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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Doctor’s Associates Inc. (DAI) v. DECO Solutions Group Inc.
Case No. D2006-0892
1. The Parties
The Complainant is Doctor’s Associates Inc. (DAI), Milford, Connecticut, United States of America, represented by Lorinda Church, United States of America.
The Respondent is DECO Solutions Group Inc., Clearwater, Florida, United States of America, represented by David R. Ellis, United States of America.
2. The Domain Names and Registrar
The disputed domain names <subshop2000.com> and <subwaypos.com> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2006. On July 14, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On July 18, 2006, 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 July 27, 2006. The Complainant filed a second amendment to the Complaint on August 8, 2006. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2006. The Response was filed with the Center on August 29, 2006.
The Center appointed Gary J. Nelson as the sole panelist in this matter on September 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a seller of franchises for the SUBWAY system. Purchasers of a franchisse have the right to establish and operate a retail establishment preparing and selling food, including long and specialty sandwiches, salads and other food items.
Complainant is the owner of the following United States Trademark Registrations:
- 1,174,608 SUBWAY
- 1,307,341 SUBWAY
- 2,678,351 SUBWAY (Design Mark)
- 2,678,350 SUBWAY (Design Mark)
- 2,732,170 SUBWAY EAT FRESH
Complainant operates a website at “www.subway.com” where it promotes the Subway franchised restaurants.
Internet users attempting to access the website corresponding to the <subwaypos.com> domain name are diverted to Respondent’s website at <convergence-inc.net>.
Internet users attempting to access the website corresponding to the <subshop2000.com> domain name are diverted to Respondent’s website at “www.convergence-inc.net”.
Respondent and Complainant have been engaged in a commercial relationship for many years, with Respondent providing point of sale system support to Complainant for its Subway franchised restaurants.
5. Parties’ Contentions
Complainant alleges ownership rights in at least five SUBWAY-based trademarks registered with the United States Patent and Trademark Office. Complainant claims the <subwaypos.com> domain name is confusingly similar to its SUBWAY-based trademarks.
Complainant alleges it has received a license to use the following trademarks which it, in turn, licenses to its franchisees for use in operating individual Subway restaurants:
- SUB SHOP/2000
- SUB SHOP/2000 HOME OFFICE
- SUB SHOP/2000 In-Store HOME OFFICE
Complainant claims the <subshop2000.com> domain name is identical to the SUB SHOP/2000 trademark to which it has license rights.
Complainant alleges Respondent has no rights or legitimate interests in the <subwaypos.com> and <subshop2000.com> domain names, and that Respondent registered and is using these domain names in bad faith.
Complainant requests that the domain names <subwaypos.com> and <subshop2000.com> be transferred to the Complainant.
Respondent objects to the filing of one UDRP Complaint to resolve the dispute over its ownership of the <subwaypos.com> and <subshop2000.com> domain names.
Respondent claims Complainant has violated paragraph 3(b)(vii) of the UDRP Rules by not specifically listing the goods/services covered by its registered trademarks, and alleges Complainant has not claimed trademark rights in SUBWAY for computer software and related goods/services.
Respondent claims Complainant does not have trademark rights in SUBSHOP2000, and that Complainant has not alleged to have such rights.
Respondent denies that <subwaypos.com> is substantially similar to Complainant’s registered SUBWAY trademarks, or that <subshop2000.com> is identical to SUB SHOP/2000, in which Complainant claims licensed rights.
Respondent claims it has a legitimate right to use the contested domain names because it is one [of many] Point of Sale (“POS”) system providers to the Subway franchised stores, and that this relationship makes Respondent a Subway-certified POS provider.
Respondent claims to have owned the <subwaypos.com> domain name since August 2000, and the <subshop2000.com> domain name since May 1999, and that it has developed common law trademark rights to SUBWAYPOS and SUBSHOP2000 through its extended use of these domain names.
Respondent further claims that its long time use of the contested domain names forecloses Complainant from now contesting its ownership of these domain names.
Respondent denies that it registered and is using the contested domain names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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.”
This decision is being issued based solely on the Complaint (and subsequent Amendments) submitted by the Complainant, and the Response submitted by the Respondent. Any other documents that may have been subsequently submitted have not been considered. See The Toronto-Dominion Bank v. Boris Kerpacev, WIPO Case No. D2000-1571.
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:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Respondent objects because Complainant has listed two different domain names as the subject of its Complaint. Respondent argues Complainant should have filed two separate Complaints, one for each domain name. This objection is noted and rejected. The Complainant has the right to include as many domain names in an UDRP Complaint as it deems to be in dispute, provided all domain names are owned by the same Respondent. In this case Respondent owns both of the contested domain names.
A. Identical or Confusingly Similar
Complainant is the owner of numerous United States trademark registrations for SUBWAY. Therefore, Complainant has established rights in the SUBWAY trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent has not challenged Complainant’s ownership of the SUBWAY trademark. Rather, Respondent merely argues that its own use of SUBWAY in the contested <subwaypos.com> domain name is descriptive of a computer program used for Point of Sale (POS) terminals for Subway sandwich shop franchises. This allegation is not relevant to the issue of whether Complainant has established ownership of trademark rights in SUBWAY.
Respondent also argues that Complainant only has trademark rights in SUBWAY for food items and food-related services, and that Complaint has no trademark rights for SUBWAY for computer programs and related goods/services. This argument is also irrelevant to the issue of whether Complainant has established trademark rights in SUBWAY. The submission of proof of ownership of a registered trademark is sufficient to meet the requirement of paragraph 4(a)(i) of the UDRP. The goods and/or services for which a trademark is registered are irrelevant when analyzing whether the Complainant has sufficient trademark rights to file an UDRP Complaint. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
Respondent has argued that the <subwaypos.com> domain name is not substantially similar to Complainant’s SUBWAY trademark. This is an erroneous inquiry. The Panel notes that the correct inquiry considered during adjudication is whether the <subwaypos.com> domain name is confusingly similar to Complainant’s SUBWAY trademark.
The Panel holds Respondent’s <subwaypos.com> domain name is indeed confusingly similar to Complainant’s SUBWAY trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic phrase “pos” and the generic top-level “.com”. Neither the addition of a generic phrase, such as “pos” [point of sale] to a another’s trademark nor the addition of the generic top-level domain suffix “.com”is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the <subwaypos.com> domain name.
Complainant has failed to establish that it owns trademark rights in SUBSHOP/2000.
Complainant does not claim ownership of the SUBSHOP/2000 trademark. Rather, Complainant alleges it has licensed rights to this trademark.
There is no evidence in the record supporting Complainant’s claim that SUBSHOP/2000 is a trademark.
Complainant has failed to submit any evidence that SUBSHOP/2000 is a registered trademark or that SUBSHOP/2000 is used as a trademark, by itself, by the actual owner of the mark, or by another licensee of the alleged mark. Complainant has failed to submit any evidence regarding the identity of the actual owner of the alleged SUBSHOP/2000 trademark.
While ownership of a registered trademark is sufficient to support a filing of an UDRP Complaint, see Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption), Complainant has not submitted any evidence that the SUBSHOP/2000 trademark is registered.
Likewise, while ownership of common law trademark rights is sufficient to support a filing of an UDRP Complaint, see Keepel TatLee Banck v. Taylor, WIPO Case No. D2001-0168 (“On account of long and substantial use of the said name (<keppelbank.com>) in connection with its banking business, it has acquired rights under the common law”), Complainant has not submitted any evidence that SUBSHOP/2000 has become a distinctive trademark through the acquisition of secondary meaning.
In regard to Complainant’s allegation that it has been licensed to use the SUBSHOP/2000 trademark, in certain circumstances, licensees can acquire sufficient trademark rights to support an UDRP Complaint. See Telcel, C.A. v. jerm and Jhonaton Ramirez, WIPO Case No. D2002-0309. However, this possibility is moot because of Complainant’s failure to establish that SUBSHOP/2000 functions as a trademark. Complainant has also failed to submit any evidence that it is indeed a licensed user of the SUBSHOP/2000 mark.
Accordingly, the Panel concludes Complainant has failed to prove it has trademark rights in SUBSHOP/2000 sufficient to support a filing of an UDRP Complaint against the <subshop2000.com> domain name. In light of this holding, there is no need to address any of the other UDRP elements below in regard to the <subshop2000.com> domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interest in the <subwaypos.com> domain name.
Respondent is using Complainant’s SUBWAY trademark to divert Internet Users to its own commercial website. This type of use of another’s trademark does not establish rights or a legitimate interest in the contested domain name. See Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 (holding that use which intentionally trades on the reputation of another cannot constitute a bona fide offering of goods and services); Household Int’l, Inc. v. Cyntom Enterprises, Nat. Arb. Forum Case No. FA95784 (employment of someone else’s well-known name undermines any claim to a legitimate interest).
Respondent is also not commonly known by the name SUBWAY. See paragraph 4(c)(ii) of the UDRP Policy. Rather, Respondent is commonly known as DECO Solutions Group, Inc. This fact does not support the claim by Respondent that it has rights or a legitimate interest in the <subwaypos.com> domain name.
Respondent claims that it has developed common law trademark rights in the SUBWAYPOS trademark through the continuous use of this term as a domain name beginning in August 2000. This claim fails. The mere registration of SUBWAYPOS as a domain name is not a commercial use of this term. Therefore, Respondent is not capable of acquiring trademark rights in SUBWAYPOS through the mere use of SUBWAYPOS as a domain name.
The record does not contain any evidence that Respondent has ever used SUBWAYPOS as a trademark. The only evidence in the record showing use of SUBWAYPOS by Respondent is use as a domain name. Accordingly, Respondent has failed to establish that it owns trademark rights in SUBWAYPOS.
Complainant has proven the requirement of Policy, paragraph 4(a)(ii) regarding the <subwaypos.com> domain name and Respondent has not proving that it has rights or a legitimate interest in the contested domain name.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
The Panel finds that Respondent likely chose the <subwaypos.com> domain name with full knowledge of Complainant’s rights in the SUBWAY trademark. Respondent’s awareness of Complainant’s SUBWAY trademark may be inferred because the SUBWAY trademark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the <subwaypos.com> domain name and because the SUBWAY trademark is well known. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik, WIPO Case No. D2000-0911 (Respondent’s choice to register a well known mark as a domain name held to be bad faith).
Furthermore, Respondent had knowledge of Complainant’s rights in the SUBWAY trademark at the time it registered the <subwaypos.com> domain name. The Panel finds that Respondent in all likelihood intentionally registered the <subwaypos.com> domain name to trade on the good will developed by Complainant in its SUBWAY trademark. The diversion of Internet user’s to Respondent’s website by incorporating Complainant’s well known SUBWAY trademark into its domain name is evidence Respondent registered and is using the <subwaypos.com> domain name in bad faith. Therefore the Panel finds that the Complainant has established the third element of the Policy regarding the disputed domain name <subwaypos.com>.
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 <subwaypos.com> be transferred to the Complainant.
For all the foregoing reasons, the Complaint, as it relates to the <subshop2000.com> domain name, is denied.
Gary J. Nelson
Date: September 23, 2006