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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Angela Stevens v. Azeras LLC

Case No. D2008-0844

1. The Parties

1.1 The Complainant is Dr. Angela Stevens, of Indianapolis, Indiana, United States of America, represented by Erik M. Pelton & Associates, PLLC, United States of America.

1.2 The Respondent is Azeras LLC, of Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

2.1. The disputed domain name <sprayonsiding.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2008. On June 3, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2008, the Registrar 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”).

3.2 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 June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2008.

3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 17, 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

4.1 The Complainant is an individual and a resident of Indianapolis, Indiana, in the United States of America (“U.S.”).

4.2 The Respondent would appear to be a limited liability corporation based in St. Kitts and Nevis.

4.3 From March 2001 Alvis Coatings Inc (“Alvis”) used the “Spray on Siding” term to promote its business of providing exterior protective coating and sealant services. On August 29, 2003, it filed U.S. federal trademark registration 2,980,468 (the “Trade Mark”) and that mark proceeded to registration on August 2, 2005. Alvis also registered the Domain Name and the related domain name <sprayonsiding.net>.

4.4 The Trade Mark takes the following form:

4.5 On September 28, 2006, the Complainant acquired the Trade Mark and all associated goodwill from Alvis and currently licences the mark on an exclusive basis to Hoosier Permanent Coating LLC (“HPC”), for use in connection with the provision of exterior protective coating and sealant services.

4.6 Alvis also agreed to transfer the Domain Name and the related domain name <sprayonsiding.net> to the Complainant, but for reasons that are not clear these domain names were not transferred to the Complainant.

4.7 Exactly what happened to the Domain Name from September 28, 2006 and June 2007 is also not clear. It may have lapsed or been transferred. However, as of June 3, 2007 it was registered in the name of Kevin Daste of New Orleans. Mr. Daste has a history of dealing in domain names and has been the unsuccessful respondent in a large number of proceedings under the UDRP (see for example ConAgra Brands, Inc. v. Kevin Daste, Dana One LLC, WIPO Case No. D2007-0051).

4.8 On October 2, 2007, the Complainant’s lawyers sent a cease and desist letter to Mr. Daste, alleging trade mark infringement, pointing to numerous proceedings under the Policy in which Mr. Daste had been involved and demanding transfer of the Domain Name to the Complainant. The letter was returned to the Complainant as undeliverable.

4.9 By May 2008 the Domain Name had been transferred into the name of the Respondent. The Domain Name was just one of a number of domain names transferred from Mr. Daste on or about late 2007 and early 2008. Others include <compuse.info>, <kandi.net> and <howtosell.net>. Mr. Daste also seems to have some continuing connection with the Respondent being listed as the administrative and technical point of contact for at least one of the Respondent’s Domain Names.

4.10 The Respondent operates a website from the “www.azeras.com” website and describes itself as “a forward thinking Internet media company that acquires, develops, and monetizes domain names and websites”. It claims its portfolio “includes thousands of domain names”.

4.11 Since at least May 2008, and possibly earlier, a web page has operated from the Domain Name that has all the tell tale sounds of being a page created by a domain name parking service. The page has as its heading the Domain Name in medium sized text and under this is the tag line “What you need, when you need it”. Below this are listed various links. As at May 22, 2008 the web page displayed a series of links headed “Related Searches” which included “Alvis Spray on Siding”, “Alvis”, Srayonsiding”, “Vinyl Siding”, “Awning” and “Houses”. Below that were a further set of links described as “Popular Categories” that relate to “Finance”, “Travel” and “Home”. If the Internet users clicks on any of these related searches, a web page appears that displays sponsored links to various commercial entities including the Complainant’s (or perhaps to be more accurate, its exclusive licensee, HPC’s competitors.

4.12 The domain name parking page remains in operation as at the date of this decision.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical to the Spray On Siding Trade Mark.

5.2 On the issue of rights and legitimate interests, the Complainant contends that the Respondent demonstrates none of the characteristics of a legitimate interest as defined in paragraphs 4(c)(i), 4(c)(ii) and 4(c)(iii) of the Policy. It claims that where a respondent is not a licensee of a trade mark owner, and is not commonly known by the domain in question and the complainant’s rights to the trade mark predate the respondent’s registration of the domain name, then a respondent “has no rights or legitimate interests in the domain in question”. It cites in this respect the case of Charles Jourdan Holding AG v AAIM , WIPO Case No. D2000-0403.

5.3 On the issue of bad faith the Complainant makes a number of submissions as follows:

(a) It contends that the profiting from “click through advertising” or displaying of links to a complainant’s competitors shows bad faith.

(b) It is alleged that where a respondent shows a pattern of conduct or has prior decision under the policy against it then “bad faith in registering the domain name at issue is presumed”. Reference is made to the numerous successful cases brought against Mr. Daste under the Policy.

(c) The Complainant refers to the fact that Mr. Daste has transferred a number of domain names to the Respondent and is listed as the technical contact on at least one domain name registration, and the existence of a “Job Listing” published on November 8, 2007, on the “.tech.centric” website that is signed in the name “Kevin” and “kdaste”. From this the Complainant contends that the Respondent’s “operations are directed by Kevin Daste” and that “Azeras has … registered the [D]omain [N]ame to avoid the evidence that has accumulated against Mr. Daste in regards to his history as a cybersquatter”.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Panel has reviewed the documents submitted by the Complainant in this case. In the light of this material, the Panel finds as set out below.

6.2 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 This aspect of the case is straight forward. The Complainant is the owner of a registered trade mark, the Trade Mark, that takes the form of the words “Spray On Sidings” in stylised text. The Domain Name can only be sensibly understood as the words “spray on sidings” together with the “.net” TLD.

6.6 Given the fact that the Complainant’s registered mark takes the form of stylised text rather than text alone, the Panel does not accept the Complainant’s contention that the Domain Name is identical to the Trade Mark.¹ However, the Panel does accept that the Domain Name is confusingly similar to the Trade Mark.

6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.8 The Complainant contends and the Panel accepts, that the Respondent has not been authorised to use the term “spray on sidings” by the Complainant and that the Respondent is not known by the name.

6.9 Further, the Panel accepts that the Respondent had no interest in the Domain Name other than to use it to generate “click-through” revenue. This is clear from the fact that at all relevant times (beforehand and in the 6 months subsequent to the apparent transfer of the Domain Name to the Respondent) the website operating from the Domain Name has borne the hallmarks of being generated by a domain name “parking service.” Not only are there the links themselves that appear on the page, but the tag line “What you need when you need it”, which has been a feature of a large number of cases under the Policy involving domain name parking services (see for example First SBF Holding, Inc. v. XC2, WIPO Case No. D2008-0409; Kooks Custom Headers, Inc. v. Global DNS, LLC, WIPO Case No. D2008-0233; and Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695).²

6.10 The way in which these services operate is explained in greater detail in Owens Corning v. NA, WIPO Case No. D2007-1143. Whilst there is nothing per se illegitimate in the use of a domain parking service, it is quite different when a domain name is chosen on the basis of the similarity to a name in which a complainant has an interest, in the expectation that Internet users searching for products or services related to the complainant will instead be drawn to the domain name parking page. Such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three person panel in Express Scripts, Inc. v Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

6.11 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Trade Mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.

6.12 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.13 The key factor in this case is whether the Respondent was aware of the Complainant’s business at the time that it registered the Domain Name.

6.14 Obviously, the more widely-known the Complainant’s and it’s licensee’s business under the “Spray On Sidings” name and mark, the more likely it is that the Respondent was aware of it. Unfortunately, the Complainant has not really addressed this issue. Whilst the Complainant maintains that services have been provided under that name since March 2001, there is virtually no description of the extent of the Complainant’s activities nor any evidence as to the degree of any fame and reputation that exists in the term “Spray On Sidings” as a result.

6.15 Further, so far as the Panel can tell, the term “spray on sidings” is somewhat descriptive of the services provided under that name. It is not a term that is so inherently distinctive that even absent other evidence the obvious inference is that the term must have been chosen with knowledge of that term in mind.

6.16 Nevertheless, the Panel concludes that the Complainant has just made out a prima facie case to the effect that the Respondent was aware of the Complainant business under that name at the time that the Domain Name was registered in the name of the Respondent. Key to this conclusion is the format of the domain name parking page that has operated from the Domain Name.

6.17 Where a domain name has both potential descriptive and trade mark meanings, the links and searches displayed on the website operating from that domain name are often a factor that can be taken into account in assessing whether the respondent is acting with the complainant’s interests in the domain name in mind. The deliberate inclusion of links and searches tailored to the trade mark meaning of the domain name (particularly with a view to obtaining click-through revenue) will ordinarily fall within the scope of paragraph 4(b)(iv) of the Policy, because they evidence knowledge on the part of the respondent of the complainant and an intention to take advantage of the reputation that the complainant has developed in the relevant name.

6.18 Sometimes, it is argued by respondents that the links in question were automatically generated by some domain name parking service or the like and as a consequence it is simply not possible to draw the relevant inferences of intent from the existence of these links. In fact, in many cases these sorts of arguments are unconvincing given that it is frequently possible for the owner of a domain name to influence the searches and sponsored links produced by the choice of key words, meta tags and the like (see Owens Corning v. NA, WIPO Case No. D2007-1143).³

6.19 In the case the Panel does not believe that the links displayed on the domain name parking page operating from the Domain Name can be dismissed as simply being generic automatic generated results. There is a reference amongst the various “related searches” to Alvis. However, on the Complainant’s evidence Alvis is not a company that has been involved in this sector for nearly two years. It seems unlikely that this search link was produced automatically without some form of human intervention. It and the other links under the “related searches” heading call for explanation and none is forthcoming from the Respondent.

6.20 There are also other factors in this case that point to a finding of bad faith. First, the Panel is persuaded by the Complainant’s evidence to the effect that Mr. Daste and Azeras LLC are connected in some way and that Mr. Daste is actively involved in the activities of that company. The Panel also accepts that Mr. Daste has a long history of cybersquatting. A large number of cases under the Policy in which Mr. Daste has been an unsuccessful respondent are listed by the Complainant.⁴

6.21 The Complainant contends that in a case where a respondent can be shown to have engaged in a large number of cases of cybersquatting then “bad faith in registering the domain name at issue is presumed”. The Panel does not consider it helpful to approach this issue in terms of “presumptions” as to bad faith conduct. The assessment of bad faith will always depend upon the specific factual circumstances of any particular case. However, where a domain name has a potential trade mark and generic meanings and the respondent has a history of registering domain names for their trade mark meanings, then this is evidence that a panel can and will take into effect when forming a view as to what exactly motivated the respondent’s registration in the case before it.

6.22 Second, there is the transfer of the Domain Names and other domain names from Mr. Daste, who seems to reside in New Orleans, to an entity that appears to operate out of a post office box⁵ in Charleston, the capital of Nevis. Perhaps there is an innocent explanation for this. However, in the absence of any submission from the Respondent, the Panel accepts that the most likely explanation is that this Mr. Daste is attempting to disguise his continuing connection with these domain names. If Mr. Daste honestly believed these registrations to be legitimate, it is difficult to understand why he acted in this way. ⁶

6.23 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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, <sprayonsiding.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist

Dated: July 28, 2008