners register domain names which are similar and/or identical to their trademark." Art’s contends that Kejr’s failure to register the domain names does not support a conclusion of bad faith on Art’ s part.

Art’s avers that the domain names were not registered for the purpose of disrupting Kejr’s business. Art’s iterates that both parties are "in the business of manufacturing and selling products in the direct push, soil sampling and drilling industries," and "Geoprobe" has "attained ‘generic’ characteristics within the industry." Art’s asserts the domain names were registered "in the normal course of business."

Citing Policy ¶¶ 4.(b) and 4.(c), Art’s avers it immediately discontinued use of domain names which were not registered primarily for the purpose of transferring the registrations to Kejr or a competitor. Art’s repeats that the domain names were not registered to prevent Kejr "from reflecting the mark in a corresponding domain name," and Art’s has not engaged in a pattern of such conduct. Art’ s avers:

"On the contrary, the Respondent discontinued the use of the domain names in question although Respondent engages in the bona fide provision of goods and services within the industry that recognizes the generic nature of the terms within the domain names at issue."

The Response does not seek any specific relief. It concludes with counsel’s certification as to completeness and accuracy.

Paragraph 4.(a) of the Policy directs that Kejr must prove, with respect to each domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to a mark in which Kejr has rights, and

(ii) Art’s has no rights or legitimate interests in respect of the domain name, and

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

Kejr has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.

Kejr asserts trademark rights in its registered trademark "Geoprobe", its registered service mark "Geoprobe Systems", and its domain names <geoprobe.com> and <geoprobesystems.com>. For purposes of the panel’s analysis of the Paragraph 4.(a)(i) element, it is sufficient to focus on Kejr’s registered service mark "Geoprobe Systems".[4]

It is beyond dispute that, under United States law, Kejr has rights in the service mark "Geoprobe Systems" with respect to the services specified in the certificate of registration. The registration issued on the Principal Register of the United States Patent and Trademark Office almost four years before Art’s registered the two domain names in issue. Kejr’s certificate of registration is prima facie evidence of Kejr’s "exclusive right to use the mark in commerce [in the United States] on or in connection with the goods or services specified ... ." 15 U.S.C. § 1057(b). Art’s concedes that both parties have competed for years in providing the same or similar products and services to the same customers within the same industry. It is too late for Art’s simply to challenge Kejr’s registered marks on the basis of a naked argument, unadorned with any supporting evidence, that the registered marks are "generic" or that others use the term "Geoprobe".[5]

Ample authority supports the conclusion that each domain name in issue is virtually identical, or confusingly similar, to the registered service mark "Geoprobe Systems". Neither the deletion of an "s" to form a singular form of a mark, nor the running together of the two words comprising the mark, detracts from "identity" as that term has been construed in connection with Policy Paragraph 4.(a)(i). E.g., Aurora Foods v. David Paul Jones, WIPO D2000-0274. Even if there were no such identity, it is apparent from this record that each domain name in issue is confusingly similar to the registered service mark.6 Also, that <geosystems.net> is in a different top level domain from ".com" is not relevant in this analysis.7

In light of the foregoing, on this record, the Panel finds that Kejr has carried its burden of proof under Paragraph 4.(a)(i) as to the domain names in issue.

Kejr’s prior use and registration of the service mark "Geoprobe Systems" does not alone preclude Art’s from having any rights or legitimate interests in the domain names in issue. The panel must consider the rights and interests Art’s claims and its purpose in asserting such rights and interests. Policy Paragraph 4.(c) provides illustrative circumstances which may demonstrate Art’s rights and interests in one or more of the domain names.

On this record, the panel finds that (1) Art’s only recently registered and used the two domain names in connection with its offering of goods and services it had offered for years in competition with Kejr, (2) Art’s use of the two domain names was intended to send directly to Art’s main web site customers looking for a Kejr website, and (3) Art’s failed to find another use for the two domain names at least during nine month period from mid-March 2001, to the filing of Art’s Response in this proceeding on December 20, 2001. While Art’s may have been for years a bona fide manufacturer and seller of goods and provider of services that compete with Kejr’s goods and services, it is only common sense to conclude that Art’s must have been aware that its recent use of the two domain names would be and was diverting to its main web site customers intending to go to Kejr’s web site.

The <ams-samplers.com> domain name for Art’s main website was registered on November 15, 1996 (Annex 8), four years before Art’s registered the two domain names in dispute (Annex 1), and more than four months after Kejr registered <geoprobesystems.com> (Annex 5). It is entirely appropriate to conclude that (1) Art’s was fully familiar with its competitor Kejr’s websites, and (2) Art’s intended to gain commercially from Art’s use of the two domain names to divert customers to its main web site. Art’s alleged intent to "to leverage the ubiquitous nature of the internet" is entirely consistent with such conclusion and in no way supports a conclusion that Art’s has had rights or legitimate interests in the domain names in issue.

As stated in Section a. above, Art’s unsupported attack on Kejr’s registered marks carries no weight. The allegedly "generic" character of Kejr’s marks, and in particular the registered service mark, should be readily evidenced by contemporaneous literature and documents, if the allegation has merit. Art’s has provided no such support. Art’s ipse dixit cannot alone establish that Kejr’s marks are generic or that somehow Art’s has rights superior to Kejr’s exclusive rights.

The Panel finds that Kejr has carried its burden of proof with regard to Paragraph 4.(a)(ii) as to the two domain names in issue.

In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Complainants.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances of "evidence of the registration and use of a domain name in bad faith." The third and fourth illustrative circumstances fit the facts here.

Paragraph 4.(b)(iii) relates to registration of the domain name in issue "primarily for the purpose of disrupting the business of a competitor." As discussed in Section b. above, on this record it is entirely reasonable to conclude that at least one of Art’s purposes, if not the primary purpose, in registering the two domain names in issue was to disrupt Kejr’s business. Even if one were to infer that Art’s believed from October 5, 2000, forward that its registrations were justified because Kejr’s registered marks were "generic", that would not justify Art’s actions.

Kejr’s U.S. registration of "Geoprobe Systems" in 1999, and its U.S. registration of "Geoprobe" in 1990, were both based on uses in commerce no later than February 1988. Accordingly, as a matter of law, when it registered the two domains in October 2000, -- more than 12 years after Kejr’s first use of its registered marks --, Art’s was charged with knowledge of Kejr’s exclusive right to use those marks in connection with goods and services which competed directly with Art’s goods and services. As a matter of law, on this record, Art’s belief to the contrary is not relevant. This is especially so in light of Art’s fragile and ineffective distinctions between Kejr’s registered service mark "Geoprobe Systems" and Art’s two domain names (Section a. above). The plain likelihood that Art’s domain names would divert potential Kejr customers to a site they did not intend to reach, i.e. Art’s main web site, renders Paragraph 4.(b)(iii) applicable to Art’s conduct.

Paragraph 4.(b)(iv) refers to an intentional attempt to attract, for commercial gain, internet users to the domain name registrant’ s site, by creating a likelihood of confusion with the Complainant’s mark as to "the source, sponsorship ... of [domain name registrant’s] web site ... or of a product or service on [domain name registrant’s] web site ...." The finding of virtual identity of the domain names in issue with Kejr’s registered service mark, and at minimum a likelihood of confusion (Section a. above), causes Paragraph 4.(b)(iv) to be applicable to Art’s conduct here. Art’s concedes that Art’s has for more than a decade manufactured and offered the same or similar products as Kejr to the same customers in the same industry. It is entirely valid to infer that Art’s must have intentionally attempted to attract customers to its web site by way of the likelihood of confusion with Kejr’s registered marks Art’s necessarily created by registering the two domain names in issue and operating web sites at those addresses which linked the internet user directly to Art’s main web site.

Art’s failure to find another use of the domain names, subsequent to its discontinuing the practice of linking, is consistent with the conclusion that Art’s primary purpose and intent were to disrupt Kejr’s business and to attract potential Kejr customers by creating a likelihood of confusion. Art is not assisted by assertions here or in Art’s counsel’s July 9, 2001 letter, (Annex 12) that it is not Art’s intention to use "these marks [i.e. the two domain names in issue] ... in a fashion which would cause reasonable confusion with the goods and/or services rendered by [Kejr]." This is a nonsensical and irrelevant criterion. The law does not refer to "reasonable" confusion, whatever that is. The law refers to "likelihood" of confusion, which on this record is abundantly plain. In light of Art’s July 9, 2001 assertions, and its assertions in its Response here, unless the domain names in issue are transferred to Kejr, Kejr will be left facing the in terrorem effect of Art’s resuming use of either or both of the domain names to disrupt Kejr’s business or to attract Kejr customers to Art’s main web site because of the likelihood of confusion Art’s will again have created.

The Panel finds that, under Paragraph 4.(a)(iii), Art’s has registered and used each of the two domain names in issue in bad faith.

In light of the findings by the panel, the panel decides that Kejr has met its burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).

Accordingly, the panel requires that the registrations of each of the two domain names in issue (i.e., <geoprobesystem.com> and <geoprobesystem.net>) be transferred to Kejr.