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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toilets.com, Inc. v. United Site Services

Case No. D2008-0151

 

1. The Parties

The Complainant is Toilets.com, Inc., of Utica, Michigan, United States of America, represented internally.

The Respondent is United Site Services, of Westborough, Massachusetts, United States of America, represented by Bulkley, Richardson and Gelinas, LLP, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <portajohn.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On February 1, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 1, 2008, 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. The Center verified that 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 February 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. The Response was filed with the Center on February 25, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on March 4, 2008. 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

The Complainant is in the portable toilet rental service business. The Complainant is the owner of a subsisting federal registration for the mark PORTA-JOHN, issued by the United States Patent and Trademark Office (USPTO) on May 28, 1996, for use in relation to transportable enclosed toilets.¹ The Complainant also had obtained a prior federal registration for PORTA-JOHN on January 18, 1972, which has since expired.² The Complainant holds the registration for the domain name <porta-john.com>, initially registered on March 14, 1997, which is used with the Complainant’s website.

The Respondent also is in the portable toilet rental service business. The disputed domain name initially was registered on February 11, 1997, by a Rhode Island corporation, Port-A-John, Inc., which was subsequently merged into the Respondent’s predecessor-in-interest, Handy House, Inc.³ It is undisputed that the Respondent acquired the disputed domain name from Handy House, Inc. in January 2000. There is no indication in the record that either Handy House, Inc. or the Respondent continued to use the Port-A-John trade name after they took possession of the disputed domain name. Internet visitors to the “www.portajohn.com” webpage, which still displays the Handy House name, are redirected automatically to the Respondent’s website at “www.unitedservices.com”.⁴

The record reflects that the Complainant on March 12, 1997, less than thirty days following the original registration of the disputed domain name, sent a demand letter to the Respondent’s predecessor-in-interest, Handy House, Inc., requesting that Handy House release the disputed domain name in light of the Complainant’s registered PORTA-JOHN mark.⁵ The record does not reflect that the Complainant received any response. Thereafter, on December 27, 2002, the Complainant, through legal counsel, issued a second demand letter to Handy House, Inc., providing notice of the dispute under the Policy, to which the record also reflects no response.⁶ On June 16, 2005, the Complainant through its legal counsel directed a third demand letter to the Respondent, again providing notice of the dispute, and again receiving no response.⁷ As noted above, the Complaint in this matter was filed on January 30, 2008.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <portajohn.com> is confusingly similar to the Complainant’s PORTA-JOHN mark, in which the Complainant asserts rights based on federal registration and use in commerce as early as July 15, 1962. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not commonly known by the disputed domain name and was on notice of the Complainant’s rights in the PORTA-JOHN mark when the Respondent registered the disputed domain name. Further, the Complainant asserts that the Respondent’s use of the disputed domain name to redirect Internet users to the Respondent’s website is not a bona fide use of the domain name conferring rights or legitimate interests in the disputed domain name.

In view of the foregoing, the Complainant maintains that the Respondent registered and is intentionally using the disputed domain name in bad faith in an attempt to attract Internet visitors for commercial gain to the Respondent’s website, by creating a likelihood of confusion between the Complainant’s mark and the Respondent’s website or the products and services on the website. The Complainant further contends that the Respondent’s failure to respond to multiple demand letters and the continued use of the disputed domain name after notice of this dispute is further evidence of bad faith.

B. Respondent

The Respondent claims to be the largest portable toilet rental service company in the United States. The Respondent contends that the Complainant cannot rely upon the federal registration of its PORTA-JOHN mark to establish rights under the Policy because the mark is synonymous with, and understood by consumers and the industry to be a generic term equivalent to “portable toilet”. Accordingly, the Respondent argues that the PORTA-JOHN mark is generic in relation to the goods and services for which it was registered and is being used.

The Respondent argues that it has established rights or legitimate interests in the disputed domain name <portajohn.com> by virtue of using the domain name in its generic or descriptive sense in relation to the Respondent’s portable toilet business. The Respondent further argues that original domain name registrant, Porta-A-John, Inc., registered the disputed domain name in association with its business or trade name, without notice of the Complainant’s trademark rights, and therefore established rights or legitimate interests in the domain name, which must be considered to inure to the benefit of the Respondent. According to the Respondent, the initial registration of the disputed domain name by its predecessor also is also evidence that PORTA-JOHN (or variations thereof) is a generic term for “portable toilets”.

The Respondent, while recognizing that laches itself is not generally a recognized defense under the Policy, maintains that a panel may consider a complainant’s delay in seeking recourse in determining other issues, such as whether a respondent as a result of that delay has established rights in the disputed domain name through a bona fide or legitimate use of the domain name, which the Respondent maintains is the case here.

For all of the foregoing reasons, the Respondent maintains that there is no evidence in the record to support the Complainant’s claim of bad faith registration and use of the disputed domain name.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the mark to which the disputed domain name is identical or confusingly similar. In this instance, the Complainant asserts rights in the PORTA-JOHN mark based on the use of the marks in commerce since July 1962, and the registration of the mark by the USPTO in 1996. The Panel notes that, at a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Respondent asserts, however, that the Complainant’s does not have enforceable rights in the PORTA-JOHN mark because it is or has become generic with respect to the “portable toilet services”. Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Other panels have concluded that the complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S. A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

Given the limited scope of the Policy and this Panel’s narrowly circumscribed jurisdiction, this Panel’s inclination is to adopt the reasoning of the panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel, having carefully reviewed the record in this case in light of the arguments presented by the Respondent, concludes that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant’s PORTA-JOHN mark.

The Panel has considered the registration of the Complainant’s marks in light of the USPTO requirements for registration of a mark on its principal register.⁸ There is no persuasive evidence in the record of this administrative proceeding that would justify the Panel in disregarding the USPTO’s determination the Complainant’s mark is distinctive and entitled to registration. The Panel considers the Respondent’s reliance on Google searches results for “porta john” and “portajohn” inadequate to show either (1) substantial generic use of PORTA-JOHN by the Complainants’ competitors with respect to the same or similar goods or services, or (2) widespread public recognition and use of PORTA-JOHN as a generic equivalent for “portable toilet services”.

The Panel notes that it is not an uncommon practice for online advertisers to use third-party trademarks as keywords or metatags. The Google AdWords Policy proscribes use of third-party trademarks only in the text of the online advertisements, as opposed to the use of third-party trademarks use as keywords or metatags.⁹ The Panel visited a number of commercial third-party websites advertising “portable toilet services” that were included in the Respondent’s Google search results, and found no evidence of the generic use of PORTA-JOHN in the online advertisements themselves. To the extent reflected in the record, the Respondent itself does not use PORTA-JOHN or variations thereof in the marketing and advertisement of its “portable toilet services”.

In light of the foregoing, the Respondent’s reliance upon Stuhlarg Int’l Sales Co. v. John D. Brush Co., 240 F.3d 832 (9^th Cir. 2001) is sorely misplaced. In that case, the federal court of appeals granted a preliminary injunction after finding that “Fire-safe” was likely to be generic because “thirteen competitors use the term ‘fire safe’ to refer to a type of category of safe, [the trademark owner] has used the term in a generic sense, and the term is included in at least one dictionary”. Such circumstances are conspicuously absent in the present record. The Panel has found no evidence in the record reflecting substantial (if any) use by the Complainant’s competitors of PORTA-JOHN in a generic sense. The Respondent has not alleged and the record does not reflect the Complainant’s use of PORTA-JOHN in a generic sense. To the contrary, in all of the Complainant’s communications reflected in the record, notably including three cease and desist letters and a further communication to the Respondent, the Complainant consistently and beyond question has identified PORTA-JOHN as its registered mark and has asserted rights in the mark.¹⁰

The Panel finds the Respondent’s reliance on several so-called “online dictionaries” as evidence that the Complainant’s PORTA-JOHN mark is generic similarly unpersuasive. The Respondent’s contention that Wikipedia refers to portable toilets generically as “port-a-johns” is questionable at best. The Wikipedia reference, in pertinent part, states as follows: “Portable toilets are referred to colloquially or sold under such brands as port-a-john, port-o-let, sani-privy, port-a-san, porta-potty, tidy john, . . .” (emphasis added).¹¹ The Panel notes as a matter of public record that PORTA-JOHN, PORT-O-LET and PORTA POTTI are all federally registered trademarks in the United States, and that the USPTO has issued a notice of allowance respecting registration of the mark PORTACAN.¹²

When considered in light of the foregoing, this Panel is not prepared to accept anecdotal evidence concerning Internet use of “portajohn” in reference to portable toilets, as may be reflected in the Respondent’s Google search results, as a reliable indication that the Complainant’s registered PORTA-JOHN mark is or has become generic. As the Respondent correctly observes, a finding of genericness requires, in addition to evidence of the generic use of a mark, evidence of the trademark owners’ failure to enforce its rights in the mark. See, e.g., Stuhlarg Int’l Sales Co. v. John D. Brush Co., supra. The record in this case reflects that the Complainant obtained a federal registration for the PORTA-JOHN mark in 1996, which is valid and subsisting, and which the Complainant has maintained in force. As noted above, there is no evidence in the record of the Complainant’s use of its PORTA-JOHN mark in a generic sense. As far as enforcement is concerned, the record reflects that the Complainant issued three cease and desist letters to the Respondent or its predecessor-in-interest. Further, the Panel notes that the Complainant has successfully enforced its rights in the PORTA-JOHN mark in at least two prior proceedings under the Policy. See Toilets.com, Inc. v. Port-A-John, WIPO Case No. D2007-1497 (<port-a-john.net>); Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952 (<ronsportajohns.com>). Against this backdrop, any genericness argument the Respondent might advance based on the Complainant’s alleged delay in enforcing its rights with respect to the disputed domain name in the present case carries little or no weight.

The Panel finds for the foregoing reasons that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant’s PORTA-JOHN mark, and that the Complainant has established rights in the mark PORTA-JOHN. The Panel further finds that the disputed domain name is identical to the Complainant’s mark. For purposes of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based solely on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068. Based on such a comparison, the Panel concludes that the disputed domain name is identical to the Complainant’s PORTA-JOHN mark.¹³

Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent or its predecessor-in-interest to use the Complainant’s mark or to register domain names incorporating its mark. There is no indication in the record that the Respondent itself has ever been commonly known by the disputed domain name. Nevertheless, the record reflects that the Respondent, a direct competitor of the Complainant, has registered a domain name that is identical to the Complainant’s mark and is using the domain name to redirect Internet users to the Respondent’s website.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or 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; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent relies on its acquisition of the disputed domain name from a presumed initial original good faith registrant, Port-A-John, Inc., in claiming rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. The Panel notes that it assumes without deciding the good faith of the original domain name registrant for purposes of this decision.¹⁴ While the Respondent correctly observes that the disputed domain name reflects the trade name of the original domain name registrant, a name which was adopted several years prior to the Complainant’s May 28, 1996 registration of its PORTA-JOHN mark, the record also reflects the Complainant’s prior establishment of rights in the PORTA-JOHN mark, as indicated by the Complainant’s initial (but expired) registration of the PORTA-JOHN mark on January 18, 1972, which relies on use in commerce dating back to July 15, 1962.

In any event, the Respondent fundamentally misperceives the Policy and its objectives in asserting that a previous registrant’s good faith registration of a domain name immunizes one who subsequently acquires the domain name from further scrutiny. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The consensus view of WIPO UDRP Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.7, and cases cited therein; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

The benefit of an original good faith registration cannot be perpetual and transferable. Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338. In this instance, the Panel considers that the disputed domain name was “registered” by the Respondent within the meaning of the Policy at the time of its acquisition by the Respondent in January 2000. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra; Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016. The Panel further notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.¹⁵ Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., supra; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra.

In view of the foregoing, it follows that in the absence of a good faith effort by the Respondent to avoid registering and using a domain name corresponding to the trademark of another in violation of the Policy, the Respondent cannot establish that it possesses rights or legitimate interests in the disputed domain name. For the reasons discussed above, the Respondent’s reliance on a previous registrant’s presumed good faith registration of the disputed domain name, without more, is not sufficient. The record does not reflect and the Respondent does not indicate that it explored the possibility of third-party rights in any way before registering and using the disputed domain name. The Respondent cannot consistent with the Policy shield its conduct by closing it eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.¹⁶ Even a cursory search by the Respondent would have revealed the Complainant’s U.S. registration for the PORTA-JOHN mark, and a careful reading of the Response reveals that the Respondent does not deny being aware of the Complainant or the Complainant’s mark when it registered the disputed domain name in January 2002.

The Panel notes that where a respondent registers a domain name consisting of “dictionary” words because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, supra. The Panel, however, does not consider “portajohn” to be a “dictionary” word in the sense referred to above, and the USPTO’s registration of the PORTA-JOHN mark on its principal register constitutes an official determination that the mark is neither generic nor merely descriptive with respect to portable toilet rental services. The Respondent has provided no satisfactory explanation of how, consistent with its obligations under paragraph 2 of the Policy, it could have formed a good faith belief in the generic nature of the disputed domain name at the time of the domain name’s registration.¹⁷

For all of the foregoing reasons, the Panel finds that the Respondent has failed to meet its burden under paragraph 4(c) of establishing rights or legitimate interests in the disputed domain name. Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Respondent registered a domain name that is identical to the Complainant’s PORTA-JOHN mark, for which the Complainant had obtained a prior U.S. registration. The Respondent has not indicated that it explored the possibility of third-party rights in any way before registering the disputed domain name. Moreover, a careful reading of the Response reveals that the Respondent has not denied being aware of the Complainant or the Complainant’s PORTA-JOHN mark at the time it took possession of the disputed domain name in January 2000. In the Panel’s opinion, it would strain credulity if the Respondent, as the largest portable toilet rental service company in the United States, claimed not to have been aware of the Complainant or other direct competitors.

The record indisputably reflects the Respondent’s use of the disputed domain name to redirect Internet users to the Respondent’s website. There is no evidence that the Respondent has ever been commonly known by the disputed domain name, or evidence of the Respondent’s use of the disputed domain name as a business or trade name, or as a trademark. The Respondent’s claim that the Complainant’s PORTA-JOHN mark is generic, a claim asserted for the first time in this proceeding insofar as the record reflects, is singularly unpersuasive. In the Panel’s view, the Respondent’s continued silence in the face of demand letters from the Complainant dating back to 2002 is manifestly inconsistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

The Panel concludes, in light of all of the factors discussed above, and given the totality of the circumstances of this case, that the Respondent registered and is using the disputed domain name in bad faith in an attempt to profit from and exploit the goodwill associated with the Complainant’s mark. Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 <portajohn.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: March 18, 2008

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¹ This registration reflects the date of the mark’s first use in commerce to be March 19, 1985. Complaint, Annex C-2.

² Complaint, Annex C-2. The records submitted by the Complainant do not indicate when this earlier registration expired, nor is there any discussion of this in the Complaint itself.

³ Response, Annex 10. The record indicates that Port-A-John, Inc. was incorporated in February 1993, several years before registering the disputed domain name.

⁴ During their brief visit of 10 seconds or less to the “www.portajohn.com” webpage, Internet users are informed that Handy House has been a part of United Site Services since January 2000. Complaint, Annex E.

⁵ Complaint, Annex F.

⁶ Complaint, Annex G. By this time Handy House was a part of the Respondent; however, the WHOIS contact information for the disputed domain name remained in the name of Handy House. Complaint, Annex H and K (WHOIS printouts for <portajohn.com> dated January 14, 2003 and November 20, 2002, respectively).

⁷ Complaint, Annex I.

⁸ The USPTO must refuse registration of a mark on the principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.

⁹ See “Google AdWords Help Center at http://adwords.google.com/support/bin/anwer.py?answer=5006.

¹⁰ Complainant, Annexes F, G, I and M.

¹¹ Response, Annex 7C.

¹² The Respondent has not brought to the Panel’s attention any U.S. court decisions that have recognized either wikipedia.com or allwords.com, relied upon by the Respondent, as authoritative sources supporting a finding that a registered U.S. trademark is or has become generic.

¹³ The deletion of the hyphen in the Complainant’s mark is not a significant change for purposes of paragraph 4(a)(i) of the Policy. See Toilets.com, Inc. v. Port-A-John, supra; Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716.

¹⁴ The Panel accepts the Respondent’s position that it would be unfair to require the Respondent at this time to demonstrate that the original registration of the domain name on February 11, 1997 by Port-A-John, Inc. was undertaken in good faith. Accordingly, the Panel will presume that the original registration of the domain name was in good faith in reaching its decision in this case. In so doing, the Panel finds that the Respondent’s claim of prejudice resulting from the Complainant’s alleged delay in bringing this proceeding is moot, since the Respondent asserts this claim based on its alleged inability to marshal such proof. The Panel notes, notwithstanding, that the record contains evidence of the Complainant’s pre-existing rights in the PORTA-JOHN mark, from which an inference of original bad faith registration in February 1997 might be drawn.

¹⁵ Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:

By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added).

¹⁶ The Respondent argues that under the Policy it cannot be presumed to have had notice of the Complainant’s pre-existing U.S. trademark registration, citing Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc., WIPO Case No. D2006-0719. Other Panels, however, have recognized the constructive notice principle in cases where U.S. parties are involved. See, e.g., The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305. This divergence of views appears to be influenced by the particular circumstances of each case. In the circumstances of this case, the Panel simply holds that the Respondent, in view of paragraph 2 of the Policy, cannot shield its conduct by closing its eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

¹⁷ The Respondent argues that the original registration by Port-A-John, Inc. of a domain name reflecting its business and trade name demonstrates the genericness of the disputed domain name. The Respondent’s argument, if not disingenuous, clearly is misguided: A trade name is a designation adopted by a commercial enterprise to describe itself and to distinguish it from other businesses and enterprises. See Final Report of the Second WIPO Internet Domain Name Process, WIPO Publication No. 843, Paragraph 306-320 (“WIPO Report”). As noted earlier, the record does not reflect the Respondent’s use of “Port-A-John” as a business or trade name. Thus, the Respondent may not claim legitimacy based on a continuation of the original registrant’s presumed use of the domain name to reflect its business or trade name. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra.