24th Jun 2002

 

CPR Institute for Dispute Resolution

COMPLAINANT: Four Seasons Solar Products, LLC

Address: 5005 Veterans Memorial Highway

Holbrook, NY 1741 File Number: CPR0211

Telephone: 631 231 3717 Date of Commencement: May 20, 2002

fax: 631 231 2896

E-mail: hgp@plummerlaw.com Domain Names: FOURSEASONSUNROOM.COM

webmaster@four-seasons-sunrooms.com FOURSEASONSUNROOMS.COM

4SEASONSUNROOMS.COM

Registrars: Intercosmos Media Group, Inc. and tucows

 

vs.

 

Arbitrator: David W. Plant

RESPONDENT: David Harris

Address: 1818 Washington Street

Hanover, MA 02339

Telephone: 617 605 4165

fax

E-mail: dharris4@mediaone.net

g@ESQwire.com

Before David W. Plant, Arbitrator

 

 

PROCEDURAL HISTORY

The Complaint was filed with CPR and served on Respondent on May 16, 2002. Respondent filed a Response on June 14, 2002. I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and Rules promulgated by the Internet Corporation for Domain Names and Numbers (ICANN). Upon the written submitted record, including the Complaint and annexed exhibits and Response and annexed exhibits (including Respondent’s affidavit), I find as follows:

FINDINGS

Respondent’s domain names were registered as follows:

Domain Name Date Registered Registrar

FOURSEASONSUNROOM.COM 18 June 2000 Tucows, Inc.

FOURSEASONSUNROOMS.COM 5 February 2000 Intercosmos Media Group, Inc.

4SEASONSUNROOMS.COM 1 April 2000 Intercosmos Media Group, Inc.

In registering the domain names, Respondent agreed to submit to this forum for resolution of any dispute concerning the
domain names, pursuant to the UDRP.

The UDRP provides, at Paragraph 4(a), that each of three findings must be made with respect to each domain name in order

for a Complainant to prevail as to all three domain names:

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’s domain name has been registered and is being used in bad faith.

Paragraph 4 provides also that Complainant “must prove that each of these three elements” is present.

IDENTITY/CONFUSING SIMILARITY: Complainant alleges that each of the three domain names in issue is confusingly similar to Complainant’s trademarks, FOUR SEASONS and FOUR SEASONS SUNROOMS, as well asComplainant’s domain name FOUR-SEASONS-SUNROOMS.COM. Complainant has registered or applied for registrationof each of the foregoing with the U. S. Patent and Trademark Office, as follows:

 

Mark Date Date Date Reg./Appln. No.

First Use Application Registered
 
FOUR SEASONS 2-28-1977 4-1-1982 11-26-85 1,372,107

FOUR SEASONS SUN ROOMS 1-0-1992 11-5-1993 7-25-95 1,907,045

FOUR-SEASONS-SUN-ROOMS.COM 4-9-2002 SN 76127100

All three marks are for goods and services relating to solariums and greenhouses in homes and their installation. The

registration for FOUR SEASONS SUN ROOMS refers specifically to inter alia patio sunrooms and room additions.
 

It appears from the copy of the registration for the FOUR SEASONS mark that Complainant’s right to use this mark has

become incontestable under 15 U.S.C. §1065.
 

The application to register the domain name is an intent to use application, with no date of actual use asserted as of the April

9, 2002 filing date. Complainant asserts this domain name was registered July 26, 1995 with Network Solutions and it “has

used that domain in connection with the sale and manufacturing of sunrooms and solariums since July 26, 1995.”
 

UDRP inquiries and rights are based on trademarks and service marks, not on domain names. Accordingly, Complainant’s

registered domain name cannot provide a basis for a determination in favor of Complainant, absent a showing by Complainant of its use of the domain name as a trade mark or service mark in which in which Complainant has rights.Complainant has made no such showing. Complainant’s unsupported allegation of use of the domain name – at unstated times –, together with Complainant’s failure to allege use of the domain name as a trademark or service mark in Complainant’s April 9, 2002 application for registration, provides this Arbitrator no basis for according trademark or servicemark status to the domain name. Thus, we need not consider Complainant’s domain name.

Complainant asserts the domain names in issue are confusingly similar to Complainant’s marks because the domain names are merely misspellings of the marks. Ample authority supports this contention. Misspellings do not save domain names

from a finding that the domain names are virtually identical or confusingly similar to the marks. Encyclopedia Britannica. John Zuccarini et al, WIPO D 2000-0330, Chanel v. Estco, WIPO D 2000-0413, Yahoo et al v. Data Art et al, WIPO D 2000-0587, Toyota v. S&S Enterprises, WIPO D 2000-0802. The differences in spelling do not avail Respondent here.

Respondent contends that the generic character of the Complainant’s marks prohibits a finding of confusing similarity.

Evidence cited by Respondent and collected at Exhibits 1 and 2 arguably supports this contention. However, on this recordand in this proceeding, it is inappropriate for the Arbitrator to find that either of Complainant’s marks is generic – especiallythe FOURSEASONS mark which appears to have been used by Complainant for the stated goods and services for morethan 25 years, and Complainant’s exclusive use of which for the stated goods and services appears to have become incontestable under Section 1065.

I conclude that the registered domain names are confusingly similar to Complainant’s marks FOUR SEASONS and FOUR

SEASON SUN ROOMS.

RIGHTS AND LEGITIMATE INTERESTS: Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name at issue. In support for this allegation, Complainant avers:

“The Respondent has no legitimate business interest in these domain names. Respondent is a competitor of Complainant. It’s [sic] only interest in registering the domain names that are mere misspellings of Complainant’s domain name and trademark is to capture Complainant’s customers who make a typographical error in entering complainant’s domain name.”

Complainant offers no evidence in support of this averment. Indeed, to the contrary, Complainant asserts:

“Prior to having notice of this dispute, Respondent has used the domain names in question to make bona fide offerings of goods and services.”

Nothing in the record suggests that this admission is in any way inadvertent or otherwise mistaken. The principal contact person for the complaint is Complainant’s counsel. Complainant’s Vice President Finance signed the Complaint, which include the requisite certification that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate. Also, Respondent’s affidavit states that he has been designing and building sunrooms since 1972, and he registered the domain names “to advertise my sunroom construction business online.” Finally, Complainant has taken no steps to change its assertion.

As Respondent notes, Complainant’s admission effectively eliminates any basis for Complainant’s prevailing here. In particular, Complainant cannot satisfy the second criterion necessary to obtain the relief it seeks here. That is, Complainant has admitted it cannot prove that Respondent has no rights or legitimate interests in respect of the domain names. UDRP Paragraph 4(c) expressly provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated by showing that inter alia before notice to Respondent of the dispute, Respondent has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. This is precisely what Complainant agrees Respondent has done with the domain names in question. Complainant has simply admitted it is not entitled to relief in this proceeding.

I conclude that Respondent has rights and legitimate interests with respect to the three domain names at issue.

BAD FAITH: We need not consider the issue of bad faith registration and use in light of the conclusion that Respondent has rights and legitimate interests in the three domain names in question. However, I am constrained to note that Complainant’s mere rephrasing of two of the illustrative circumstances in which bad faith may be found (i.e. UDRP Paragraph 4.b.iii. and 4.b.iv), without any supporting evidence, is not destined to carry Complainant’s burden of proof.

CONCLUSION

In light of my findings above that Respondent has rights and legitimate interests with respect to the three domain names at issue, Complainant has failed to discharge its burden of proof under UDRP Paragraph 4.a.

REMEDY

Complainant’s request to transfer the domain names FOURSEASONSUNROOM.COM, FOURSEASONSUNROOMS.COM, and 4SEASONSUNROOMS.COM is hereby DENIED.

June 24, 2002

Signature of Arbitrator Date