Complainant is J. R. Four Ltd. Dba Technical Glass Products of Snoqualmie, Washington, United States of America, represented by Davis Wright Tremaine LLP, United States.
Respondent is Michael Monaghan of Quincy, Illinois, United States, represented by Mays, Walden & Anastas, P.C., United States.
The disputed domain name <fireglassonline.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On December 19, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Response was filed with the Center on January 18, 2012. On January 26, 2012, Complainant filed a “Reply in Support of UDRP Complaint.” The Center notified the parties that this Reply was a Supplemental Filing, the consideration and admissibility of which would be within the sole discretion of the Panel.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on January 27, 2012. 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.
Complainant supplies the architectural and industrial communities with specialty glazing materials, including fire-rated glass and framing, super heat resistant glass for industrial use, U.V. filtering lenses, and wood stove replacement glass.
Complainant has used the trademark FIREGLASS in connection with sales of its goods and services as early as 1998, and, on July 30, 2002, obtained a registration of the mark, Reg. No. 2,601,442, on the Principal Register of the United States of America for “glass building materials namely fire-rated window glass.” Complainant obtained a Canadian registration for the mark in 2004.
There is some inconsistency in the record as to whether Respondent registered the Domain Name in January 2008 or January 2010. The Registrar shows a record creation date of January 8, 2010.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s FIREGLASS trademark, in which Complainant has rights. The FIREGLASS trademark is distinctive and widely recognized, has become an indicator of source and quality among consumers, and is federally registered by the USPTO and in Canada. The United States registration has become incontestable and “satisfies the threshold requirement of having trademark rights.”
Complainant contends that the Domain Name is legally identical to its FIREGLASS trademark. The addition to its trademark of the generic word “online” and the suffix “.com” do not distinguish the Domain Name from Complainant’s trademark.
Complainant contends that consumers encountering <fireglassonline.com> when searching for Complainant will naturally assume the website associated with it is operated by or affiliated with Complainant. This mistaken assumption is particularly likely given that Complainant operates its main website using the domain name <fireglass.com>. In addition, the content of Respondent’s website exacerbates this confusion because it purports to offer “[f]ireplace glass” and “[w]ood stove replacement glass,” products that compete with products Complainant offers.
Complainant contends that Respondent has not acquired any rights or legitimate interests in the Domain Name. Respondent has not, Complainant asserts, made a bona fide offering of goods or services under the name “fireglassonline” or the Domain Name. Respondent registered the Domain Name a decade after Complainant began using its FIREGLASS trademark and several years after Complainant received a United States trademark registration.
Complainant contends that Respondent’s use of Complainant’s trademark to offer for sale or to direct customers to the products of Complainant’s competitors is not a bona fide use because it is a misleading use of a trademark, a form of unfair competition, and a form of ‘bait and switch’ selling harmful to consumers.
Complainant further contends that Respondent is using Complainant’s federally registered mark in an obvious effort to benefit from the goodwill and name recognition Complainant has built up in its FIREGLASS mark. Respondent’s website “www.fireglassonline.com” offers goods and services similar and identical to those goods and services associated with Complainant’s name and mark. A consumer of Complainant’s fire-rated glass and related goods may very reasonably believe that the Domain Name is sponsored by, endorsed by, or affiliated with Complainant. By using a domain name that incorporates Complainant’s mark, Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks and domain name.
In its Reply, Complainant contends that Respondent makes a number of factual misstatements in its Response to the effect that Complainant and Respondent do not offer competing products. While Respondent contends that he sells Pyroceram, a brand of ceramic glass for fireplaces and wood stoves, and that Complainant sells only architectural glass, which is not used for fireplace and wood stove windows, Complainant states that it is the exclusive distributor in North America for Neoceram ceramic glass, which is used for gas and wood-burning stoves and fireplaces and which Complainant sells on its website at <fireglass.com>. Complainant asks on its website whether customers are looking for “fireplace glass and wood stove replacement glass, pyroceram, neoceram, or robax.” Respondent’s website has a page headed “Neoceram, wood stove glass, glass ceramic, robax Information” which states that there is no visual or performance difference between pyroceram, neoceram, or robax except the trademarks and indicates that the customer can “Order Neoceram/Pyroceram Here.” Complainant contends that Respondent’s website is thus selling product that competes directly with product offered on Complainant’s website.
Finally, Complainant says that Respondent cannot show that his use of the Domain Name is noncommercial, or that he is commonly known as “fireglassonline.” Instead, Respondent has deliberately traded on Complainant’s trademark by offering competing products for his own financial benefit.
Finally, Complainant contends that registration of the Domain Name featuring another’s trademark years after Complainant began using the mark and registered it evidences bad faith registration and use.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in that “by using the domain name, [the respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 web site or location or of a product or service on [respondent’s] web site or location.” (Policy, paragraph 4(b)(iv)) Respondent’s website associated with the Domain Name features products that compete with Complainant’s products, evidencing a bad-faith attempt to profit from confusion by Internet users who mistakenly visit <fireglassonline.com> to find Complainant or its products. Respondent’s registration and use of the Domain Name is a blatant theft of the goodwill associated with Complainant’s trademark.
Further, Complainant contends that when it contacted Respondent regarding Respondent’s use of the Domain Name, Respondent offered to sell Complainant the Domain Name for USD 150,000 or his entire business for USD 1.4 million and that this is further evidence of bad faith.
Respondent does not dispute that the Domain Name and Complainant’s <fireglass.com> are legally identical or confusingly similar. Respondent does challenge Complainant’s assertion that “customers encountering the Domain Name when searching for Complainant will naturally assume the website associated with it is operated by or affiliated with Complainant.” Respondent alleges that the parties sell different products to different target customers so that a potential customer of Complainant reaching Respondent’s web site will not find the product he/she wants. Complainant’s clients are looking for fire-rated architectural glass used in the construction of buildings wherever fire rated glass is required. Each piece of glass needs to be custom fit to the job specifications. On <fireglass.com>, customers can request a quote, but cannot order the product.
In contrast, Respondent says that he sells “Pyroceram” on his website. Pyroceram is a glass ceramic product used in fireplace and wood stove glass replacement. These are small pieces of glass that withstand temperatures up to 1400° F, cut to a standard size and shipped to the customer for installation. Customers can order Pyroceram on <fireglassonline.com>. Respondent says that he does not sell fire-rated architectural glass on his website.
Respondent asserts that Complainant’s and Respondent’s websites are visually dissimilar such that a previous customer of Complainant’s website who reached Respondent’s site would know immediately that he was not at his intended destination from the site’s layout and content. The customer would also realize that he was at the incorrect website when he tried to order fire-rated architectural glass and could not do so.
Respondent contends that Complainant’s FIREGLASS trademark is for “Glass building materials namely fire-rated window glass…” and not a trademark for any product related to fireplaces or wood stove replacement glass.
Respondent contends that he used the Domain Name in connection with a bona fide offering of goods prior to notice of this dispute. Respondent operated his website selling Pyroceram since 2008. Pyroceram is distinctly different from the architectural glass sold at Complainant’s website. The two products are not interchangeable, and the parties are not competing for the same customers. There is no “bait and switch” selling as claimed by Claimant.
Respondent contends that he is not attempting to benefit from the goodwill and name recognition associated with Complainant’s FIREGLASS mark. Even if Respondent was attempting to divert traffic from <fireglass.com> to <fireglassonline.com>, he contends, no customer attempting to find Complainant’s website would be able to get the product they were seeking at Respondent’s website. The products are different, have different applications and cannot be used interchangeably. It is unreasonable to believe, Respondent says, that an individual looking for fire-rated architectural glass would mistakenly order anything from his website.
Furthermore, Respondent contends, anyone searching for fire-rated architectural glass would be a person engaged in the building trades. An individual with knowledge required to install architectural glass (i.e. glass door or wall measuring 3’ x 8’ and larger) would not be confused and order a Pyroceram fireplace door glass measuring 42” x 42” at the absolute largest.
Respondent contends also that he is commonly known by the name fireglassonline.com. When a customer orders a piece of Pyroceram from <fireglassonline.com> that is the name that appears on the credit card statement.
Respondent contends that he has not registered or used the Domain Name in bad faith. He uses the Domain Name in his legitimate business that is not in competition with Complainant. There is no evidence, he asserts, that Respondent registered and used the Domain Name with a view toward diverting Internet users looking to locate information about Complainant. The Domain Name was registered for exactly the purpose for which it has been used, i.e. selling Pyroceram. There is no evidence showing intent to disrupt Complainant’s business and no reason Respondent would want to disrupt a non-competitor’s business.
Lastly, Respondent contends there is no evidence that the Domain Name was registered or acquired for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or any other party. This is a non-competing business using a domain name associated with his business. Respondent contends he gains no benefit from having a domain name similar to Complainant’s <fireglass.com>.
Prior to appointment of the Panel in this case, Complainant submitted a “Reply in Support of UDRP Complaint.” The Rules do not expressly provide for a Reply to the Response. Neither the Center nor the Panel solicited a Reply. Paragraphs 10 and 12 of the Rules, however, afford the Panel discretion in taking further statements and documents from the parties and in determining the admissibility, relevance and materiality of evidence.
Here, Complainant contends that its Reply is “appropriate to address material misstatements of fact or to respond to matters that could not have been anticipated in the initial submission.” The Panel agrees. Complainant’s Reply does in fact address several significant statements of material fact in the Response concerning the products offered for sale on Complainant’s and Respondent’s websites that could not be anticipated in the Complaint. Without Complainant’s Reply, the record in this matter would be incomplete and possibly materially misleading. The Panel therefore accepts and will consider Complainant’s Reply.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Complainant clearly has rights in its FIREGLASS trademark by reason of the mark’s federal registration in the United States and Canada and its long-term use in commerce. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 1.1. See also Yahoo! Inc. v. SL Pace a/k/a Chris Carter, NAF Claim No. FA0901001240860 (registration is “sufficient to establish Complainant’s rights in the mark”) (citing cases). Respondent makes no challenge to Complainant’s trademark rights.
Respondent concedes, correctly in the Panel’s view, that Complainant’s <fireglass.com> and Respondent’s <fireglassonline.com> are legally identical. Inasmuch as the generic top level domains are ignored for purposes of this comparison, it is true also that Complainant’s FIREGLASS trademark and the Domain Name are legally identical or confusingly similar within the meaning of the Policy. Club Monaco Corp. v. clubmonacoonline, WIPO Case No. D2011-1186 (<clubmonacoonline.com> confusingly similar to CLUB MONACO). It “equally does not prevent the confusing similarity in the minds of Internet visitors and consumers.” Id. See also F. Hoffmann-La Roche AG v. PrivacyProtect.Org/Sergey Mishin, WIPO Case No. D2011-1096 (addition of terms “buy” and “online” to “xenical” did not distinguish domain name from complainant’s XENICAL trademark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); United States Patent & Trademark Office, Trademark Manual of Examining Procedure § 1215.02, accessible at “www.uspto.gov “(“[N]either the beginning of the URL (“http://www.”) nor the gTLD “.com” have any source-indicating significance.”).
In considering this element of the case, the Panel does not look beyond a comparison of the Domain Name and the Complainant’s trademark. Respondent’s arguments that an Internet user would be able to resolve any initial confusion once he/she examined Respondent’s website for product offerings and layout are not relevant in considering the similarity of the trademark and the Domain Name to determine this element of a UDRP case. See WIPO Overview 2.0, paragraph 1.2.
Complainant establishes the first element of its case.
Complainant must show that Respondent has no rights or legitimate interests in the Domain Name. In practical effect, however, once Complainant has made a prima facie case that Respondent lacks rights or legitimate interests the burden shifts to Respondent to demonstrate that he has such rights or interests. Here, Respondent attempts to demonstrate, in accord with Policy, paragraph 4.c.(i), “before any notice to [him] of the dispute, [his] use of . . . the domain name . . . in connection with a bona fide offering of goods . . .
The record supports that Respondent registered the Domain Name and was operating his website to sell goods prior to being notified by Complainant in August 2010 that there was a dispute with respect to the Domain Name. The key question here is whether, under the circumstances, Respondent’s offering of goods is bona fide within the meaning of the Policy.
Complainant argues that Respondent’s offering of goods using a Domain Name incorporating Complainant’s trademark to sell goods that compete with Complainant’s products constitutes misleading use of a trademark, unfair competition, and a form of “bait and switch” selling that is harmful to Complainant and consumers. Respondent countered by asserting that Complainant sold only architectural glass, that Respondent sold only Pyroceram ceramic glass, that the products were different, used for different purposes and sold to different customers, and that Respondent, therefore, did not compete with Complainant.
For purposes of assessing the second element of paragraph 4(a) of the Policy, the Panel finds that Respondent does not have rights and legitimate interests in the Domain Name. Indeed, based on the case record, the Panel is satisfied that Respondent, who it appears from his own website usually trades under MuBuildingTrades.com Inc., likely chose Complainant’s registered trademark as the basis for the Domain Name to sell products similar to and competing with those sold by Complainant.
The evidentiary record before the Panel shows that Complainant offers Neoceram, a ceramic glass, for use in fireplaces and wood stoves on its <fireglass.com> website. Respondent offers both Pyroceram and Neoceram ceramic glass on his website. He states on the website that “there is no visual or performance difference between pyroceram, neoceram, or robax. The difference is just trademarks . . ..” Elsewhere on the site, Respondent states that Pyroceram, Neoceram, and Robax “are just different brand names for the same type of product.” He promotes Neoceram as” the ideal solution for many wood stoves and fireplaces.” He states also that the applications for Neoceram continue to grow from Wood Stoves, Gas Fireplaces, Electric Heaters to High Tech Applications.” Respondent’s Neoceram page concludes with a button that says “Order Neoceram/Pyroceram Here.” The Panel thus finds that, contrary to Respondent’s contentions, Respondent is in fact competing with Complainant for the sale of ceramic glass products for use with wood stoves and fireplaces and possibly other uses as well, and as discussed above and further below under bad faith, the Panel believes it more likely than not that this is why Respondent registered a domain name containing Complainant’s trademark1
The use of a complainant’s trademark to offer for sale or to direct customers to the products of the complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling.” Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; see also Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (ordering transfer of domain name where respondent offered complainant’s goods and those of its competitors); The Dow Chemical Company and Flexible Products Company v. Domain Discreet/Commercial Thermal Solutions Inc., WIPO Case No. D2008-0910 (and cases cited therein).
The Panel’s considers that Respondent cannot legitimately appropriate another’s trademark into a domain name and then use that domain name to offer goods or services that compete directly with those of the trademark owner. This is what has occurred here. It is not a bona fide offering of goods that should be permitted to establish that Respondent has rights or legitimate interests in the Domain Name. The Panel therefore finds that Respondent’s offering of goods under the Domain Name is not bona fide within the meaning of the Policy.
With respect to Respondent’s argument that he is commonly known by the name “fireglassonline.com”, the Policy provides that one may demonstrate rights or legitimate interests in a domain name by showing that “you (as an individual, business, or other organization) have been commonly known by the domain name.” Policy, paragraph 4(c)(iii). There is no showing that Respondent Michael Monaghan is commonly known as “fireglassonline.com” or any variation of that designation. Respondent’s website states that FireGlassOnline is a division of MyBuildingTrades.com Inc. and that that is the name that will appear on a customer’s credit card statement.
The gist of Respondent’s argument is that his business is commonly known as “fireglassonline.” There is no showing that the business was commonly known by that name or anything like it before Respondent registered the Domain Name. The Panel considers that it would turn the Policy on its head to hold that one could misappropriate another’s trademark into a domain name, call the website by the same name as the domain name and thereby establish one’s own legitimate interests in the Domain Name for purposes of applying the Policy’s “commonly known as” justification. Under the circumstances here, this would be tantamount to saying that one may establish legitimate interests in a Domain Name by showing that he appropriated and used another’s trademark. This is simply not a proper interpretation or application of Policy’s paragraph 4(c)(ii). See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
In the opinion of the Panel Respondent has not shown that he has rights or legitimate interests in the Domain Name. Complainant thus established the second element of its case.
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Policy paragraph 4(a)(iii).
Complainant began using the trademark FIREGLASS at least as early as 1998 and obtained a United States registration in 2002. Respondent apparently registered the Domain Name in 2010. Based on the registration, Respondent is chargeable with actual or constructive knowledge of Complainant’s rights in the mark. Prior UDRP panels have held that “Registration of a confusingly similar domain name featuring another’s mark despite constructive or actual knowledge of the mark holder’s rights is evidence of bad faith registration and use.” DC Comics, Turner Entertainment Company and Warner Bros. Entertainment Inc. v. IQ Management Corporation, NAF Claim No. FA0507000514423. Bad faith exists where respondent knew or should have known of complainant’s trademark rights before registering a domain name that incorporates the other’s trademark. Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051. The Panel’s decision does not rest on this factor alone.
The Policy provides that the following shall be evidence of bad faith registration and use:
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [respondent’s] web site or location.”
Policy, paragraph 4(b)(iv). The facts are sufficient to warrant finding that Respondent intentionally created a likelihood of confusion with Complainant’s registered trademark. This cannot be a subjective test. The intent can be inferred from the clear likelihood that Respondent chose Complainant’s registered trademark as the basis for his new Domain Name which would be used to sell products similar to and competing with those sold by Complainant. This is under the circumstances sufficient to establish the requisite bad faith. The fact that Respondent’s protests that he was selling only noncompeting goods have proved to be untrue further supports the finding.
The fact that Respondent offered to sell the Domain Name to Complainant for more than USD 150,000, an amount almost certainly greater than his out-of-pocket costs directly related to the Domain Name, is additional evidence of bad faith in this case. See, e.g., Supply Guys, Inc. v. Lonvestor, WIPO Case No. D2006-1534 (finding bad faith where the respondent offered to sell the disputed domain name for $2,500 because the offer was above the out-of-pocket costs directly related to the registration); DZ Bank AG v. Bentz, WIPO Case No. D2006-0414 (finding bad faith where the respondent offered to sell the disputed domain name for $10,000).
The Panel concludes that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use of the Domain Name for the purposes of the Policy and has thus established the third and final element of its case.
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 <fireglassonline.com> be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: February 10, 2012
1 The Panel notes that Respondent has neither provided nor supported a viable alternative explanation for his choice of the Domain Name.