Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Evidence - Legitimate interest - Constructive notice - Pattern of behaviour.

Complainant is a well known entity engaged in the manufacture and sale of acrylic-based products and asserts that it is a registrant and user of the mark, ACRYLITE since 1957. Respondent manufactures plastic point-of-purchase store displays and registered the domain name, ACRYLITE.COM in 1996.  Although Respondent was not present at the hearing the Panel held that it did not suffer any prejudice with respect to procedural fairness.

Held, Name not Transferred to Complainant

It is clear that the domain name is identical or confusingly similar to the mark of Complainant regardless of the addition of the ".COM " top level domain name designation.

Although Complainant asserts that it is a registrant of the mark, ACRYLITE, it failed to provide notarized evidence to that effect, specifically with respect to the handwritten and typed addenda to the documentation of registration.  The Panel held that Respondent's default placed a further burden of proof on Complainant's evidence to demonstrate clearly that Complainant is the lawful registrant of the mark.  This being so, Complainant failed to show that Respondent did not have a legitimate interest in the mark.

Complainant failed to show that Respondent demonstrated a pattern of behaviour that would lead to the conclusion that the registration of the domain name was in bad faith regardless of Respondent's constructive notice of Complainant's registration of the mark.  Respondent did not offer to sell the domain name, it did not register the domain name to prevent others from using it in connection with their lawful marks, it did not use the domain name to disrupt the business of a competitor, nor did it intend to create a likely hood of confusion among internet users so as to attract them to Respondent's website for its own commercial gain.

The facts with respect to bad faith registration are sketchy at best, and since Respondent has not made actual use of the domain name since its registration, and up to the point of the hearing, Complainant has no proof that Respondent has used the domain name in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Barney’s Inc. v. BNY Bulletin Board, ICANN Case No. D2000-059
Edgar Rice Burroughs, Inc. v. Adtel Communications, ICANN Case No. D2000-0115
Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-003
World Wrestling Federation v. Bosman, ICANN Case No. D99-0001

Decision referred to
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Haviland, Panelist:-

1. The Parties
The Complainant is CYRO Industries, a New Jersey partnership located at 100 Enterprise Drive, P.O. Box 5055, Rockaway, New Jersey, USA.

The Respondent is Contemporary Design, 412 113th St., Arlington, Texas, USA. 

2. The Domain Name and Registrar
The domain name at issue is <acrylite.com> (the Domain Name). The registrar with which the Domain Name is registered is Network Solutions, Inc., located in Herndon, Virginia, USA (the Registrar or NSI).

3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint by email on April 26, 2000, by fax on April 27, and in hardcopy on May 1, 2000. On May 4, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On May 4 , 2000, the Center sent via email to the Registrar, NSI, a Request for Registrar Verification. On May 10, 2000, NSI transmitted via email to the Center a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name. NSI’s Response provided the following contact information for the Respondent:

Registrant: 

Contemporary Design
412 113th St.
Arlington, TX 76011

Administrative Contact, Billing Contact:
Brown, Rob (RB2679) [email protected]
Contemporary Design
412 113th St.
Arlington, TX 76011
817-640-7539 (FAX) 817-633-3759

Technical Contact, Zone Contact:

Noland, Mike (MN386) [email protected]
Compu-mentor
4116 South Carrier Parkway
Building 280 Suite 854
Grand Prairie, TX 75052
972-263-7747 (FAX) 972-262-7259 

The Center completed a Formalities Compliance Review on May 11, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant
made the required payment to the Center. Upon independent review, the  administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On May 11, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of May 31, 2000, by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent and the individuals designated as its administrative and technical contacts via courier to the
address provided by the Registrar, United States, via fax to the two fax numbers  provided by the Registrar, and via email to the email addresses provided by the Registrar and to [email protected]. The Administrative Panel has reviewed the file records of communications to Respondent and finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

No Response having been received from Respondent by May 31, 2000, the Center then sent the Respondent on June 6, 2000, a Notification of Respondent Default, via the three email addresses listed above, advising the Respondent that the Administrative Panel would be appointed and advised of the default. A copy was transmitted to the Complainant.

In view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent), the Center invited Dana Haviland to serve as the panelist. On June 6, 2000, after having received Ms. Haviland’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via email a Notification of Appointment of
Administrative Panel and Projected Decision Date, in which Dana Haviland was formally appointed as the sole panelist. The Projected Decision Date was June 19, 2000. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules. 

In view of the default of the Respondent, the Administrative Panel shall issue its Decision based on the Complaint, the file documents, the evidence presented, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.

 4. Factual Background
Complainant CYRO Industries is engaged in the manufacture and sale of acrylic-based products, including acrylic monomer, molding and extrusion compounds and sheet products. Complaint, p.5. Complainant states that it owns federal trademark registrations for the ACRYLITE mark, including one registration issued in 1957 for "plain and decoratively embedded acrylic building panel sheets" and another issued in 1967 for "acrylic molding compound." Id. Complainant claims that, through its predecessors in interest, it has used the Acrylite mark since at least 1955. Id. ACRYLITE" is a coined term with no common or dictionary meaning. Id. According to the Complainant, the ACRYLITE products have been the subject of millions of dollars in sales and advertising for over 40 years, and, as a result, the ACRYLITE mark has become famous in the plastic industries as a leading brand of acrylic sheet
products and represents extremely valuable goodwill owned by Complainant. Complaint, pp, 5-6.

On August 22. 1996, the Respondent registered the domain name <acrylite.com> with NSI. Complaint, Exhibit A. Complainant has submitted a copy of a Dun & Bradstreet report dated April 27, 2000, for Contemporary Design Plastics, 412 113th St., Arlington, TX 76011. Complaint, Exhibit D. The Dun and Bradstreet report states that Contemporary Design Plastics manufactures plastic point-of-purchase store
displays. Complainant notes that one of the uses of its ACRYLITE acrylic sheet product is for plastic displays, and states that it believes that Respondent may use ACRYLITE acrylic sheet as well as other brands of plastic sheet in the manufacture of its products. Complaint, p. 6. There is no evidence, however, of what type of plastic sheet, if any, Respondent uses in the manufacture of its store displays.

On August 8, 1997, Complainant filed a complaint with NSI with respect to Respondent’s registration of the Domain Name. Complaint, p.6. The Domain Name was placed on hold and apparently has not been used for an active web site. Id.

 5. Parties’ Contentions
The Complainant contends that the Domain Name registered by the Respondent is identical to Complainant’s incontestable, federally registered trademark ACRYLITE. Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith.

The Respondent has not submitted any Response contesting the allegations of the Complaint.

 6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and 

- that the domain name has been registered and is being used in bad faith.

(a) Identity or confusing similarity of domain name and trademark.
The evidence shows that the Domain Name <acrylite.com> registered by the Respondent is identical or confusingly similar to the ACRYLITE trademarks, differing only in the addition of the .com suffix. "The top level domain designator ‘.com’ simply functions to indicate that the domain name owner purports to be a
business." Barney’s Inc. v. BNY Bulletin Board, ICANN Case No. D2000-059.

However, Complainant’s proof of its rights in the ACRYLITE trademarks is insufficient. Claimant claims that it is an assignee of the rights to two ACRYLITE trademarks and submits in support thereof Exhibit C of the Complaint, which contains two pages purporting to be copies of the Principal Register of the United States Patent and Trademark Office showing the registration of two ACRYLITE trademarks, initially issued in 1957 and 1967 respectively, to Wasco Products, Inc., a Massachusetts corporation, and its assignee American Cyanamid Corporation, a Maine corporation. Handwritten notations on both of these pages indicate "assigned to CY/RO Industries on July 1, 1976" and "Change of name to CYRO Industries April 7, 1981 Recorded May 16, 1988." These pages are not certified copies, however, and Complainant has submitted no affidavit, no copy of any underlying assignment(s) of the trademarks, nor any other evidence proving Complainant’s rights in the trademarks or the source or authenticity of the handwritten notations on which its claim depends. 

Under Uniform Rule 10(d), the Panel has the power to determine the admissibility, relevance, materiality and weight of the evidence. Although this administrative proceeding is a summary one, and although it is frequently stated that hearsay is admissible in arbitration, and although this Panel has no desire to encumber the domain name proceedings with unnecessary formalities, certain minimum standards of proof should be required in any forum. Unauthenticated photocopies of public records, and particularly documents reflecting typewritten and handwritten addenda, where the complainant’s rights depend on the authenticity of those addenda, should be insufficient to establish a complainant’s intellectual property rights in a trademark or to deprive a respondent of its rights to a registered domain name.

It is possible that if the Respondent in this case had not defaulted, Complainant’s failure to authenticate the documents proving its trademark rights might not have been at issue, and it is possible that the defect could have been easily cured. But "in cases of default, a Complainant’s papers will be held to an exacting standard." Edgar Rice Burroughs, Inc. v. Adtel Communications, ICANN Case No. D2000-0115.
In this case, the Panel finds that proof of Complainant’s rights to the trademarks at issue is insufficient.

The Panel considered requesting that the Complainant make a further submission of proof on this issue, which is central to proof of the first element of its claim. The Panel has not made such a request, however, because the Panel also finds that the Complainant has failed to establish the third element of its claim, as discussed below. 

(b) No legitimate interest in domain name
Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s mark. Complaint, p.8. By failing to submit a Response to the Complaint, Respondent has failed to invoke any circumstance which could  demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name. The Panel finds that the evidence is sufficient to
prove the second element of a claim for transfer of a domain name under the Policy.

(c) Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location."

The Panel finds that the Complainant has not presented evidence sufficient to establish bad faith registration and use of the Domain Name by Respondent on any of the four grounds specified in Paragraph 4(b) of the Policy. There is no evidence that Respondent has (i) tried to sell the Domain Name to Complainant; (ii) engaged in a pattern of conduct of registering domain names to prevent trademark owners from doing so; (iii) registered the Domain Name to disrupt the business of a competitor; or (iv) attempted to attract Internet users to a web site for commercial gain by creating a likelihood of confusion with the Complainant’s source or sponsorship of its web site or products on its web site. There is no evidence that Respondent has ever used the Domain Name in connection with a web site or products or services offered online or otherwise.

Under the Policy, the four examples of bad faith registration and use set forth in Paragraph 4(b) are not exclusive, so the Panel will consider whether the Complainant has proved any other circumstances constituting bad faith registration and use of the Domain Name. On page 8 of the Complaint, Complainant sets forth a series of facts which it contends establish bad faith registration and use of the Domain Name by Respondent: (a) the ACRYLITE mark is distinctive, famous and well-known in the
plastics industry; (b) the ACRYLITE mark has been used for over forty years for acrylic plastic sheeting; (c) Respondent is a commercial enterprise engaged in the manufacture of plastic products since 1970; (d) Respondent certainly knew of Complainant’s long use of the ACRYLITE mark when adopting the Domain Name; (e) Respondent had constructive notice of Complainant’s federal trademark registrations as a matter of law; (f) Respondent’s registration of the Domain Name prevents Complainant from reflecting its famous mark in the .com domain; (g)  Respondent adopted the Domain Name without license or consent from Complainant; (h) persons using the Domain Name to find an official site for ACRYLITE products would similarly be misled to Respondent’s site; (i) persons using a search engine to
find an official site for ACRYLITE products would similarly be misled to Respondent’s site; and (j) registration and use of the domain name by a plastics manufacturer necessarily disrupts the business of Complainant and its authorized distributors and is likely to deceive and mislead consumers. According to Complainant, the only explanation for Respondent’s selection of the Domain Name is an intentional attempt to attract for commercial gain Internet users to Respondent’s web site by trading on the recognition of a leading brand in the plastics industry. 

However, there is no evidence that Respondent has used the Domain Name in connection with a web site, even during the year between the time Respondent registered the Domain Name and Complainant filed a complaint with NSI. Nor is there any evidence that the Respondent has ever made any other commercial or non-commercial use of the Domain Name. There is simply no evidence that the
Respondent has ever used the Domain Name at all.

At best, the facts alleged in the Complaint show nothing more than that the ACRYLITE mark is well-known in the plastics industry, that Respondent is a manufacturer of plastic store displays which may or may not use ACRYLITE plastic sheets, that Respondent had constructive notice of the trademarks, and that Respondent registered the domain name nearly four years ago. Complainant
contends that there is no plausible good faith explanation for a plastics manufacturer to register and use Complainant’s well-known and distinctive ACRYLITE trademark as a domain name, and that such registration is clearly bad faith under Paragraph 4(a)(iii) the Policy. Complaint, p. 8. Even if these sketchy facts were sufficient to show bad faith registration, which the Panel need not and does not decide, the facts shown are clearly insufficient to constitute proof of bad faith use of the Domain Name.

Under Paragraph 4(a) of the Policy, both bad faith registration and bad faith use must be proved. World Wrestling Federation v. Bosman, ICANN Case No. D99-0001. The Panel is aware of other ICANN decisions holding that inaction by the Respondent in the presence of particular circumstances can constitute bad faith use, see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-003 (active steps by respondent to conceal its identity constituted bad faith use even where respondent had not used the domain name); Barney’s, Inc. v. BNY Bulletin Board, ICANN Case No.
D2000-0059 (bad faith use found despite lack of any commercial activity using the domain name or a related website, where respondent engaged in negotiations for transfer of domain name). The Panel notes that such circumstances have not been shown in this case, and that in any event, the clear language of the Policy requires proof of bad faith use of the domain name. Claimant has therefore failed to proved the third element of a claim under the Policy for transfer of a domain name. 

 7. Decision
For all of the foregoing reasons, it is the decision of the Panel that the Complainant has failed to prove the first and third elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Name acrylite.com is therefore denied.