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lang=EN-CA style='font-family:"Goudy Old Style";mso-bidi-font-family:"Times New Roman"; DINOFLEX Manufacturing Ltd. v. Recreational Technology Industries Ltd. [2004] GENDND 987 (17 August 2004)


National Arbitration Forum

DECISION

DINOFLEX Manufacturing Ltd. v. Recreational Technology Industries Ltd.

Claim Number: FA0407000292846

PARTIES

Complainant is DINOFLEX Manufacturing Ltd. (“Complainant”), 5590-46th Avenue S.E., Post Office Box 3309, Salmon Arm, BC V1E 4S1, Canada.  Respondent is Recreational Technology Industries Ltd. (“Respondent”), 5500-48th Avenue S.E., Post Office Box 400, Salmon Arm, BC V1E 4N5, Canada.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain name at issue is <playtile.com>, registered with Domainbank.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hugues G. Richard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 2, 2004; the Forum received a hard copy of the Complaint on July 7, 2004.

On July 6, 2004, Domainbank.com confirmed by e-mail to the Forum that the domain name <playtile.com> is registered with Domainbank.com and that Respondent is the current registrant of the name.  Domainbank.com has verified that Respondent is bound by the Domainbank.com registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@playtile.com by e-mail.

A timely Response was received and determined to be complete on July 26, 2004.

           

A timely Additional Submission was received from Complainant and determined to be complete on August 2, 2004.

On August 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Trademark information

Complainant owns US and Canadian trademarks. The US trademark is PLAYTILES (U.S. Reg. No. 2,015,028) registered on November 12th, 1996. As to the Canadian trademark, PLAYTILES (TMA 458,159) was registered on May 24, 1996. These trademarks are related to rubber safety tile wares.

Factual Background

Complainant is a producer of high quality playground surface tile products and other molded rubber surfacing products manufactured from recycled granulated rubber bound with polyurethane.  The playground surfacing tiles bearing the trademark PLAYTILES are manufactured using granulated recycled rubber, surfaced with colored EPDM rubber bound with polyurethane resin. 

Complainant has been marketing playground surfacing tiles under the trade name PLAYTILES since 1995.

Identical or confusingly similar

The <playtile.com> domain name consists essentially of Complainant’s registered mark PLAYTILES without the letter “s”, and followed by the domain name suffix “.com”. 

The absence of the “s” from the Disputed Domain Name does not abate the creation of confusion. 

Furthermore, since trademarks often evolve into corresponding domain names, the domain name suffix “.com” is not likely to create a distinguishing impression and is not a factor in determining if confusion between the Disputed Domain Name and Complainant’s registered mark exists.

Respondent’s products bearing the unregistered trade name PLAY TILE and Complainant’s registered mark PLAYTILES are in all material respects identical. Both use granulated recycled rubber bound with polyurethane and both are colored using EPDM surfacing. Both are produced in four square foot tiles.  The similarity of the products further leads to confusion.

The trademark PLAYTILES cannot be construed as a generic name for playground surface tiles.  The word “playtiles” is not found in any dictionaries. Also, from the few responses generated from an Internet search, “playtiles” is clearly not a generic term.

Rights and Legitimate Interests

Complainant has registered marks in both Canada and the US previously used for rubber safety tiles.

Respondent should be considered as having no rights or legitimate interests in respect of the <playtile.com> domain name for the following reasons:

First, Respondent knew of the close similarity of the disputed domain name to Complainant’s trademark before Respondent made any preparations to use such name in connection of a bona fide offering of goods or services.

Second, Respondent has never been known by the disputed domain name.

Third, all of Respondent’s uses of the disputed domain name have a prospect of commercial gain associated with them in attempting to sell confusingly similar product.

Bad Faith

Respondent has registered and is using the Disputed Domain Name in bad faith.

Respondent’s principle, Dirk Damberg, was hired by Complainant in 1989 in a technical position and his employment was terminated 4 years later. The dismissal was acrimonious.

Respondent’s principle, as a former senior employee and direct competitor of Complainant for more than eight years, had full knowledge of Complainant’s trademark registrations which are clearly indicated on all Complainant’s marketing materials. Respondent also had knowledge of Complainant’s considerable investment in the marketing of its PLAYTILES registered products.

Shortly after Respondent’s principle’s dismissal, Respondent began marketing similar products to those manufactured by Complainant through Respondent’s first company, Veplas (now non-operational).

From time to time, Complainant receives complaints regarding defective product from Respondent’s clients.

 

Recently, Respondent’s new company began using the PLAY TILE unregistered trade name and is offering for sale and selling surface tile products through the <playtile.com> domain name (registered March 8, 2004).   

Respondent's illegitimate use of the <playtile.com> domain name will further likely (sic) to depreciate the goodwill attached to the PLAYTILES registered products and similar products manufactured by Complainant since 1989.

B. Respondent

Trademark information

Respondent alleges to have filed a trademark application in Canada for the registration of the words "Play Tile" on April 6, 2004.

Factual Background

Since 1994, Respondent and its related companies have manufactured, marketed and sold recycled rubber products.

Respondent uses the following product names to describe its products: "safety play tile", "playsafe", and "play surface tile."

Respondent is a Canadian market leader in its industry.

Identical or confusingly similar

The domain name is similar to the trademark, yet it is not confusingly similar. The similarity arises from the fact that the trademark is identical to a generic phrase that is used in this industry. Respondent provided two examples of industries using the term “playtile.”

 

Rights and Legitimate Interests

The phrase "play tile" is a common generic name used in this industry. It does not need to be in a dictionary to be considered generic. Internet searches through engines like <yahoo.com> revealed over 900,000 entries for "play tile" and approximately seventy for "playtiles."  Therefore, Respondent has rights in the Disputed Domain Name.

The <playtile.com> domain name was the closest name to the generic phrase ("play tile") that domain name policy would allow, given that the domain name policy will not allow a blank space between "play" and "tile."

The relationship between Dirk Damberg, principal of Respondent, and Complainant is not truthfully stated in the Complaint. The facts of this relationship are that Dirk Damberg was at one time the founder, technical director and a shareholder of Complainant. Since Dirk Damberg left Complainant, the latter has repeatedly tried to interfere with the legitimate business pursuit of Respondent.  Respondent believes that this is the true source of the Complaint.

Prior to knowledge of the dispute raised by the Complaint, Respondent had been using the domain name for a bona fide offering of its products.

Given that the phrase "play tile" is generic, Respondent and many other businesses commonly have its products referred to by that phrase. Respondent provides evidence for two such industries.  

Respondent’s use of a generic phrase is without any intent to divert consumers or tarnish any aspect of Complainant’s business.

Complainant's allegation that it received complaints about the products of Respondent is entirely untrue.  No evidence in support of such an allegation is presented by Complainant.

Bad Faith

There are no circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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.

           

There is no evidence that Respondent has 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, and Respondent has not engaged in a pattern of such conduct.

As reflected in the Annexes of the Complaint, Complainant's use of the trade name relates to colourful logo tiles for playgrounds, with numbers and logos, for hopscotch games, etc. Respondent does not manufacture such items.

The process technology and raw materials used by Respondent are totally different from that used by Complainant. Thus, Complainant's allegation of similarity of products is false.

There is no evidence that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

C. Complainant’s Additional Submission

Trademark information

Canadian and US marks matured to registration in 1996.

Identical or confusingly similar

Although Respondent claims that Complainant’s PLAYTILES trademark is generic based on the Internet searches Respondent conducted, there is no evidence to support that the domain name is not confusingly similar to Complainant’s trademark.

 

Complainant strongly disagrees with Respondent’s position that the PLAYTILES trademark is generic and that Complainant does not have rights in the PLAYTILES trademark.

Many WIPO decisions establish the principle that a trademark registration is prima facie evidence of validity, which creates a rebuttal presumption that a mark is distinctive.

Documentation supporting the contention that Panels should not substitute the judgments of these Registrars with the opinion of Respondent is provided by Complainant. In parallel, relevant decisions show that Panels have held that making a determination that a trademark is generic is beyond the purview of the Panel.

The PLAYTILES Registrations are prima facie valid.

While Respondent alleges that the PLAYTILES trademark is generic, Respondent has described its own product as a “play surface tile” and not a “play tile.”

Rights and Legitimate Interests

Respondent does not have a legitimate interest in the impugned domain name.

Respondent’s evidence concerning Internet searches of “play tile” and “playtiles” merely reveals that Complainant’s PLAYTILES trademark is not generic, and that it is strong and well known in Canada and the U.S. 

Accordingly, Respondent has not provided any evidence whatsoever to suggest that the PLAYTILES trademark is a common term for surface tiles in Canada or the U.S. In fact, Respondent’s Internet searches suggest quite the opposite—that Complainant’s PLAYTILES trademark is strong.

While it has been alleged that the PLAYTILES trademark is generic, Respondent itself has admittedly described its own product as “play surface tile”, and not “play tile.”

Further, it is somewhat ironic that while Respondent has alleged that Complainant cannot assert rights in the PLAYTILES trademark by virtue of being generic, Respondent’s business card indicates that it is the owner of a trademark registration for PLAY TILE (which is of course not the case).

The Response contains a copy of Respondent’s business card falsely indicating that PLAY TILE is a registered trademark of Respondent.

Respondent’s Response indicates that Respondent filed a trademark application for “Play Tile” in Canada. A review of the Register indicates that the entity Global Technology Investments Ltd. has applied for PLAY TILE, Canadian application No. 1,215,091 for use in association with recycled rubber safety surfacing in tiles; marketing and sales of safety surfacing tiles.

Complainant claims that the process by which a product is created is not relevant to whether two parties are competitors. The issue is whether the two parties offer similar products. In this case, there can be no doubt whatsoever that Respondent is a competitor of Complainant. Both parties offer surface tiles for installation on, inter alia, playgrounds and recreational facilities. To allege that the parties are not competitors is completely misleading and false.

Bad faith

Complainant is not acting in bad faith.

Complainant is the owner of the PLAYTILES Registrations, which justifies the initiation of the Complaint in these proceedings.

Further, Complainant is faced with a disgruntled former employee and shareholder, who has gone to great lengths to disrupt Complainant’s business, first by selling competing products several hundred meters from Complainant, leading to consumer confusion, and most recently by registering and using the impugned domain name.

DISCUSSION & FINDINGS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

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

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

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

A descriptive word cannot be registrable as a trademark; however, according to basic trademark law principles, once registered, a mark, albeit descriptive benefits from a presumption that it is distinctive or has acquired secondary meaning. The proof to the contrary lies with the challenger.  This notion is explicitly addressed in Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).

Complainant asserts that it has established rights to the PLAYTILES mark through its registration with the Canadian Intellectual Property Office (Reg. No. TMA 458,159 issued May 24, 1996), the United States Patent and Trademark Office (Reg. No. 2,015,028 issued November 12, 1996) and its use of the mark in commerce since 1995.  In Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), it was established that under U.S. trademark law, a registered mark holds a presumption that it is inherently distinctive and has acquired secondary meaning.

Generally, the fact that a domain name incorporates Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy according to Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001); Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000), and Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001).

 

In addition, Complainant contends that the Disputed Domain Name is confusingly similar to the PLAYTILES mark because the domain name fully incorporates the mark and merely omits the letter “s”.  In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), there was a finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.

Deletion of the spaces between the words in the mark does not significantly distinguish the domain name from the mark because the use of spaces is not acceptable in registered domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002).

Also, the domain name suffix “.com” is not likely to create a distinguishing impression and is not a factor in determining if confusion between the domain name and Complainant’s registered mark exists (See Brookfield Communications Inc. v. West Coast Entm’t Corp. [1999] USCA9 225; 174 F. 3d 1036, 1055 (9th Cir. 1999)).  The Disputed Domain Name is identical to Complainant’s corresponding trademark because the addition of the generic top-level domain “.com” is irrelevant under the Policy in analyzing the similarity between domain names and marks.  See Daedong-USA, Inc., Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) wherein Respondent's domain name, <kioti.com>, was identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).

           

Respondent presented evidence to support the generic nature of the registered trademark in order to defeat the claim of trademark rights, even though the mark is the subject of an incontestable registration (See Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000)). 

The Panel finds that it is outside its purview to consider whether a trademark registration has become generic in accordance with Lucasfilm Ltd. v. Cupcake Cityi, D2001‑0700 (WIPO Sept. 21, 2001); X/Open Co. Ltd. v. Sorenson, D2002‑0297 (WIPO June 24, 2002) and The Amazing Kreskin v. McCambridge, D2000‑1730 (WIPO Feb. 11, 2001).  Therefore, the issue of the trademark’s genericness will not be addressed.

Regardless of this position, the Panel wishes to comment on Respondent’s allegations. Although Respondent presented evidence to support its opinion that the trademark PLAYTILES is generic, this evidence is dispelled by Complainant. 

Also, the Panel notes that Respondent, while attempting to establish genericness of Complainant’s mark, has filed a trademark application for PLAY TILE for its products.  It is illogical for Respondent to have filed a trademark application if it thought that the registration would fail since it considers PLAYTILES to be generic.

The fact that both Complainant and Respondent operate in the same industry also encourages confusion between the Disputed Domain Name and the registered trademarks. As shown in Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000), the likelihood of confusion “is further increased by the fact that the Respondent and [Complainant] operate within the same industry.”

Furthermore, the Panel would like to indicate an inconsistency in Respondent’s argument.  Respondent alleges that it does not manufacture items such as “colourful logo tiles for playgrounds, with numbers and logos, for hopscotch games etc.” as does Complainant.  However, Respondent claims that its product may be described as “safety play tile”, “play safe” or “play surface tile.”  Whether the tiles are destined exclusively for playgrounds, and whether the tiles are coloured, are not factors determining the nature of the products.  The Panel holds that the products bearing the trademark PLAYTILES and those sold under the trade name PLAY TILE are substantially similar if not identical.  

Therefore, the Panel finds that Complainant has satisfied its burden under Policy ¶ 4(a)(i).  Complainant’s trademarks and the registered Disputed Domain Name are found to be confusingly similar.

Rights and Legitimate Interests

In providing its Additional Submission, Complainant has improved its initial Complaint and has met its burden of proving its claim.  The burden has been shifted onto Respondent.

The Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 

Respondent has not shown that it is commonly known by the mark and never applied for a license or permission from Complainant to use the trademark name (See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)). 

Also, Respondent has not shown that it has been commonly known by the domain name prior to registration of the domain name. As such, the Respondent cannot prevail (See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)).

The Panel notes that the date for the filing of the application of the trade name “Play Tile”, application No. 1,215,091, at the Canadian Intellectual Property Office is April 29, 2004, roughly three weeks following the issuance of Complainant’s demand correspondence of April 6, 2004.  The Panel disagrees with Respondent who submitted that the aforementioned application was made on April 6, 2004.  The latter application would seem to have been merely sent to an intermediate on said date, in order to process the application before its filing with the Canadian Intellectual Property Office.     

Concerning the relationship that Respondent’s principal has with Complainant, the Panel concludes that, as a former employee, Respondent knew or should have known Complainant’s mark was in use by Complainant.  This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name. It has indeed been confirmed that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark (See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001)). 

Complainant further argues that Respondent’s <playtile.com> domain name offers similar material products to his.  The Panel concludes that Respondent’s use of a confusingly similar domain name to Complainant’s mark to divert Internet users to Complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website was established in Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003).  Furthermore, in Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000), the Panel found that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods.

The Panel does not believe that Respondent’s business is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) even though Respondent contends that it has rights and legitimate interests in the domain name because the domain name describes its products. Respondent describes its products as “Play Surface Tiles” and not as “Play Tiles.”  As such, the domain name is not being used to describe the content of the site as in Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) where Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods.

The circumstances surrounding the current dispute also differ from the facts presented in SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000).  In the latter decision, the Panel found that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contained two generic terms and was not exclusively associated with its business.  In the current dispute, the domain name is indeed associated with Complainant’s business and the term comprising the domain name is not generic, but representative of the registered trademarks.

The Panel also finds that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent has registered the domain name that incorporates Complainant’s registered marks without the requisite legal authorization to do so. 

In State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000), it was held that unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”  Similarly, in Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000), it was found that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant.

Bad Faith

Complainant avers that Respondent registered the <playtile.com> domain name that incorporates Complainant’s mark with the omission of the letter “s.”  Since the Panel finds that as a former technical employee, Respondent should have been aware of Complainant’s mark, the Panel concludes that Respondent’s registration of the domain name is confusingly similar to Complainant’s mark, and evidences bad faith registration pursuant to Policy ¶ 4(a)(iii).

In addition, Complainant contends that Respondent is using the disputed domain name to offer products similar to Complainant’s products.  The Panel concludes that Respondent has registered and used the domain name to disrupt the business of a competitor pursuant to Policy ¶ 4(b)(iii).

According to Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion given the competitive relationship between Complainant and Respondent.  Also, in Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000), the domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area.

According to the evidence presented, it is clear that Respondent is attempting to attract customers to its website and is creating confusion by offering similar products as the Complainant’s for sale.  Bad faith can thus be inferred (See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000)).

The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <playtile.com> domain name be TRANSFERRED from Respondent to Complainant by Domainbank.com.

Hugues G. Richard, Panelist
Dated: August 17th, 2004


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