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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RUGGEDCOM, Inc. v. James Krachenfels

Case No. D2009-0130

1. The Parties

The Complainant is RUGGEDCOM, Inc. of Ontario, Canada, represented by Riches, McKenzie & Herbert LLP, Canada.

The Respondent is James Krachenfels of California, United States of America, represented by Berliner Cohen, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ruggedrouter.com> ("the Domain Name") is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2009. On February 2, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On February 4, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 6, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2009. The Response was filed with the Center on March 1, 2009.

The Center appointed Warwick Smith, James A. Barker and Diane Cabell as panelists in this matter on March 24, 2009. The Panel finds that it was properly constituted. Each member of 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.

By Procedural order made on April 6, 2009, the time for the Panel to give its decision was extended until April 9, 2009. In the event, that extension did not prove to be necessary, and the Panel has been able to give its decision within the 14 day period prescribed by the Rules.

4. Factual Background

The Complainant

The Complainant is a Canadian corporation. Since February 2001, it has been in the business of manufacturing computer peripheral equipment, including communication switches, gateways, computers, and modems. One of its products, a router used in computer networking systems, is called the "Rugged Router". Its equipment is designed for use with electric power substations, and in industrial manufacturing process control and transportation environments. The Complainant operates in both Canada and the United States of America.

The Complainant`s Trademarks

The Complainant is the registered proprietor of the RUGGEDRouter design mark in Canada ("the Canadian mark"). The Canadian mark consists of the words as just written, preceded by a small square which is only slightly larger than the letter "R" in "RUGGED". The small square appears to contain a representation of an electrical plug, or something similar. There is a disclaimer in respect of the word "router".

The application for the Canadian mark was filed on April 8, 2002, and the Canadian mark proceeded to registration on June 10, 2005. The Canadian mark covers, inter alia, communication routers, gateways, computers, modems, the remote monitoring of computer networks, remote and onsite network management, and online retail store services featuring computer hardware, computer software, and communications equipment.

The printout from the Canadian trademark registration office refers to a declaration of use filed on May 10, 2005.

The Complainant also holds RuggedRouter service mark and trademark registrations in the United States of America. Both are registered on the Supplemental Register maintained by the United States Patent and Trademark Office (the "USPTO"). The filing date in each case was October 25, 2005.

The Respondent has produced copies of certain communications which passed between the Complainant`s representative and the USPTO, which show that the Complainant attempted unsuccessfully to have its claimed RuggedRouter mark registered on the USPTO`s Principal Register. Those communications included a copy of a Final Report issued by the USPTO, in which the USPTO examiner referred to substantial evidence that the expression "rugged router" was descriptive in the United States, and therefore not eligible for registration on the Principal Register. The Panel has not been advised precisely what happened following the issue of that Final Report, but the Complainant appears to have accepted the position as asserted by the examiner. In any event, the two applications proceeded to registration on the Supplemental Register. (Purely descriptive marks may be registered on the Supplemental Register if they are considered to be capable of acquiring secondary meaning as a trademark, through use, at some future time.)

The Complainant`s Use of its Claimed RuggedRouter and Canadian Marks

The Complainant says that it has been using these expressions as trademarks continuously since 2004. It says that it has promoted the RUGGEDROUTER mark in both Canada and the United States during that time, spending over $3.5 million on various promotional activities for its marks. However the figure of $3.5 million does not relate only to the Complainant`s claimed RUGGEDROUTER mark the Complainant says that it does not distinguish its advertising expenditures as between its various trademarks. It asserts, however, that "RUGGEDROUTER" is one of its principal trademarks, and is used in association with one of its principal products.

The Complainant operates a website at "www.ruggedcom.com", where it promotes its products, including its "Rugged Router" products and services.

The Respondent and the Domain Name

The Respondent is the General Manager of a California-based corporation called LANstore, Inc. ("LANstore"). The Respondent is also the Manager, Marketing Programs, for another Californian company, GarrettCom, Inc. ("GarrettCom"). According to the Complainant`s uncontested statements in the Complaint, LANstore and GarrettCom are related corporations, with a common principal, and LANstore is a retailer of GarrettCom products. Both companies are sellers of heavy-duty industrial networking products. Their products include switches and routers, and they are competitors of the Complainant in at least the United States market for those products.

The Domain Name was registered on September 20, 2005. The Complainant has produced a copy of the website to which the Domain Name resolves ("the Respondent`s website"). The printout produced by the Complainant was printed on January 29, 2009. It contained at the top of the page the statement "RuggedRouters for harsh environments", and at the foot of the page there was a statement "© RuggedRouter.com. Rugged Router listings and information. All Rights reserved." However the Respondent`s website as it appeared on January 29, 2009 appeared to be devoted substantially to an attempt to persuade site visitors that the Complainant`s claim to trademark and/or service mark rights in the expression "rugged router" is invalid. The Respondent`s website contained references to other industry players who have used and/or do use "rugged router" in a descriptive sense (denoting a particular kind of router which is suitable for use in harsh, or "rugged" (typically industrial) environments), and provided links to the websites operated by those parties. It also contained an excerpt from a USPTO "Office Action" report to the Complainant`s representative, stating the USPTO`s objection to the Complainant`s applications to register RuggedRouter on the USPTO Principal Register namely, that "the proposed mark merely describes the goods/services". There was a link to a webpage setting out the full text of that report.

The Respondent`s website also contained a statement that the USPTO had rejected the Complainant`s application to register "Rugged Switch", and provided a link to a USPTO report relating to that application.

According to the Complainant, the Respondent`s website also contained a link to what is apparently the principal website operated by LANstore, namely the website at "www.lanstore.com." At that site, LANstore offered various products in competition with the Complainant. (The Respondent does not deny that such a link was present on the Respondent`s website on January 29, 2009.)

The Complainant also says, and the Respondent does not deny, that "Ruggedrouter" is used as a metatag, to attract customers looking for "RUGGEDROUTER" to the Respondent`s website.

The Panel has itself visited the Respondent`s website. There appears to have been no substantial change since January 29, 2009.

The Panel did not note any link from the Respondent`s website to the website at "www.lanstore.com." However there was a "DYMEC" link on the Respondent`s website, and when one clicked on that link one arrived at a website which prominently featured a GarrettCom trade mark, and provided a prominently positioned click-on link to GarrettCom`s own website.

In his Response, the Respondent says that for years LANstore and GarrettCom have referred to their own products as "rugged routers" and "rugged switches". The Respondent produced numerous examples of the use of the expression "rugged router" by others in the computer networking/communications field in the United States, in what appears to have been a purely descriptive sense. As the Respondent explained it, "‘rugged`, ‘hardened`, and ‘industrial grade` are terms frequently used in the networking and communications industry to distinguish ‘office-grade` products from products that are designed for industrial facilities. Networking products that are implemented in industrial sites are characterized as being impervious to dust and foreign materials, are able to withstand extreme temperatures and electromagnetic interference, and are able to survive hitting or bumping – in other words, they are ‘rugged`".

In a declaration attached to the Response (declared "under penalty of perjury"), the Respondent related how, in 2004 to 2005, he purchased on behalf of LANstore and Garrett.Com a number of domain names which he said contained common industrial Ethernet terms, "in order to develop websites directed to potential customers or persons interested in learning more about industrial Ethernet products". The Respondent listed these domain names, and the Panel notes that the seven listed domain names included <ruggedlan.com> and <ruggedpoe.com>. The Respondent noted in his declaration that not all of these domain names pointed to currently active websites, but that several, including the two "rugged" domain names, pointed to a website which has been live since 2005 and which provided information concerning networking products and suppliers in a manner that was similar to the pages reached via the Domain Name and <ruggedswitch.com>.

The final paragraph of the Respondent`s declaration included the following:

"6. I similarly reserved ruggedswitch.com and <ruggedrouter.com> for the legitimate business purposes of LANstore and GarrettCom to offer information concerning industrial networking products and companies that supply them. It was also my hope that doing so would help ensure that the phrases "rugged switch", "rugged router" and similar references to rugged networking products would remain free for companies and persons in the networking industry to use to describe or refer to such products."

Evidence of Prior domain name Disputes

The Complainant referred to two previous administrative proceedings between the Complainant and LANstore. The two previous administrative panel decisions related to the domain names <ruggedcom.net> and <ruggedcom.co.uk>, and in each case the Complainant was the successful complainant (although in the case of the ".uk" domain name the Complainant succeeded only after it mounted a successful appeal to an appeal panel established under the United Kingdom`s Nominet dispute resolution system). The Complainant produced copies of the decision of the three-member panel in the <ruggedcom.net> case (RuggedCom, Inc. v. LANstore, Inc., WIPO Case No. D2005-0760), and of the appeal panel in the <ruggedcom.co.uk> case (RuggedCom, Inc. v. LANstore, Inc., Nominet DRS No. 02802).

5. Parties` Contentions

A. Complainant

The Complainant says:

1. The Domain Name is identical to the Canadian mark and to the Complainant`s United States-registered RUGGEDROUTER marks.

2. The Domain Name is also confusingly similar to the Canadian mark and the Complainant`s US-registered RUGGEDROUTER marks, particularly having regard to the fact that the Domain Name incorporates the Complainant`s marks in their entirety.

3. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following circumstances:

(i) The Respondent has never used the Domain Name as a mark in good faith, and the Respondent has no rights in the mark.

(ii) The Respondent has never used the Domain Name in good faith in association with a noncommercial activity.

(iii) The Respondent used the Domain Name for commercial gain to mislead or divert consumers or to tarnish the trademark rights and reputation of the Complainant.

(iv) The Respondent used a domain name (the Domain Name) that did not comprise the legal name of the Respondent and was not the name, surname or other reference by which the Respondent was commonly identified; and

(v) The Respondent used a domain name (the Domain Name) that was not the geographical name of the location of the Respondent`s noncommercial activity or place of business.

4. The Domain Name was registered and is being used in bad faith, having regard to the following circumstances:

(i) The Respondent used and continues to use the Domain Name in bad faith to re-direct Internet users to the website at "www.lanstore.com", where LANstore offers similar products in direct competition with the Complainant. The apparent use of the Respondent`s website as an information site is misleading it is a quasi-information site only, and provides a direct link to the "www.lanstore.com" website.

(ii) The Respondent registered the Domain Name primarily for the purpose of tarnishing the reputation of the Complainant, who is a competitor of the Respondent`s company.

(iii) The excerpt from the USPTO letter which is posted on the Respondent`s website is out of date and misleading. The Complainant has now registered "RuggedRouter" as a trademark in the United States.

(iv) The Respondent`s use of the "Ruggedrouter" metatag indicates that the Respondent`s intention is to disrupt the Complainant`s business.

(v) The Respondent has never used "RuggedRouter" in association with its own wares or services, and only used the Domain Name in bad faith to confuse customers of the Complainant by redirecting users to the website at "www.lanstore.com," and selling products in direct competition with the Complainant.

(vi) LANstore has engaged in a pattern of registering domain names corresponding, identically, to registered trademarks of the Complainant, in order to prevent the Complainant from reflecting the Complainant`s trademarks in the domain names (referring to the LANstore registration of the domain names <ruggedcom.net> and <ruggedcom.co.uk>).

B. Respondent

The Respondent says:

1. The Complainant`s alleged trademark rights are invalid, because "rugged router" is a commonly known generic name for a particular type of product sold in the Complainant`s industry.

2. Alternatively, "rugged router" is highly descriptive of the router products of the Complainant and others.

3. Because the Complainant argues that the Domain Name is identical to its registered mark, and the Canadian mark includes design features (and the only common element between the Canadian mark and the Domain Name that the Complainant has not disclaimed is the word "rugged"), the Complainant must be relying on its United States registration of the purported mark "RuggedRouter" to support its Complaint. But registration on the United States Supplemental Register cannot support a complaint under the Policy. Furthermore, registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive (citing Clairol Inc v Gillette Co 389F.2d264 (2^nd Circ., 1968)), and implies that the Complainant could not show that the mark was distinctive (citing McCarthy on Trademarks, 4^th Edition, 2008 "[a] word, symbol, or device on the Supplemental Register is not, strictly speaking, a "mark" at all. Rather, it is only capable of some day becoming a mark upon the acquisition of secondary meaning." And to similar effect, Kip Cashmore v URLPro, WIPO Case No. D2004-1023 and The iFranchise Group v Jay Bean/MDNH Inc/Moniker Privacy Services [23658], WIPO Case No. D2007-1438, and Foundation Source Philanthropic Services Inc v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875).

4. The Complainant has produced no evidence of acquired distinctiveness in the claimed RUGGEDROUTER mark. The Complainant`s references to promotional activities are vague and unsubstantiated.

5. The Respondent has a right or legitimate interest in respect of the Domain Name. Anyone has a right to register and use a domain name based on its attractiveness as a commonly used descriptive phrase, even where the domain name is confusingly similar to a complainant`s registered mark (although the respondent in such a case must be using the disputed domain name not in a trademark sense, but in a descriptive sense, to communicate some aspect of the goods or services offered (citing Sweeps Vacuum & Repair Centre Inc. v. Nett Corp, WIPO Case No. D2001-0031)). The Respondent therefore has every right to use the phrase "rugged router" to describe or refer to the rugged routers of GarrettCom or LANstore, or others, and to make clear that there are multiple sources of rugged routers.

6. Prior to notification of the present dispute, LANstore and GarrettCom, as well as their customers, had used the expression "rugged router" to refer to the routers supplied by them.

7. The Respondent reserved the Domain Name and the <ruggedswitch.com> domain name for the legitimate business purposes of LANstore and GarrettCom, both to offer information concerning industrial networking products and companies that supply them, and also to ensure that the phrases "rugged switch", "rugged router", and similar references to rugged products, would remain free for companies and persons in the networking industry to use.

8. The Respondent has not acted in bad faith. First, the Respondent did not register the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant, as the alleged owner of the mark, or to a competitor of the Complainant. Secondly, the Respondent did not register the Domain Name (or <ruggedswitch.com>) in order to profit from any goodwill the Complainant may claim in those phrases, as purported "marks" or otherwise.

9. In contrast to the facts in the two prior panel decisions in which LANstore was the unsuccessful respondent, there can be no doubt in this case that "rugged router" is a generic (or at least highly descriptive) phrase in the relevant industry. Nor did the Complainant make claims in those cases based on marks registered on the Supplemental Register.

10. There are significant conflicts of fact and evidence in this case, such that the case is not appropriate for determination in an administrative proceeding under the Policy.

11. The Complainant has brought this proceeding in bad faith, in an attempt to monopolize terminology for certain primary products and product characteristics in the area of industrial communications and networking gear.

6. Discussion and Findings

A. What the Complainant must prove under the Policy - General

Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Paragraph 15(a) of the Rules requires the panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable".

B. Identical or Confusingly Similar

The Complainant must first prove that it has rights in a relevant trademark or service mark.

For the reasons that follow, the Panel is not satisfied that the Complainant has proved its claim that it holds trademark or service mark rights in the expression "RuggedRouter" in the United States. First, the Complainant`s two registrations of that mark are both on the Supplemental Register, and, at least in the absence of evidence of acquired distinctiveness, they do not provide evidence that the Complainant owns trademark or service mark rights in the expression. As the three-member panel said in Advance News Service, Inc. v Vertical Axis /Religionnewsservice.com, WIPO Case No. D2008-1475 (relating to the domain name <religionnewsservice.com>):

"Under United States law, marks that are merely descriptive, and that have not been shown to have acquired distinctiveness, may be registered on the Supplemental Register, but that registration does not confer any of the usual presumptions that accompany a mark registered on the Principal register (such as prima facie evidence of validity, ownership, and distinctiveness). Thus, the fact of a Supplemental Registration is no evidence whatsoever the Complainant owns trademark rights in the phrase RELIGION NEWS SERVICE. See Rodale, Inc. v Cambridge, WIPO Case No. DBIZ2002-00153"

In this case, the Respondent has produced abundant evidence of others in the United States using the expression "rugged router" in a descriptive sense. The Panel notes in particular the USPTO final report on the Complainant`s applications to register RuggedRouter as a mark on the Principal Register, and the widespread descriptive use of the phrase "rugged router" referred to and illustrated in that report. The examiner stated:

"Moreover the [Complainant`s] arguments that ‘rugged` is not descriptive for computer hardware components is both disingenuous and unpersuasive. As the [Complainant] is well aware, the term ‘rugged` is universally and widely used throughout the computer hardware manufacturing, marketing, and retailing field to aptly, unambiguously and immediately identify, state, and name a desired claim for and/or feature of and/or characteristic of computer hardware components of various types, including routers."

In those circumstances, the Panel is of the view that compelling evidence of acquired distinctiveness would have been required for the Complainant to establish that it has any right in a RuggedRouter mark in the United States. No such compelling evidence has been provided, and the Panel accepts the Respondent`s submission that, if such evidence had been available, it would have been placed before the USPTO and the Complainant would not have settled for registration on the Supplemental Register (as it appears to have done).

However that is not the end of the matter, as the Complainant has shown that it is the proprietor of the Canadian mark, which has been in force since 2002. Contrary to the Respondent`s contentions, the Panel is satisfied that the Complainant has sufficiently asserted its reliance on the Canadian mark in the Complaint.

In accordance with the approach consistently adopted by WIPO UDRP panels, the Panel is not prepared to look behind the Canadian registration, in order to investigate the Respondent`s contention that the Canadian mark is invalid. The consensus view of WIPO UDRP Panels is that, if a complainant owns a registered trademark, it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for, are irrelevant when finding rights in a mark (see the Center`s online document: "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", at para 1.1). But even if that were not the established position, the Panel has not been provided with sufficient evidence for it to find that the prima facie validity of the Canadian mark has been displaced. (For example, the Panel has no evidence about how the phrase "rugged router" was understood in Canada back in 2002 (ie whether descriptive or not), or whether the Respondent might have produced evidence that the expression, with or without the added logo, had acquired a secondary meaning in Canada, denoting the Complainant`s relevant goods and services.)

So proof of the Canadian mark is sufficient proof that the Complainant holds a "right" in a trademark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. The critical question, then, is whether the Domain Name is identical or confusingly similar to the Canadian mark.

The Canadian mark consists of the words "rugged" (in upper case lettering) and the word "router" (with only the first letter in upper case), preceded by a small square containing some difficult-to-decipher device element. There is no gap between the two words in the mark. The word "router" has been disclaimed.

The Domain Name consists of the same two words which appear in the Canadian mark, in the same order. Of course the Domain Name could not replicate the square device, or the stylized form of lettering, which are features of the Canadian mark. But those elements do not form the dominant part of the Canadian mark the square device is relatively small, and conveys (to the Panel at least) no relevant information or significant impression. Likewise, the different font used for part of the word "router" in the Canadian mark, is not dominant. What stands out in the Canadian mark, is the two words.

In those circumstances, it might be thought to be a simple matter for the Panel to conclude that the Domain Name, being visually and phonetically identical or almost identical to the Canadian mark, and conveying precisely the same ‘idea`, or impression, must therefore be regarded as confusingly similar (or perhaps even identical) to the Canadian mark for the purposes of paragraph 4(a) (i) of the Policy.

However some panels have held that, in the case of marks which are towards the descriptive end of the spectrum (ie the spectrum ranging from coined, or made-up, words or symbols at one end (considered to be inherently distinctive, and relatively strong marks), to wholly descriptive expressions at the other (considered to be relatively weak marks)), only small differences between complainant`s trademark and disputed domain name will be necessary for the respondent to avoid a finding of confusing similarity.

An example of such a case is Meat and Livestock Commission v David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645, a case which was concerned with the domain names <britishmeats.com> and <britishmeats.org>. The complainant in that case had a registered BRITISH MEAT device mark, which consisted of those two words in white capital letters over blue and red bands. The panel regarded the words "British Meat" as obviously descriptive, but took the view that the combination of elements in the mark made it capable of being distinctive. As in this case, the main issue was over the question of identity or confusing similarity between the complainant`s mark and the disputed domain names.

On that issue, the panel referred to the observation of Lord Simon in the English House of Lords case of Office Cleaning Services v Westminster Window and General Cleaners (1946) 63 RPC 39, that where names consist of descriptive elements, small differences suffice to distinguish.

In Meat and Livestock Commission, the panel noted that the disputed domain names had been in active use for periods of five and six years respectively, and commented that the absence of any complaint over a long period of active use "can suggest that such use does not give rise to a serious problem". Having regard to the fact that "British meat" was the normal and natural term to describe meat produced in Britain, the panel expressed itself as being "not satisfied that the Domain Names would be regarded by Internet users as indicating a website of the Complainant." In conclusion on this point, the panel in Meat and Livestock Commission noted that, while each case must depend on its own facts, previous UDRP panels had reached similar conclusions when dealing with cases where the disputed domain name was a descriptive term which formed part of the complainant`s logo or device mark (citing MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, WIPO Case No. D2000-1816 <maha.com>, Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 <brisbanecity.com>, and Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. D2001-0964 <cream.com>).

A different approach was adopted by the three-member panel in the case of Sweeps Vacuum & Repair Center, Inc. v Nett Corp., WIPO Case No. D2001-0031, a case relating to the domain name <sweeps.com>. The complainant in Sweeps held a device mark SWEEPS, in connection with retail store services featuring vacuum cleaners. The respondent had been using the disputed domain name to resolve to a website featuring links to various sites involving sweepstakes and related games (i.e. in a descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page of the website at the disputed domain name). On the identical / confusingly similar issue, the panel said:

"The facts that Complainant`s service mark includes a design and is suggestive, bordering on descriptive are indications of a weak mark. The fact that the mark is weak, however, does not mean that Respondent`s domain name is not identical or confusingly similar to Complainant`s mark. In addition, graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity. See EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 , section 6(b)(i) (finding that the domain name was identical to the trademark where the text of the name was identical and only the graphic elements which cannot be reproduced in the domain name were left out). The Panel finds that the domain name at issue is identical to the Complainant`s service mark."

The same issue was addressed by a three-member panel in Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779, a case relating to the domain name <hero.com>. The complainant held registered device marks which incorporated the textual element HERO. The complainant`s HERO mark was said to be "stylized to some extent, but not highly so". The respondent argued that there was no identity or confusing similarity between the complainant`s mark and the disputed domain name, as the complainant`s rights were in a stylized mark rather than in the word "hero" per se, and that the word "hero" was not exclusively or distinctively associated with the complainant.

The Hero panel rejected that argument, opting for a narrower interpretation of the concept of identity under the Policy. Referring to the Sweeps case, it expressed the view that the comparison required by paragraph 4(a)(i) of the Policy is an objective one, in which the disputed domain name is to be assessed against the dominant textual elements of the complainant`s mark.

The panel in Hero acknowledged that there was room for difference on which approach should be applied (i.e. whether graphic elements of a complainant`s mark should be considered or not), and that the outcome of each case will depend on its particular facts. The Hero panel appears also to have considered that the outcome in a given case might turn on the extent to which the figurative elements of the complainant`s mark form the dominant part of that mark (the Hero panel noted that a number of earlier decisions in which graphic elements of a complainant`s mark had been considered important to the comparison, involved "highly stylized marks", which was not the position in Hero).

So which approach is to be applied in this case? If the Panel follows the Sweeps approach, the answer will be simple the only possible finding will be that the Domain Name is identical to the Canadian mark. If the Panel follows the Meat and Livestock Commission approach, the device elements of the Canadian mark might be regarded as "small differences" which, having regard to the substantially descriptive nature of the Canadian mark, are sufficient to distinguish it from the Domain Name.

The majority of the Panel prefers the Sweeps approach, at least to the extent that it says that a finding that a complainant`s mark is weak does not preclude a finding of confusing similarity under paragraph 4(a)(i). (On the facts of this case, the majority does not consider it necessary to decide the more difficult question of whether a device mark can ever be regarded as identical to a disputed domain name - it seems at least arguable that the concept of identity is not apposite to apply to two things which have clear, observable differences. But that is an issue for another day, as the majority is satisfied that the Domain Name is at least confusingly similar to the Canadian mark.)

In rejecting the "small differences" approach exemplified in cases such as Meat and Livestock Commission, the majority notes first that proceedings under the Policy are not trademark infringement proceedings. The Policy is designed to provide relief against abusive domain name registrations, whether registered for commercial or non-commercial purposes. Such registrations do not necessarily involve any trademark infringement at all, and principles applicable in trademark infringement cases, including the principle (exemplified by cases such as Office Cleaning Services) that if a trader chooses to operate under a substantially descriptive mark, that trader must be prepared to live with minor differences (and accept as a consequence some level of marketplace confusion), are not necessarily relevant to the narrower question of confusing similarity under paragraph 4(a)(i) of the Policy.

Also, the Policy sets what has often been referred to by UDRP panels as a fairly low threshold of proof for a complainant under paragraph 4(a)(i) see, for example, UK Betting Plc v. Pam Oldfield, WIPO Case No. D2005-0637, where the panel described the threshold as being "generally recognized to be a low hurdle". Once that threshold level of proof has been met, the panel enquiry switches to the respondent, and whether it has acted in bad faith and without any right or legitimate interest.

Having regard to the foregoing, the majority considers that the question which is at the heart of paragraph 4(a)(i), is the question of whether the mark and the disputed domain name look, sound and "feel" sufficiently similar that Internet users looking for the complainant would be likely to arrive at a website at the disputed domain name. When the question is put that way, the descriptiveness or otherwise of the complainant`s mark is seen as irrelevant: either the mark and the disputed domain name are sufficiently similar that the domain name would likely attract people looking for the complainant, or they are not. (The importance of the descriptiveness of the complainant`s mark becomes relevant later on, when the panel examines the conduct of the respondent; in particular, whether the respondent registered the disputed domain name because of its attraction as a descriptive expression, and not, for example, for the purpose of trading off the complainant`s goodwill in (the secondary meaning attaching to) its mark.)

Applying that approach, the majority finds that the Domain Name is confusingly similar to the Canadian mark. As noted above, the Domain Name reproduces all aspects of the Canadian mark which were capable of being included in a domain name, and adds nothing else. To the extent that the prominence of the device elements in the Canadian mark is an appropriate factor to consider in the comparison (Hero v. The Heroic Sandwich), that factor favors the Complainant. The design elements of the Canadian mark have little prominence in the mark; it is the words which catch the eye. Overall, the majority is satisfied that the similarity between the Domain Name and the Canadian mark is such that a significant number of Internet users familiar with the Complainant and its products would be likely to arrive mistakenly at the Respondent`s website. In the majority`s view, that is enough to establish confusing similarity.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

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

The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center`s online document "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", as follows:

"A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP".

In this case, the Complainant has not authorized the Respondent to use the Canadian mark (or any sign confusingly similar thereto), whether in a domain name or otherwise. There is no suggestion of the Respondent being "commonly known by" the Domain Name, so there is no question of any right or legitimate interest based on paragraph 4(c)(ii) of the Policy. Nor (in the view of the majority of the Panel) is there any possibility of a right or legitimate interest existing under paragraph 4(c)(iii) of the Policy: for the reasons which are set out below, the majority is satisfied that the Respondent`s use of the Domain Name has been use with intent for commercial gain, and has been neither "legitimate" nor "fair".

The majority of the Panel is of the view that, that combination of circumstances provides sufficient prima facie proof of "no right or legitimate interest", so the evidentiary burden shifts to the Respondent. The majority is not satisfied that the Respondent has discharged that evidentiary burden.

The views of the majority are as follows.

The Respondent argues first that the Domain Name is a purely descriptive phrase, which anyone can use. The Respondent acknowledges, however, that such a right or legitimate interest depends on the use being genuine descriptive use, and not being trademark use. More specifically, the Respondent says that it reserved the Domain Name (and the <ruggedswitch.com> domain name) for the legitimate purposes of LANstore and GarrettCom, both to offer information concerning industrial networking products and companies that supply them, and also to ensure that the phrases "rugged switch", "rugged router", and similar references to rugged products would remain free for companies and persons in the networking industry to use.

But one only has to look at the Respondent`s website to see that its primary focus is an attack on the Complainant, and in particular the Complainant`s claim to trademark or service mark rights in a RUGGEDROUTER mark. The Respondent has generally not been using "rugged router" on the Respondent`s website in a descriptive sense. The expression as used on the Respondent`s website is not used directly to describe a single product of the Respondent`s employers. Rather, the expression has been used in an attempt to demonstrate what the Respondent now contends, namely that "rugged router" is a widely-used expression in the computer networking field, and the Complainant should not be able to claim monopoly rights in it. Certainly there are a number of links on the Respondent`s website to third party sites where the expression "rugged router" is said to be used, but it is simply not credible for the Respondent to suggest that those links were provided "to offer information concerning industrial networking products and companies that supply them". Why would the Respondent, acting for LANstore and GarrettCom, want to supply information concerning the products of parties who are presumably their competitors? The far more probable explanation is that the Respondent and LANstore have been pursuing a perceived grievance against the Complainant, and have been using the Respondent`s website to promote and publicize their side of the story.

Nor, in the majority`s view, does it make sense for the Respondent to say that it registered the Domain Name to ensure that the phrases "rugged switch", "rugged router", and similar references to rugged products, would remain free for companies and persons in the networking industry to use. The Respondent`s registration of the Domain Name, and the use he has made of the Respondent`s website, were not necessary to ensure that those expressions "would remain free" for other parties to use. On the Respondent`s own account, that was already happening, and there was no need for the Respondent to go to the trouble of registering a number of domain names containing the word "rugged", or to publicize on the Respondent`s website the Complainant`s failure to achieve registration on the Principal Register of its claimed RuggedRouter mark.

The majority accepts, as a general proposition, that registration of a descriptive phrase may constitute a right or legitimate interest in a disputed domain name, where the respondent has registered the disputed domain name because of its attractiveness as a descriptive expression (and not in an attempt to "target" the complainant or its mark - e.g. by trading off the complainant`s goodwill in its mark, and/or by attempting to provoke an offer from the complainant to purchase the disputed domain name at a profit to the respondent). See for example Landmark Group v DigiMedia.com LP, NAF Claim No. 285459, holding that pay-per-click landing pages are legitimate if "the domain names had been registered because of their attraction as dictionary words, not because of their value as trademarks" (cited with apparent approval in mVisible Technologies Inc. v. Navigation Catalyst Systems Inc, WIPO Case No. D2007-1141). On the facts of the mVisible Technologies Inc case, the panel found that the respondent`s use of the disputed domain name was not consistent with any claim that the disputed domain names had been registered for their descriptive values.

Numerous other UDRP panels, when considering whether disputed domain names have been registered for their descriptive qualities, have found it helpful (and in some cases dispositive) to look at the use the respondent has in fact made of the disputed domain name (see for example Starwood Hotels & Resorts Worldwide, Inc, Sheraton LLC, and Sheraton International Inc., v. Jake Porter, WIPO Case No. D2007-1254, and Grundfos A/S v Texas International Property Associates, WIPO Case No. D2007-1448. In the latter case, the panel noted that "there does not appear to be the slightest connection between any descriptive, or generic meaning which might be attributed to the Domain Name, and the use which the Respondent is in fact making of the Domain Name.").

Additional factors which persuade the majority that the Respondent has not acted with respect to the Domain Name in a bona fide, fair, or legitimate manner, include the following:

(i) The Respondent`s website is headed with the statement: "RuggedRouters for harsh environments". If a "rugged router" is simply a generic or descriptive expression, commonly used in the industry to describe a particular form of router, why did the Respondent run the two words together in this heading, with a capital letter for "Routers"? The usage adopted is almost identical to the text of the Complainant`s mark as it appears on the Supplemental Register maintained by the USPTO.

(ii) Similarly, the Respondent`s website contains a copyright claim followed by the expression "RuggedRouter.com. Rugged Router listings and information". Again, why a capital letter for "Router", and why run "Rugged" and "Router" together? Also, one would expect the words which immediately follow a copyright symbol and date, to be the name of the party claiming copyright. The majority is unaware of any party known as RuggedRouter.com.

(iii) The Respondent has not denied that, on January 29 2009, there was a link from the Respondent`s website to the LANstore website at "www.lanstore.com." And when the Panel visited the Respondent`s website, there was an indirect link (through the "DYMEC" website), to the GarrettCom website. The provision of such links goes well beyond what was necessary for the Respondent to have achieved his claimed purposes, especially given that LANstore and GarrettCom both operate their own independent websites. The use of "Ruggedrouter" as a metatag also appears to have been designed to catch Internet users looking for the Respondent`s website.

(iv) The Domain Name consists of the expression "ruggedrouter" in its singular form. If the Respondent`s real intention had been to provide information relating to a generic or descriptive category of goods known as "rugged routers", one might have expected the Respondent to have chosen the plural form "ruggedrouters.com". That may be a small point, and not mean much on its own, but put together with the other factors referred to in this part of the majority`s reasons, the majority sees it as consistent with the Respondent`s real intention being to use the Complainant`s "RuggedRouter" brand.

(v) The majority also takes into account the previous domain name disputes between the Complainant and LANstore. In those cases, the Respondent`s company saw fit to register the domain names <ruggedcom.net> and <ruggedcom.co.uk>. In these cases, which were decided in late 2005 and early 2006, the disputed domain names were identical to the Complainant`s name and registered trademark RUGGEDCOM. In the absence of any plausible explanation to the contrary, the majority concludes that the September 2005 registration of the Domain Name was done in pursuance of a general plan to register as many "rugged" domain names relating to the computer communications/networking field as the Respondent and/or his employers considered would be embarrassing or damaging to the Complainant.

Having regard to all of the foregoing considerations, the majority is of the view that the Respondent has failed to discharge the onus which lies upon him to show that he has some right or legitimate interest in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent`s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant`s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent`s] 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 [the respondent`s] website or location.

Substantially for the reasons set out in the preceding section of this decision, the majority of the Panel also finds this part of the Complaint proved. The majority considers that that conclusion is supported by the following additional matters.

The Respondent was aware of the Complainant when the Domain Name was registered. The Complainant and LANstore and/or GarrettCom were and are acknowledged competitors, and the Respondent is both a senior executive at LANstore and the Manager, Marketing Programs, at GarrettCom, Inc. The majority infers that the Respondent has been acting with the knowledge and approval of one or both of those companies.

The majority has no doubt that the Domain Name was registered, and has been used, for the bad faith purpose described at paragraph 4(b)(iii) of the Policy: the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of the Complainant, the Complainant being a competitor of the Respondent. (Strictly speaking, the Complainant`s competitors are LANstore and/or GarrettCom, rather than the Respondent personally, but it cannot be the case that the clear intent of paragraph 4(b)(iii) of the Policy is defeated where a respondent corporation registers a disputed domain name in the name of one of its senior executives. Such an interpretation would render paragraph 4(b)(iii) ineffective as a weapon against the registration of domain names by corporations acting with the kind of bad faith intent which is described in the subparagraph . Either the reference in paragraph 4(b)(iii) to "a competitor" must be read as being wide enough to cover the registration of the disputed domain name by a senior executive of a competitor, who has acted with the knowledge of the competitor and in that competitor`s perceived interests, or such a registration must qualify as a separate instance of bad faith registration and use, standing outside the four subparagraphs of paragraph 4(b) of the Policy. Either way, a finding of bad faith registration and use must follow.

The majority believes that its views are confirmed by what is said (or rather what is not said) in the declaration of the Respondent which was provided with the Response. In the declaration, the Respondent took care to state that he did not register the Domain Name for the bad faith purpose which is described at paragraph 4(b)(i) of the Policy, and that he did not register the Domain Name in order to profit from any goodwill that the Complainant might claim in its claimed marks. Conspicuously absent from the relevant paragraph of the Respondent`s declaration, was any denial that he registered the Domain Name for the purpose of disrupting the Complainant`s business. The same point was taken by the panel in the <ruggedcom.net> case decided in 2005. There, the panel recorded that the respondent had provided a declaration by its General Manager (who was presumably the same person as the Respondent in this case), declaring that the respondent had reserved the disputed domain name "for legitimate purposes". The panel observed:

"Being such a declaration, it was no doubt carefully drafted. It is notable that the declaration denies registration for a bad faith purpose described in paragraph 4(b)(i) of the Policy. There is no statement in the declaration disputing that the Respondent registered the disputed Domain Name contrary to paragraph 4(b)(iii) of the Policy."

The majority`s finding that the Domain Name was registered and has been used for the bad faith purpose described at paragraph 4(b)(iii) of the Policy is sufficient for it to reach a conclusion on this part of the Complaint. It may be that the circumstances also fall within paragraph 4(b)(iv) of the Policy. In the majority`s view, the link from the Respondent`s website to the "www.lanstore.com" website, and the indirect link (via the DYMEC website) to the GarrettCom website, were provided for the purpose of attracting Internet users to the LANstore and GarrettCom websites respectively, and in registering the Domain Name the Respondent must have known (and thus intended) that a number of Internet users who were looking for the Complainant`s website would mistakenly key in the Domain Name and arrive at the Respondent`s website. The Respondent`s employers are clearly commercial enterprises, and any steps taken by them (through the Respondent) which were intended to drive increased Internet traffic to their websites, can be regarded as having been taken for commercial gain. However the relevant bad faith must be proved to have existed back in September 2005, when the Domain Name was registered, and in the majority`s view there is insufficient evidence for the Panel to conclude that the links were present or intended at that time, or that, in registering the Domain Name, the Respondent was motivated by the kind of bad faith which is described at paragraph 4(b)(iv) of the Policy (as opposed to the the "paragraph 4(b)(iii)" kind or bad faith, which the majority is satisfied has been proved).

The majority concludes that, the Complainant having proved all three elements required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.

E. The Respondent`s Allegation that the Complaint was brought in Bad Faith

Having regard to the result of the Complaint, this allegation lacks merit and is accordingly dismissed.

7. Decision

For all the foregoing reasons, in accordance with the decision of the majority and with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders (by majority) that the Domain Name, <ruggedrouter.com>, be transferred to the Complainant.

Dated: April 7, 2009

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Dissenting Opinion

The dissenting panelist is of the opinion that a design mark is generically different from a text mark, even where the text is stylized. It is frequently the case that the only way certain words can be registered as marks is if a design element is claimed and often that is because the words themselves are generic or descriptive of the goods sold. I support the interpretation that a design mark can never be identical to or even confusingly similar to a domain name.

Secondly, the strength or weakness of the mark goes a long way toward establishing the good faith of the registration and that is the case here, in my opinion. The Domain Name registrant registered the Domain Name to describe the goods and services that he sells. The Domain Name is currently being used as well to essentially prevent the maturing of the Complainant`s Supplemental United States registrations. This is, in my humble opinion, a fair and legitimate use of the mark, and therefore the Respondent has acted in good faith and with legitimate right and interest.

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Diane Cabell
Panelist (Dissenting)

Dated: April 7, 2009