28th Oct 2011

NATIONAL ARBITRATION FORUM

  

DECISION 

Rick Beckham d/b/a PatioKits v. Vertical Axis Inc. / Domain Administrator

Claim Number: FA1109001406293 

PARTIES

Complainant is Rick Beckham d/b/a PatioKits (“Complainant”), represented by John Di Giacomo of Traverse Legal, PLC, Michigan, USA.  Respondent isVertical Axis Inc. / Domain Administrator (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <patiokit.com>, registered with Fabulous.com Pty Ltd.

PANEL

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

 James Bridgeman as Chairman.

Sir Ian Barker as Panelist.

Diane Cabelle as Panelist. 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2011; the National Arbitration Forum received payment on September 7, 2011.

On September 7, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <patiokit.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2011 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@patiokit.com.  Also on September 12, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 October 4, 2011.

Complainant’s Additional Submission was received by the Forum on October 10, 2011, and was deemed to be in compliance with the Forum’s Supplemental Rule 7.

On October 13, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James Bridgeman as Chairman, Sir Ian Barker as Panelist and Diane Cabelle as Panelist.

On October 17, 2011 Additional Submissions were filed by Respondent which have been admitted by the Panel. 

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant 

Complainant carries on an online retail business using the business name PatioKits. 

Complainant registered the domain name <patiokits.com> on October 9, 2004. Complainant subsequently registered the disputed domain name <patiokit.com> on November 6, 2004. Since November 18, 2004, Complainant has continuously maintained an internet presence using his domain name <patiokits.com> as the address of his website for his business as an online retailer of do-it-yourself backyard products, including but not limited to patio cover kits, enclosure kits, carports, and awnings.

Complainant failed to renew the registration of <patiokit.com> and Complainant’s registration of that domain name expired.

Complainant submits that the PATIOKITS.COM mark has been featured in numerous national publications, including Small Business Opportunitiesmagazine in Spring 2005 and July 2005. Complainant has also extensively advertised its PATIOKITS.COM mark online through its principal website, which is located at <patiokits.com>, as well as its prior website at <patiokit.com> and third party websites, such as Small Business Opportunities. Complainant has provided evidence of such use in the form of copies of the Spring 2005 and July 2005 issues of Small Business Opportunities magazine and a printout of Small Business Opportunities website. Complainant has also advertised its mark on cable and satellite television through the nationally known DIY Network. Complainant submits that it is important to note that “[p]aragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the registration of the <patiokit.com> domain name by the Respondent. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003); see also Digital Vision, Ltd v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001) (noting that despite the fact that the registration of the DIGITAL VISION marks postdate the domain name registration by the Respondent, Paragraph 4(a)(i) does not require that the trade mark be registered prior to the domain name, as that is considered as part of bad faith only). Even assuming, arguendo, that Complainant’s mark could have been considered descriptive, Complainant’s prominent, continuous, and extensive use of the PATIOKITS.COM mark in commerce in connection with its do-it-yourself patios, enclosures, and awnings since as early as 2004 has resulted in Complainant’s acquisition of trademark rights and secondary meaning in the PATIOKITS.COM mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Valiant Trust Co. v.Valiant Trust, FA844658 (Nat. Arb. Forum Jan. 11, 2007) (finding common law trademark rights for the Complainant’s VALIANT TRUST CO. mark due to its continuous and extensive use of the mark in connection with its financial services business).

As a result of his expenditures of considerable sums of money on advertising and promotional activity through the Internet and across the world for over seven (7) years, Complainant has built valuable goodwill in its distinctive identifier PATIOKITS.COM. Complainant argues that consumers have come to understand that Complainant’s PATIOKITS.COM mark is a distinctive identifier of Complainant’s do-it-yourself patios, enclosures, and awnings. Complainant has established secondary meaning in its PATIOKITS.COM mark through its longstanding use in commerce since 2004, its extensive advertising campaigns in print media, which have been distributed across the United States, its extensive advertising on national television, and the use of its PATIOKITS.COM trademark on both <patiokits.com> and <patiokit.com>.

Complainant submits that the disputed domain name is confusingly similar to Complainants PATIOKITS.COM trademark. Complainant asserts that his mark is not descriptive of the goods sold under that mark. Complainant’s PATIOKITS.COM mark is the suggestive creation of Complainant himself.

Complainant submits that Respondent is a cybersquatter and  has no rights or legitimate interest in the disputed domain name. Complainant submits that he was the owner of the disputed domain name <patiokit.com> for approximately one year. Respondent registered the disputed domain name<patiokit.com> on or about November 1, 2010 after Complainant’s registrar failed to notify Complainant that his registration of the disputed domain name was pending deletion. Complainant argues that consequently, Complainant’s rights in the PATIOKITS.COM mark predate Respondent’s first possible registration date of the <patiokit.com> domain name by six (6) years. See Zander Ins. Agency, Inc. v. Role, Manage c/o Admin. Local, FA 1219610 (Nat. Arb. Forum Oct. 7, 2008) (finding common law rights in ZANDER INSURANCE mark, despite second in time USPTO registration, where mark was continuously used in commerce before respondent’s registration of identical domain name).

Complainant asks this Panel to note that Respondent’s business is unknown. Respondent’s contact information is shielded by WHOIS privacy protection.

Complainant submits that once he has established a prima facie case in support of his allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interest with respect to the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting the same because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that the mere assertion by the Complainant that the Respondent has no right or legitimate interest in the domain name can be sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

Complainant asserts that Respondent has not been commonly known by PATIOKITS.COM, and Respondent has acquired no trademark or service mark rights in PATIOKITS.COM or any variation thereof. See Gallup Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Complainant could not identify anything showing that Respondent carries on its own business as PATIOKITS.COM.

Furthermore Complainant asserts that he has never authorized, licensed, or otherwise permitted Respondent to use its PATIOKITS.COM mark or allowed Respondent to associate itself with Complainant in any way. See Annex E, Affidavit of Rick Beckham.

Since its registration, Respondent has used the disputed domain name as the address of website to offer goods and services in direct competition with Complainant’s goods and services. Respondent displays pay per click advertisements for goods in services in direct competition with Complainant. When clicked, these links forward users to the websites of third party businesses in competition with Complainant.

Furthermore, Complainant alleges that since its registration, Respondent has solicited third parties to provide Respondent with an offer to purchase the<patiokit.com> domain name through <domainbrokers.com>, a domain brokering service. Complainant has furnished a print out of <domainbrokers.com> page associated with <patiokit.com>.  Complainant has furnished an exchange of email correspondence to support his assertion that Respondent has also previously offered to sell the <patiokit.com> domain name to PatioKits for $25,000.

Complainant submits that Respondent’s registration and use of this domain name has caused actual confusion. More specifically, Complainant lost a $12,000 sale because an individual was misled into believing that Complainant was not a legitimate business because it was offering its <patiokit.com>domain name for sale.  Consequently, by unlawfully registering and using Complainant’s disputed <patiokit.com> domain name in bad faith, Respondent has attempted to disrupt Complainant’s business and has redirected traffic intended for Complainant’s website to its own website for commercial gain.

Complainant alleges that Respondent has hijacked Complainant’s well known and highly regarded <patiokit.com> domain name and PATIOKITS.COM mark to capitalize on the goodwill associated with Complainant’s mark. See Int’ll Olympic Comm. v. Greek Historical Domains Soc., FA1382972 (Nat. Arb. Forum May 26, 2011); see also Kwon v. “Public Prosecutor,D2004-0166 (WIPO April 17, 2004) (finding no rights or legitimate interests where Respondent “usurped Complainant’s domain name”); see also Victory Pharma, Inc. v. Carpela, FA 1216493 (Nat. Arb. Forum Sept. 2, 2008) (“Respondent is clearly attempting to capitalize off the goodwill associated with Complainant’s mark, and this evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

Complainant further alleges that Respondent is clearly using the <patiokit.com> domain name to redirect Internet users to Respondent’s websites, where it features links to third-party websites offering goods that compete with Complainant’s goods or otherwise confuse consumers. Respondent’s use of the<patiokit.com> domain name to link to websites that offer similar goods that compete with Complainant is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4I(i), or a legitimate noncommercial or fair use of the Infringing Domains under Policy ¶ 4I(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell goods in direct competition with Complainant’s goods is not a bona fide offering or fair use); see also DLJ Long Term Inv. Corp. v.BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also The Weather Underground, Inc. v. Click Cons. Ltd., FA 1152428 (Nat. Arb. Forum April 2, 2008) (“The website that resolves from the <www-wunderground.com> domain name displays a list of hyperlinks, many of which advertise competing weather informational and advisory services. This use is likely to disrupt Complainant’s business by diverting customers to the websites of Complainant’s competitors.”).

Complainant argues that since Respondent is using the <patiokit.com> domain name as a link site to generate click-through revenue by preying upon Internet users, who intend to arrive at Complainant’s <patiokits.com> website but instead arrive at Respondent’s pay per click advertisements, Respondent has no rights to the PATIOKITS.COM mark or a legitimate interest in the <patiokit.com> domain name.

 

Complainant submits that the disputed domain name was registered and is being used in bad faith primarily for the purpose of disrupting Complainant’s business. Respondent is intentionally attracting Internet users to a website that offers links to Complainant’s competitors in order to capitalize with pay-per-click revenue. Such use is not legitimate, is a use of the disputed domain name by Respondent in bad faith. See Wynn Resorts Holdings, LLC v. McMahon, FA 1178449 (Nat. Arb. Forum May 27, 2008) (finding evidence of bad faith registration and use since Respondent was gaining commercially by diverting Internet users to its sites both through click-through fees and through competing services); see also See Int’l Olympic Comm. v. Greek Historical Domains Soc., FA 1382972 (Nat. Arb. Forum May 26, 2011).

Complainant alleges that Respondent registered <patiokit.com> with knowledge that Complainant already had a well-established and growing consumer base. Respondent recognized the revenue potential by preying upon unsuspecting Internet consumers. Respondent’s registration and ongoing use has been in bad faith. See Geraci v. S.A., Telecom Tech Corp, FA 1221830 (Nat. Arb. Forum Oct. 10, 2008) (“Because Respondent presumably receives compensation in the form of click-through fees for its use of the disputed domain name as alleged, its use of the disputed domain name demonstrates an attempt to profit from the goodwill Complainant has built in its INFOTAPES mark. Such use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).

Complainant argues that Respondent is clearly creating a likelihood of confusion with Complainant’s PATIOKITS.COM mark as to the source, sponsorship, affiliation, or endorsement of the website and the products and/or services available on <patiokit.com> and it follows that Respondent’s registration and use of the disputed domain name violates the bad faith provision of Policy ¶4(b)(iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

Furthermore, Complainant argues that Respondent is obviously using a variation of Complainant’s PATIOKITS.COM mark to divert Internet users seeking Complainant’s patio, awnings, and enclosures. Complainant alleges that Respondent is simply trying to trick the public into believing it is the Complainant. Respondent then redirects confused consumers to a competitor’s site in an effort to gain click-through revenue. Respondent’s website redirects consumers to, among others, <lowes.com>, <diyretractableawning.com>, <sunsetter.com>, and <awnings-usa.com>.

Complainant submits that Respondent uses the domain name to attract Internet users who are looking for information about do-it-yourself patios, awnings, and enclosures. Once an Internet user mistakenly types <patiokit.com> instead of <patiokits.com> into her web browser, she is immediately exposed to links that she may click, including links to competitors. It does not matter that once the Internet users are there they may recognize the unlikelihood of a business relationship between the Complainant and the Respondent since the Respondent would have already gained website traffic. See Nat’l Football League Prop., Inc. et al. v. One Sex Ent. Co., D2000-0118 (WIPO Apr. 17, 2000).

Complainant argues that Respondent’s website has created actual confusion in consumers looking for Complainant’s goods. Complainant claims to have lost a significant amount of money because of this actual confusion.

Complainant argues that its trademark PATIOKITS.COM is well-established and known throughout the United States and world and therefore Respondent knew or should have known of the Complainant’s trademark rights when it decided to register <patiokit.com> and offer links to competitors of the Complainant. Complainant further argues that even if Respondent did not have actual knowledge of Complainant prior to its registration of the disputed domain name, Respondent cannot escape the fact that it had constructive notice, namely because of Complainant’s prior registration of <patiokit.com>and <patiokits.com>, and the content located on those websites before Respondent ever placed any content on its <patiokit.com> website. Complainant submits that such constructive knowledge is sufficient to support a finding of bad faith. See eBay, Inc. v. SGR Enter., D2001-0259 (WIPO Apr. 11, 2001) (noting that actual or constructive knowledge of Complainant’s rights in its trademark supports a finding of bad faith); see also Kate Spade LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (applying the principles of constructive notice to a finding of bad faith); see also Digi Int’l v. Digi Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively). Thus, Respondent should have reasonably been aware of Complainant’s PATIOKITS.COM mark and trade name not only because of its selection of a shortened version of that mark and trade name for its domain name, but also because of the prior presence of Complainant at the <patiokit.com> and <patiokits.com> domain names. See Int’l Olympic Comm. v. Greek Historical Domains Society, FA 1382972 (Nat. Arb. Forum May 26, 2011).

Complainant further submits that Respondent has offered to sell the <patiokit.com> domain name to the general public and to Complainant for “five figures.” Complainant has furnished copies of emails in an annex to this Complaint as evidence of  Respondent’s alleged offer. Complainant  submits that the offer is evidence of Respondent’s registration and use of the domain name in bad faith. See Acad. of Motion Picture Arts and Sciences v. This Name is For Sale, D2005-1063 (WIPO Nov. 30, 2005); see also Nat’l Collegiate Athletic Assoc. v. Garner, D2000-0940 (WIPO Nov. 7, 2000).

In support of his claim that the disputed domain name was registered and is being used in bad faith, Complainant submits that Respondent has been ruled against several times by Panels deciding cases under the Policy is evidence of bad faith registration and use. See Pocket Kings Ltd. v. Ramirez, D2011-0646 (WIPO June 7, 2011); see also Philadelphia Orchestra Assoc. v. Kimmelcenter.com/Whois Privacy Serv. Pty Ltd., D2011-0607 (WIPO June 1, 2011);Areva v. Lander / Whois Privacy Serv. Pty Ltd., D2011-0603 (WIPO May 16, 2011); LEGO Juris A/S v. Bridge Port Enter. Ltd. / Whois Privacy Serv. Pty Ltd., D2011-0442 (WIPO May 5, 2011); ArcelorMittal SA v. Whois Privacy Serv. Pty Ltd., D2011-0322 (WIPO April 7, 2011).

B. Respondent

Respondent submits that a review of the record will reveal that Complainant has no right to the domain name. Respondent claims to have a legitimate interest in the disputed domain name and denies that there is any evidence of bad faith registration or use of the disputed domain name.

Respondent argues that without a registered trademark Complainant’s claim rests on establishing common law rights for a pairing of two common used descriptive English words that form a descriptive if not generic term. Respondent argues that Complainant has however failed to provide (and cannot provide) the evidence required under the Policy. For Complainant to prevail, it must be able to prove that prior to on the date the disputed domain name was registered, Complainant had established secondary meaning in the marketplace such that consumers exclusively, or almost exclusively, associated the term “PatioKits” with Complainant. It is respectfully submitted that Complainant has not (and cannot) provide such evidence.

Respondent argues that Complainant does not have a registered trademark and is proceeding based on an alleged common law trademark. Complainant’s claim to common law trademark rights to the term “PatioKits.com” must fail. The term is descriptive because in its plain dictionary meaning, it refers to “an area, usually paved, adjoining a house as an outdoor area for outdoor lounging, dining etc.” and “a set, collection or package.” Respondent has furnished a copy of the Dictionary.com definitions of “Patio” and “Kit” are attached as an annex to the Complaint.

Respondent argues that Complainant’s own use of the alleged mark is in its purely descriptive nature. Because trademark laws are designed to protect consumers from confusion as to the origin of a product, a merely descriptive mark must acquire “secondary meaning” in order to be protected. See Conversive, Inc. v. Conversagent, Inc., 433 F.Supp.2d 1079, 1087-88 (D.C. Cal. 2006). Simply put, a mark is descriptive if the mark “defines” a characteristic of the product or identifies the service and a consumer does not need to use their imagination to understand the connection between the mark and the product offered. Id. at 1088. The descriptive mark conveys to the customer “an immediate idea of the ingredients qualities or characteristics of the goods.” Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976). A descriptive mark can be protected under certain circumstances. Marks that are not inherently distinctive can acquire strength through use of the mark and a marketing plan that creates an identity and recognition of the product.

Complainant has not and cannot prove secondary meaning that consumers associate the words “Patio Kits” exclusively with the Complainant a prerequisite to establishing common law trademark rights. Amsec Enter. v. McCall, D2001-0083 (WIPO April 3, 2001).  To prove secondary meaning, Complainant must provide evidence that consumers identify the term “patio kits” exclusively, or almost exclusively, with its products. See Advanced Relational Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO Oct. 13, 2003); see also Advance News Serv., Inc. v. Vertical Axis, Inc., D2008-1475 (WIPO Dec 11, 2008). Complainant has presented no evidence or proof of its secondary meaning in the marketplace. Mere self-serving claims that the mark has acquired secondary meaning are not sufficient. See New York Times Co. v. Name Admin. Inc., FA 1349045 (Nov. 17, 2010).  Thus, Complainant’s claim must fail.

Complainant has not demonstrated that it established secondary meaning as of November 6, 2005 when the disputed domain name was registered. Complainant has alleged that it first started using the term in 2004. It is be highly unlikely that in just one year Complainant would have garnered sufficient notoriety to establish it as exclusively associated with the descriptive term “patio kits.” See Trademe Ltd. v. Vertical Axis, Inc., D2009-0093 (WIPO Apr. 7, 2009); see also Geometric Software Solutions v. Telepathy, Inc., (WIPO Nov. 8 2007).

Complainant’s only evidence supporting secondary meaning are self-serving statements of the Complainant’s founder and advertorials from Small Business Opportunities magazine from the Spring and Summer of 2005. While these statements and advertisements may show that Complainant was attempting to launch its business, they fall far short of the evidence required under the Policy. Advance News Serv., Inc. v. Vertical Axis, Inc., D2008-1475 (WIPO Dec 11, 2008) (“the absence of such evidence is fatal to an attempt to establish common law rights in a descriptive phrase”).

Consumers certainly do not see Complainant’s mark as the exclusive source of or use of the term “patio kit.” There are over 55 million third-party uses of the term “patio kits.” Moreover, numerous items are for sale using the natural common descriptive designation “patio kit.” Complainant’s inability to establish secondary meaning is fatal to its claim to common law trademark rights to “Patio Kits.” See Advanced Relational Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO Oct. 13, 2003) (“Complainant has not shown that the public has come to identify its software as the only, one or even one of the few for” the mark).

Accordingly, the Panel should find that Complainant does not have enforceable rights to a trademark identical or confusingly similar to the Disputed domain name and deny the Complaint registered, many similar descriptive term domain names that incorporate the words “patio” or “kit” as listed above.

Respondent asserts that the disputed domain name was registered on November 11, 2005, because it was available and incorporated a descriptive term composed of two common words in the English language. Respondent points out that Complainant does not have a registered trademark for “PatioKits.com” Respondent claims to have registered the disputed domain name without any knowledge of Complainant’s alleged trademark.  Respondent argues that hard to argue that Complainant should not be allowed to wrest the disputed domain name from Respondent after a delay of nearly six (6) years of inaction since Complainant failed to renew the disputed domain name.

Respondent registered the disputed domain name for the same reason it has registered many other common and descriptive term domain names: it expired, was deleted, and incorporates a common descriptive plain English term. Complainant has set forth no evidence demonstrating Respondent registered the disputed domain name for any other reason. Respondent has consistently used the disputed domain name in good faith. Since the date it was registered until the present, the disputed domain name was hosted with a service which displays pay-per-click (“PPC”) advertising links based on a Yahoo advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Respondent has used the disputed domain name to display PPC links related to general interest topics related to the common and obvious meaning of the words “patio” and “kit.”

It should be no surprise that the links are related to patio furniture and patio awnings – exactly what one would expect from the plain meaning of the term incorporated in the domain. The links are auto-generated by Yahoo and are constantly changing based on Yahoo’s keyword advertising inventory and user search behavior.

It is well-established under the Policy that the use and registration of descriptive term domain names is an extremely common and permissible business practice. Moreover, the disputed domain name was registered in November 2005 – nearly six (6) years before the filing of this Complaint. This significant delay raises the inference that Complainant did not genuinely believe Respondent has engaged in abusive domain name registration. Notably, Complainant has admitted that it has known since November, 2005 that Respondent registered the disputed domain name after it was deleted following Complainant’s failure to timely renew the name. For almost six (6) years Complainant took no issue with Respondent’s ownership and use of the disputed domain name. Complainant incredulously complains to this Forum at this late date because it was unsuccessful in purchasing the disputed domain name from Respondent. This immense gap in time strongly indicates that Complainant did not believe that Respondent acted in bad faith when it registered the Disputed domain name or over the past six (6) years through the its use of the domain. The time line also raises the question of whether the Complaint should be barred pursuant to the doctrine of laches – it certainly militates strongly against a finding of bad faith registration.

The Complaint contains no evidence demonstrating abusive domain name registration by Respondent. Respondent registered the disputed domain name on November 11, 2005. The disputed domain name was registered because “patiokit” is a highly common term to which Respondent believed no party could claim exclusive rights.

Complainant has not established, and cannot establish, that Respondent registered this common term to target Complainant’s trademark. Complainant admits that it uses the plural “PatioKits” as its business name – it is not entitled to sole ownership and use of this descriptive term in the marketplace, and it is certainly not entitled to its exclusive use of the singular form of “patiokit.” Complainant uses its name in a purely descriptive sense, which undercuts its own claim to trademark protection. Complainant does not and cannot enjoy a monopoly over this term which is also subject to substantial third-party use.

The domain name was registered after it expired, was deleted, and offered for registration again. Respondent did not register the disputed domain name with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the domain name nearly six (6) years ago. Respondent did not register the disputed domain name with the intent to sell it to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site.

Respondent did not register the disputed domain name to prevent Complainant from owning a domain name incorporating his trademark. Respondent does not target trademarks with its domain name registrations.

Respondent owns thousands of domain names of which Yahoo auto-generated links appear on any given domain at any time. Respondent’s good faith in registering the disputed domain name, based on its descriptiveness, is corroborated by many similar descriptive term domain names it has registered that incorporate the word “patio” or “kit.” Examples of Respondent’s domain names that incorporate the word “patio” include: <patiosets.com>; <patiotree.com>; <patio-doors.com>; <patiostones.com>; <patiogardens.com>; <patioanddecks.com>; <patiolighting.com>; <patiopictures.com>; <patiodiningset.com>; <patiodiningsets.com>; <patiolandscapes.com>; <patiowaterfalls.com>; <commercialpatios.com>; and <patioinstallations.com>. Examples of Respondent’s domain names that incorporate the word “kit” include: <beerkit.com>; <carkits.net>; <shedkit.com>; <willkit.com>; <acnekits.com>; <audiokit.com>; <cartkits.com>; <compukit.com>; <housekit.com>; <neonkits.com>; <presskit.com>; <pursekit.com>; <sushikit.com>; <audiokits.com>; <cheapkits.com>; <doctorkit.com>; <kidspykit.com>; <porchkits.com>; <adaptorkit.com>; <archerykit.com>; <cartoolkit.com>; <cruisekits.com>; <replicakit.com>; <rosarykits.com>; <trailerkit.com>; <vehiclekit.com>; <emergencykit.com>; and <modelshipkit.com>.

There was no malicious intent on the part of Respondent to target Complainant or any trademark owner with the registration of the domain. Respondent’s ownership of many descriptive names incorporating the words “patio” or “kit” militates strongly against Complainant’s claim that it was targeted in bad faith.

Finally, there is substantial third-party use of the term “patiokit.” An advanced Google search for “patio kit,” excluding “patiokits.com” to avoid reference to Complainant, yielded 55,100,000 results1 with the first two pages including the term “patiokit” in domains such as “vinylpatiokits.com” and items for sale on Amazon.com identified as: Rainbird Patio-Kit” and a YouTube “Patio Kit” installation video. A copy of the Google Search Results for “Patio Kit” is annexed as an exhibit to the Response. Respondent argues that this common use of the term supports a finding that Respondent registered the disputed domain name without the intent to target Complainant or its alleged trademark. Respondent enters a caveat that it has not reviewed all of the search results and acknowledges the possibility there may be some references to Complainant among the Google search results.

Respondent argues that Complaint should be barred by the doctrine of laches because Complainant waited nearly (6) years to initiate this proceeding.

The disputed domain name was registered nearly (6) years ago on November 11, 2005 — an eternity in “Internet time.” Complainant does not explain why it waited so long to initiate this Complaint. This long delay in taking action bars the Complaint under the doctrine of laches which has been recognized under the Policy. See New York Times Co. v. Name Admin., Inc., FA 1349045 (Nat. Arb. Forum Nov. 17, 2010).  In New York Times, the Complainant had delayed filing its complaint until six (6) years after the respondent had registered the disputed domain name. In denying the Complaint, the 3-member panel unanimously held that “the circumstances of this case are the type that support a decision for the Respondent based on laches.” In denying the Complaint without analyzing the legitimate interest or bad faith prongs of the Policy, the panel explained that a party who ‘sleeps on his rights’ may sometimes be barred by his own inactivity from asserting those rights.” Here, Complainant’s delay is much more pronounced than in the New York Times case.

Even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe Respondent engaged in bad faith registration. C. Brewer and Sons Ltd. v. Vertical Axis, Inc.,supra. There, in denying a complaint that had not been filed until 8 years after the disputed domain name was registered, The Panel stated that:  the Complainant has not been assisted by its delay in filing the Complaint. The delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name name, gives rise to the inference that the disputed domain name name has not been registered and used in bad faith.  Respondent also cites Vanguard Trademark Holdings USA LLC v. Nett Corp., FA 1262162 (Nat. Arb. Forum July 26, 2009).  As in these cases, the Panel should find that Complainant’s silence for six (6) years raises the inference that Complainant did not believe Respondent’s registration and use of the Disputed domain name was in bad faith. Accordingly, the Complaint should be denied on this basis alone.

Respondent submits that it is notable that Complainant waited nearly six years from the date Respondent registered the disputed domain name to initiate this Complaint. Such a long delay in taking action, raises the inference that Complainant did not truly believe the disputed domain name was registered in bad faith.  See  Rolling Stone LLC v. Robbins Carnegie Inc., FA 318048 (Nat. Arb. Forum Oct. 14, 2004) (delay could indicate that Complainant “did not seriously believe” that Respondent had violated the Policy.”); see also Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute].”); see also New Piper Aircraft, Inc. v. Piper.com, supra. (Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion). Like these cases, the panel should find that Complainant’s silence for nearly six years raises the inference that Complainant did not believe Respondent’s registration and use of the Disputed domain name was in bad faith.

There is no evidence supporting an inference that Respondent registered any domain name based on the fact that it incorporates a trademark. Nor is there evidence supporting an inference that Respondent registered the disputed domain name with Complainant’s trademark in mind.

Respondent argues that contrary to Complainant’s assertion, Respondent’s legitimate interest is bolstered by the fact it uses the disputed domain name in connection with the provision of related pay-per-click (“PPC”) generic or descriptive advertising links appearing on the web site, for which it receives a share of the revenue. Complainant is wrong that such use is illegitimate. See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004); see also Future Steel Holdings, Ltd. v. Private Whois Service, FA 1350737 (Nat. Arb. Forum Dec. 6, 2010); see also Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001); see also  Accetta v. Domain Admin., FA 826565 (Jan. 2, 2007); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001); see also Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum, Aug. 6, 2004); see also Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001).

Respondent submits that several panels established under the Policy have expressly recognized the bona fide nature of this Respondent’s domain registration and use practices citing Alexis C. Le Hara v. Vertical Axis, Inc., FA 1225832 (Nat. Arb. Forum Nov. 26, 2008); see also Super Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 10 2008); see also Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006); see also Nursefinders, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) (“Respondent has a regular business practice of registering expired domain names that are based on descriptive words and phrases.”). The Panel should reach the same conclusion as to Respondent here.

Respondent submits that PPC links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain, as opposed to being selected with a trademark in mind. See Tomsten Inc. v. Registrant 7281 a/k/a Star Access Inc., FA 925448 (Nat. Arb. Forum April 20, 2007). Such is the case here. The PPC Ads were not selected by Respondent at all. Rather, they were auto-generated by Yahoo.com’s software and relate to the descriptive meaning of the disputed domain name.

Respondent denies that the disputed domain name was registered in bad faith. Respondent argues that there is a no evidence of bad faith registration or use. Respondent simply registered the domain because it incorporated a descriptive term. Absent direct proof that a descriptive term domain name such as patiokit.com was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. See Pre-Paid Legal Serv., Inc. v. Domain Administrator / PortMedia, FA 1403090 (Sept. 26, 2011) (absent direct proof of registration to target Complainant the registration of a domain name incorporating common terms is proper); see also Ultrafem, Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (“Complainant cannot assert an exclusive right over a domain name that is a common, generic term.”); see also Canadadrugs.com P’ship et al. v. ASM Bioventure, No. 568743 (NAF Nov. 29, 2005)(“Respondent did not register the <canadadrugsonline.com> domain name in bad faith because Complainant’s mark is comprised of common terms.”); see also HP Hood, LLC, v. Hood.com, FA 313566 (Nat. Arb. Forum Nov. 9, 2004) (finding that where the domain name and trademark in question are generic or consisting of no more than a single, short, common word the inquiry is more likely to favor the domain name owner).

Respondent concludes its submissions by asserting that this is not a case of a cybersquatter looking for trademarks upon which to prey. To the contrary, Respondent has simply registered domain names that became available due to deletion, and taking care to register domain names that incorporate only common words and descriptive terms. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. The expiration of a domain name raises the presumption that any trademark rights in such domain name have been abandoned, signalling to prospective registrants that it is available and can be registered in good faith. See Corbis Corp. v. Zest, FA 98441 (Nat. Arb. Forum Sept. 12, 2001). The 3-member panel there stated Respondent’s practices have been held proper under the Policy a total of twenty-nine (29) times and held that a registrant of a domain name who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.  The 3-member panel in CB Publishing, LLC v. Akway Int’l, FA 926506 (Nat.Arb. Forum Apr. 18, 2007), went even further, stating that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, the trademark holder should ordinarily be denied relief, whether the mark is a common law or a registered mark, whether the mark is ‘strong’ or ‘weak.’

Respondent denies attempting to compete with Complainant, disrupt its business, or prey on its mark in any way. Respondent has used the disputed domain name to post auto-generated PPC Ads related to general patio related items such as: Patio Awnings, Teak Wood Patio Furniture, and Outdoor Patio Chairs. These links are auto generated by Yahoo based on consumer choices – that is the most common use of the search term “patio kit” in Yahoo’s database determines which links will appear on Respondent’s webpage. There is no evidence, whatsoever, that Respondent targeted Complainant’s mark. For Complainant to argue that Respondent has improperly selected “infringing” links is disingenuous. In any event, as noted in Mariah Media Inc. v. First Place Internet, Inc., D2006-1275 (WIPO Dec. 6, 2006), the appearance of links created by a third party domain monetization service does not constitute bad faith on the part of the domain owner. The 3-member panel held that in the face of the respondent’s denials and the automated nature of the advertising links, the particular automated links were insufficient to prove the respondent’s intent to mislead Internet users by means of the domain name itself. In short, the Panel is unwilling to attribute bad faith to this search software.

Respondent, through Yahoo, is simply presenting search results related the common meaning of “patio kit.” This is a permitted and proper use of the domain.

Finally Respondent argues that Complainant’s offer to purchase the disputed domain name, in May, 2010 as stated in the Complaint is a tacit acknowledgement of Respondent’s legitimate interest in the disputed domain name. See Prom Software, Inc. v. Reflex Publ’g, Inc., D2001-1154 (WIPO Mar. 4, 2002) (“Complainant actually has established the apparent legitimacy of Respondent’s interest,” with offer to purchase domain name.) Here, Respondent has done nothing wrong. Responding to an offer to purchase the domain is not a violation under the Policy. Complainant brought this claim precisely because, after six years it could not purchase the Disputed domain name. This is not evidence of bad faith on the part of Respondent, but rather an attempt by Complainant to mislead the Panel by claiming that the Respondent has acted in bad faith.

C. Additional Submissions of Complainant

In timely Additional Submissions Complainant argues that Respondent is in fact Kevin Ham and has furnished copy documentation which Complainant alleges is evidence that Respondent is one of the world’s most notorious typo- and cybersquatters, that Mr. Ham  has admitted that he “wrote software to snag expiring names on the cheap” and “was one of the first to take advantage of a loophole that allows people to register a name and return it without cost after a free trial….”; is also the man behind the domain world’s latest scheme: profiting from traffic generated by the millions of people who mistakenly type ‘.cm’ instead of ‘.com’ at the end of a domain name; owns “hundreds of thousands” of domain names, which currently include typosquats of famous trademarks. In support of this submission Complainant cites Health Care Serv. Corp. v. Vertical Axis, Inc., FA 1378209 (Nat. Arb. Forum April 20, 2011);see also Weather Underground, Inc. v. Navigation Catalyst Sys., Inc., 688 F. Supp. 2d 693 (discussing the historical business model of mass cybersquatters).

Complainant re-asserts that Respondent’s  business model is not legitimate; that he registered the disputed domain name <patiokit.com> to target Complainant’s  PatioKits.com trademark; and that he registered and is using the disputed domain name in bad faith.

Complainant also challenges the veracity of the Respondent’s deponent. Complainant also rehearses his assertion that the disputed domain name is distinctive and that  Respondent had actual or constructive knowledge of Complainant’s prior existence and use of the PATIOKITS.COM mark at Complainant’s <patiokits.com> domain name

Complainant submits that  laches is not recognized as a defense under

the Policy. See S. Cal. Edison Co. v. CheapYellowPages.com/Brian Wick, FA 1404438 (Nat. Arb. Forum Sept. 26, 2011) (“The Panel finds that, in accordance with UDRP case law, the doctrine of laches does not apply as a defense under the Policy. Consequently, the Panel will not consider those arguments.”); see also Acorn Media Group, Inc. v. Magen, FA 1401194 (Nat. Arb. Forum Sept. 9, 2011). Even if laches was a valid defense, Complainant attempted to contact the registrant of the <patiokit.com> domain name numerous times to complain of its use of the domain name since its expiration, including in 2005, 2006, 2007, and 2008, and received no response. Thus, Complainant has made reasonable and repeated efforts to enforce his rights against the registration.

D. Additional Submissions of Respondent

In Additional Submissions which have been admitted by the Panel, Respondent objects to what it describes as an unfounded personal attack on its founder Mr. Ham. Respondent states that the disputed domain name was re-registered by Respondent on December 11, 2005 as stated in Respondent’s records and not on November 11, 2005 as recorded in the WhoIs. Respondent re-asserts that the Complainant’s trademark had not acquired secondary meaning by that date, that Complainant has no trademark rights and that the disputed domain name is obviously descriptive and alleges that Complainant is engaged in reverse domain name hi-jacking.

FINDINGS

Complainant is an online retailer of who carries on business of as an online retailer of do-it-yourself backyard products, including but not limited to patio cover kits, enclosure kits, carports, and awnings using the business name PATIOKITS.COM primarily via his website to which his patiokits.com domain name resolves.

Complainant  was the original owner of the disputed domain name patiokit.com.

Complainant registered the domain name <patiokits.com> on October 9, 2004. Complainant subsequently registered the disputed domain name<patiokit.com> on November 6, 2004. Since November 18, 2004, Complainant has continuously maintained an internet presence using his domain name <patiokits.com> as the address of his website for his business but Respondent promptly registered the disputed domain name when Complainant failed to renew the registration in 2005.

The disputed domain name was re-registered by Respondent either on November 11, 2005 as recorded in the Whois or on December 11, 2005 as stated in Respondent’s records.

Respondent has a substantial portfolio of thousands of domain names, many of which incorporate generic words and domain names that incorporate the words “patio” and “kit” are included in its portfolio.

Respondent is engaged in the business of generating pay per click revenue from its portfolio of domain names.

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

On the evidence this Panel holds that while Complainant has no trademark registrations for either PATIOKITS or PATIOKITS.COM, he has used PATIOKITS or PATIOKITS.COM as his business name and as trademarks since 2005.

In answer to the question “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”

The majority of the Panel finds that the Complainant has failed to provide sufficient evidence that he had a common law trademark in 2005 when he allowed the disputed domain name registration to expire and it was re-registered.

The majority of the Panel takes the view that the evidence adduced by Complainant merely establishes that he used PATIOKITS.COM as a business name and not as a trademark.

One member of the Panel takes the view that as the bar is set very low in respect of establishing rights under Policy ¶ 4(a)(i) and notwithstanding his limited use of PATIOKITS.COM as a service mark and the descriptive character of PATIOKITS.COM, Respondent did in fact use PATIOKITS.COM as a service mark sufficient to give him locus standi in this proceeding.

While Complainant has asserted that the disputed domain name was registered by Respondent in 2010, there is no evidence of same. There was a record update in 2010 but it does not follow that Respondent took the disputed domain name.

As the majority of the Panel has found that Complainant has failed to establish that he has any trademark rights in PATIOKITS.COM as he claims, the question of confusing similarity does not arise.

The Panel therefore finds by majority that Complainant has failed to satisfy the first element of the test in  Policy ¶4(a) and he is not entitled to succeed in the Complaint.

Rights or Legitimate Interests

This Panel has decided not to proceed to decide whether Respondent has any rights or legitimate interest in the disputed domain name because this Panel’s finding on the first element of the test in Policy ¶4(a) is fatal for the complaint.

Registration and Use in Bad Faith

This Panel has decided not to proceed to decide the issues of bad faith registration and use of the disputed domain name because this Panel’s finding on the first element of the test in Policy ¶4(a) is fatal for the complaint.

For completeness, this Panel finds it unnecessary therefore to address the issue of alleged delay on the part of the Complainant.

Additionally, this Panel makes no finding of reverse domain name hi-jacking by Complainant as Complainant has clearly used the name in connection with its goods and services and therefore has some basis to believe that trademark rights exist.  The Panel finds that Complainant appears to be acting in a good faith belief in those rights but has simply failed to substantiate its claim in this proceeding.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED

James Bridgeman, Chairman

Dated:  October 28, 2011

Sir Ian Barker and Diane Cabelle, as Panelists.