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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Construction Rentals, Inc. v. Toilets.com, Inc.

Case No. D2009-0147

1. The Parties

Complainant is National Construction Rentals, Inc. of Mission Hills, California, United States of America, represented by Stone, Rosenblatt & Cha, United States of America.

Respondent is Toilets.com, Inc. of Utica, Michigan, United States of America, represented by VanOphem & VanOphem, P.C., United States of America.

2. The Domain Name and Registrar

The disputed domain name <nationalsanitation.com> (the "Domain Name") is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 4, 2009. On February 4, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On February 4, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that 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" 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 Respondent of the Complaint, and the proceedings commenced on February 9, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 1, 2009. The Response was filed with the Center on February 27, 2009.

The Center appointed David H. Bernstein as the sole panelist in this matter on March 6, 2009. 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

Complainant, a California corporation, and Respondent, a Michigan corporation, operate portable sanitation rental and sales businesses in the United States and internationally.

Complainant owns two United States trademarks in connection with the rental of portable restrooms, portable sinks, septic holding tanks, and related equipment: NATIONAL SANITATION (Reg. No. 2,831,279; filed March 4, 2002; registered April 13, 2004) and NATIONAL SANITATION (and design) (Reg. No. 2,837,719; filed March 4, 2002; registered May 4, 2004). Registration No. 2,831,279 (the word mark) claims a date of first use as of 1987, and Registration No. 2,837,719 (the design mark) claims a date of first use as of 1998. Both registrations disclaim exclusive rights to use the word "sanitation" apart from the marks as a whole.

Respondent registered the Domain Name on June 11, 2000, about thirteen years after Complainant`s claimed date of first use. Respondent is using the Domain Name to advertise its portable sanitation rental and sales business. An Internet user who enters the Domain Name in his/her browser is redirected to Respondent`s webpage, "www.toilets.com", where Respondent offers portable sanitation products for rent or sale.

5. Parties` Contentions

A. Complainant

Complainant claims ownership of the NATIONAL SANITATION trademark. Complainant claims to have used the NATIONAL SANITATION mark since 1987 throughout the United States and internationally in connection with the rental of portable restrooms, portable sinks, septic holding tanks, and related equipment.

Complainant maintains that, as a result of its efforts, its NATIONAL SANITATION mark is recognizable to the public as associated with Complainant`s services. Complainant further maintains that it enjoys substantial goodwill associated with the mark, which is of inestimable value to it. Complainant contends that it is known throughout the United States as the largest provider of portable restrooms, sinks, septic holding tanks, and related equipment.

Complainant asserts that the Domain Name is substantially identical to Complainant`s registered trademarks.

Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name. The Domain Name is not Respondent`s trade or company name nor is Respondent known by that name. Complainant adds that Respondent has never used the Domain Name to advertise goods or services under that name; rather, Complainant asserts that Respondent uses the Domain Name to divert Internet traffic away from Complainant and to Respondent`s website, where Respondent offers products and services competing with those of Complainant.

Complainant further contends that Respondent registered the Domain Name to disrupt Complainant`s business. Complainant asserts that, when Respondent registered the Domain Name, Respondent was aware that NATIONAL SANITATION was the trademark used by Complainant to sell similar products and services as those sold by Respondent. Complainant also complains that Respondent registered Complainant`s trademark as its Domain Name to confuse Internet users. As a result, Complainant maintains that Respondent has caused Internet users looking for Complainant to be directed unknowingly to Respondent`s website, at which Respondent offers competing goods and services. Complainant avers that this is per se bad faith under Paragraph 4(b)(iv) of the Policy.

Complainant also argues that Respondent refused to relinquish the Domain Name after Complainant notified it of its registered trademarks, used delay tactics to prevent resolution of this matter, and attempted to sell the Domain Name to Complainant for an amount in excess of Respondent`s out of pocket expenses for registering and maintaining the Domain Name. Complainant asserts that these acts further evidence Respondent`s bad faith use of the Domain Name.

B. Respondent

Respondent does not dispute that the Domain Name is identical or confusingly similar to the words "national sanitation", but asserts that it had rights and a legitimate interest in the Domain Name when it was registered.

Respondent claims that it has used the Domain Name in connection with a bona fide offering of its national sanitation services since well before Complainant filed for its trademarks. Respondent maintains that it used the Domain Name uninterrupted for almost five years before it became aware that there was a dispute regarding the Domain Name.

Respondent argues that Complainant has not demonstrated first use of its mark in commerce and that Respondent`s use of the Domain Name predates Complainant`s trademark rights. Specifically, Respondent contends that Complainant cannot establish use of the mark before it filed its trademark applications in 2002. Further, Respondent asserts that, prior to 2002, Complainant lacked trademark rights because the word "national" is merely descriptive¹ and because Complainant disclaims the word "sanitation" apart from the marks as a whole. Additionally, Respondent notes that Complainant`s applications were initially rejected because they were merely descriptive, and argues that Complainant failed to provide the requisite proof to overcome this rejection.<sup>2</sup> Respondent notes that the only proof of distinctiveness in Complainant`s application is an affidavit "verifying that the marks were used as early as the filing date for each registration. In other words, the earliest proof of use in interstate commerce was as of the filing date for each registration".

In addition, Respondent contends that the Domain Name contains a descriptive and geographic term to which Complainant cannot maintain exclusive rights. Respondent registered the Domain Name because it was a descriptive term for its business, and it is using the Domain Name to promote the national sale of its sanitation products. It thus claims to have a legitimate interest in the Domain Name.

Respondent asserts that it registered and used the Domain Name in good faith. Respondent maintains that it registered the Domain Name to facilitate its operation of a national sanitation equipment rental and sales business. Further, Respondent denies registering the Domain Name to disrupt Complainant`s business or to create confusion with Complainant`s mark. Rather, Respondent claims, it "simply registered, as millions of other businesses have done, a domain name corresponding to its business use". Respondent denies having actual or constructive knowledge of Complainant`s "Trademark" at the time it registered the Domain Name. Therefore, Respondent argues, it has not registered and used the Domain Name in bad faith.

Finally, Respondent asserts that Complainant demonstrated bad faith by filing this action and "bullying" Respondent to transfer the Domain Name, because Complainant knew that it could not prove first use of the mark.

6. Discussion and Findings

The burden for Complainant under Paragraph 4(a) of the Policy is to prove that:

(i) [respondent`s] domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) [respondent] ha[s] no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

Complainant has proven ownership of trademark rights in the NATIONAL SANITATION mark, and claims first use as of 1987. Complainant`s NATIONAL SANITATION trademark is registered with the United States Patent and Trademark Office, which constitutes prima facie evidence of the validity of the mark. Respondent does not dispute the validity of the trademark registration, and thus Complainant has shown that it owns trademark rights in that mark.

There also is no doubt that the Domain Name is identical to that trademark. The only differences between the mark and the Domain Name are the gTLD and the space, both of which are without legal significance in determining identity or similarity. See e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035. Thus, the Domain Name is identical to Complainant`s trademark, and Complainant has satisfied its burden under the first factor of the Policy.

B. Rights or Legitimate Interests

It is a complainant`s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult for a complainant to produce evidence in support of a negative assertion, the threshold for a complainant to prove a lack of legitimate interest is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. The ultimate burden of proof, however, remains with the complainant. Id.

Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the disputed domain name. In particular, Complainant alleges that Respondent has not made any legitimate noncommercial or fair use of the Domain Name; rather, Complainant asserts, Respondent uses the Domain Name to exploit Complainant`s rights, reputation, and good will for Respondent`s own commercial gain by diverting Internet users to Respondent`s website, where Respondent offers competing products. Thus, Complainant concludes, Respondent is not using the Domain Name for a bona fide offering of goods or services, nor is Respondent known by the Domain Name or using the Domain Name in a noncommercial manner.

Having made this prima facie case, the burden of production shifts to Respondent. Paragraph 4(c) of the Policy states that a respondent may establish rights to or legitimate interests in a disputed domain name if it can demonstrate that:

(i) before any notice to [respondent] of the dispute, [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) [respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [respondent] has acquired no trademark or service mark rights; or

(iii) [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.

Respondent asserts defenses under Paragraph 4(c)(i). In particular, Respondent claims that the Domain Name is descriptive of its national sanitation equipment business, and it uses the Domain Name to promote this business. Further, Respondent claims it was not aware of any problems with the Domain Name until 2005, nearly five years after it registered the Domain Name.

It is undisputed that Respondent registered and used the Domain Name to promote its business of selling and renting portable sanitation devices. The record thus reflects that Respondent was using the Domain Name in connection with the offering of goods or services before Respondent received notice of the dispute.

Nevertheless, the critical question under Paragraph 4(c)(i) is whether Respondent`s use of the Domain Name was in connection with a bona fide offering for goods and services. For an offering of goods and services to be bona fide within the meaning of the Policy, previous panels have recognized that a respondent must not be using the domain name in a way that intentionally trades on a competitor`s mark, even if it is a weak mark. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416; First American Funds, Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., NAF Claim No. 149188 (July 19, 2003). Because it was offering national sanitation services, Respondent might have the right to make a descriptive fair use of the words "national sanitation" in advertising and promotional materials, see 15 U.S.C. В§ 1115(b)(4), but that does not give Respondent any right to use those words in a trademark-like manner to indicate source. However, that is exactly what Respondent is doing when it redirects Internet users from "www.nationalsanitation.com" to Respondent`s website, "www.toilets.com".

Respondent nevertheless argues that its years of use of the Domain Name is evidence that it does have rights in the Domain Name. It is true that Complainant has waited some time (more than eight years) since the registration of this Domain Name before bringing this action, but there is no concept of laches in the UDRP. Moreover, there is no evidence in the record to indicate whether Complainant was immediately aware of the registration of the Domain Name. The only evidence that was submitted shows that Complainant, through counsel, first contacted Respondent to complain about the registration of the Domain Name in May 2005, less than five years after the registration of the Domain Name, and that the parties have been engaged in on-and-off discussions since then, including in 2005, 2007 and 2008. Thus, there is no basis for finding that Complainant somehow lost it rights by delaying the filing of the Complaint, nor is there any basis for finding that Respondent has developed rights by virtue of the delay.

Respondent also argues that it has rights to use "national sanitation" because "national" is merely descriptive, as shown both in the initial office actions in the file wrapper for Complainant`s trademark registration and in other TTAB cases. It is true that "national" can be merely descriptive, but it also is true that a descriptive term can become protectible as a mark upon a showing of acquired distinctiveness (which can include a showing that the mark was used exclusively for five years). In this case, Complainant made the requisite showing of acquired distinctiveness to the PTO, which approved the registration of this mark.

For these reasons, as a matter of law, Respondent`s use of "national sanitation" in the Domain Name does not constitute a descriptive fair use, nor can it support the assertion that Respondent was using the Domain Name in connection with a bona fide offering of goods or services. Accordingly, Respondent has failed to rebut Complainant`s showing that Respondent lacks any rights or legitimate interests in the Domain Name, and Complainant has satisfied its burden under the second factor of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, will be considered evidence of the registration and 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 who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of [respondent`s] documented out-of-pocket costs directly related to the domain name; or

(ii) [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 [respondent] ha[s] engaged in a pattern of such conduct; or

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

(iv) by using the domain name, [respondent] intentionally attempted to attract, for commercial gain, Internet users to [respondent`s] web site 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 [respondent`s] web site or location or of a product or service on [respondent`s] web site location.

Complainant invokes Paragraph 4(b)(iv) of the Policy as per se evidence that Respondent registered the Domain Name in bad faith. Specifically, Complainant argues that Respondent`s registration of the Domain Name was "a willful and an intentional bad faith attempt to attract [I]nternet users to Respondent`s Website, by creating a likelihood of confusion as to source, sponsorship, affiliation and endorsement of its site". Complainant also alleges that Respondent automatically reroutes Internet users who type the Domain Name into their browsers to Respondent`s website, where Respondent offers competing services.

The Panel agrees that this conduct constitutes bad faith use of the Domain Name. Respondent is using the Domain Name, which consists of Complainant`s registered trademark, to divert potential customers to Respondent`s competing website. This is not only likely to cause confusion as to whether the "www.toilets.com" website is affiliated with NATIONAL SANITATION, but it also is likely to disrupt Complainant`s business by diverting consumers away from Complainant and towards Respondent, which will inure to Respondent`s commercial gain.

Respondent argues, though, that its registration was not in bad faith because it registered the Domain Name before the Complainant obtained its trademark registration. Furthermore, Respondent asserts, it had neither constructive nor actual knowledge of Complainant`s "Trademark" at the time it registered the Domain Name.

Normally, if a domain name is "registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant`s non-existent right". Felsina S.p.A. v. Hannah`s Recipes Inc., WIPO Case No. D2006-1444. However, the relevant inquiry is not whether Complainant`s trademark was registered at the time the Domain Name was registered, but rather, whether Complainant had trademark rights at the time. In the United States, which is where these two parties are based, common law trademark rights can arise through use in commerce, and Complainant has adequately alleged that it has used the NATIONAL SANITATION mark in commerce since 1987. Under the circumstances, it is clear that Complainant had trademark rights (even if it did not yet have a trademark registration) at the time that the Domain Name was registered.

Respondent disputes this point on the ground that the file wrapper for Complainant`s trademark registration lacks evidence sufficient to support a finding that Complainant was using the mark since 1987. Complainant, however, claimed a date of first use of 1987 in the application, and the PTO accepted that statement (which was supported by a sworn declaration of Complainant`s representative) without question. Trademark applicants are not under an obligation to submit supporting evidence of first use dates to the PTO; they only are required to submit a sworn declaration affirming that the information in the application is true. Of course, if Respondent had affirmative evidence that the claimed date of first use was not correct, the Panel would consider that evidence, but Respondent has not offered any such evidence. Thus, the registration is prima facie evidence of the validity of the registration as well as the facts alleged therein. Cf. Electronic Commerce Media, Inc. v. Taos Mountain, NAF Claim No. 95344 (October 11, 2000).

As for Respondent`s claim that it did not have actual or constructive knowledge of Complainant`s trademark at the time it registered the Domain Name, the Panel is unpersuaded. Although Respondent does say that it was "not aware of the Trademark until May 6, 2005" (which was when Complainant`s counsel first contacted Respondent), Respondent defines "Trademark" as the trademark registrations, so the statement is carefully crafted to refer only to the registrations and not more generally to Complainant`s use of the mark in commerce, which gives rise to common law trademark rights. Significantly, Respondent does not state that it was unaware of Complainant and its use of the NATIONAL SANITATION mark as of the time it registered the Domain Name. Nor, candidly, would such a statement be credible. Similarly, Respondent`s assertion that it registered this Domain Name solely because it has a "national" sanitation service does not ring true given that, for the past eight plus years, it has only used that Domain Name to automatically redirect Internet users to its "www.toilets.com" website (the home page of which does not say anything about "national sanitation" services, in haec verba).

For these reasons, the Panel finds that Complainant has sustained its burden of showing that Respondent registered and used the Domain Name in bad faith.

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 <nationalsanitation.com> be transferred to Complainant.

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David H. Bernstein
Sole Panelist

Dated: March 18, 2009

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¹ In support of its contention Respondent cites to a 1983 decision by the Trademark Trial and Appeal Board, In re National Rent A Fence, Inc., 220 U.S.P.Q. 479 (T.T.A.B. 1983) holding "NATIONAL" to be merely descriptive and unlikely to be considered a word of distinction by the purchasing public.

² Section 2(e)(1) of the Lanham Act provides that no trademark distinguishing the applicant`s goods from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of a mark which when used in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of the goods. 15 U.S.C. В§ 1052(e)(1). However, under Section 2(f), a mark that has been rejected as merely descriptive may be may be registered on the principal register upon proof of acquired distinctiveness, or secondary meaning. 15 U.S.C. В§ 1052(f).