Custom Bilt Metals v. Conquest Consulting

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Custom Bilt Metals v. Conquest Consulting

Case No. D2004-0023

1. The Parties

The Complainant is Custom Bilt Metals, South El Monte, California, United States of America, represented by Fulwider Patton Lee & Utecht, LLP, United States of America.

The Respondent is Conquest Consulting, Bonney Lake, Washington State, United States of America, represented by Davis Wright Tremaine LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lasttimeroofing.com> is registered with Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2004. On January 14, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On January 14, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

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 January 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2004. The Response was filed with the Center on February 10, 2004.

The Center appointed David H. Bernstein as the sole panelist in this matter on February 23, 2004. 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.

On February 28, 2004, Complainant filed an "Additional Submission" in reply to the Response. On March 1, 2004, the Respondent filed an "Objection to Complainant’s Additional Submission," which asked the Panel to either disregard Complainant’s Additional Submission or, in the alternative, to provide Respondent with the opportunity to file a sur-reply. The Panel issued an order on March 5, 2004, in which it accepted Section II(A) of Complainant’s Additional Submission, in order to allow Complainant to rebut an unanticipated defense by Respondent. The Panel also decided to allow Respondent to file a sur-reply to the issues raised in Section II(A) of the Complainant’s Additional Submission, which was filed on March 22, 2004. The Panel reasoned as follows:

Rule 12 of the Rules unambiguously provides that only the Panel may request further submissions: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." There is no provision in the Rules for a party to file an additional submission without leave of the Panel. Nevertheless, without receiving a request from the Panel or seeking leave from the Panel to file a further statement, Complainant submitted its Proposed Supplemental Submission.

Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings: one that calls only for a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corp. v. CondeNet, Inc., Case No. FA#0002000093547 (NAF March 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it cannot rule on the record submitted.

If a Party wishes to submit a further statement, the better practice under

the Rules is to first seek consent from the Panel, with an explanation of why

a further statement is warranted. Plaza Operating Partners, Ltd. v. Pop Data

Technologies, Inc. and Joseph Pillus, WIPO

Case No. D2000-0166 (June 1, 2000). Appropriate reasons may include

the existence of new, pertinent facts that did not arise until after the submission

of the Complaint, Top Driver, Inc. v. Benefits Benifits, WIPO

Case No. D2002-0972 (January 7, 2003), the desire to bring new,

relevant legal authority to the attention of the Panel, Pet Warehouse v.

Pets.Com, Inc., WIPO Case No. D2000-0105

(April 13, 2000), or the need to rebut factual arguments that could

not have been anticipated in the Complaint, Radan Corp. v. Rabazzini Winery,

WIPO Case No. D2003-0353 (July 28, 2003).

Conversely, a mere longing to reargue the same issues already submitted is not

a valid reason for additional submissions. World Wrestling Federation Entertainment,

Inc. v. Ringside Collectibles, WIPO Case

No. D2000-1306 (January 24, 2001). The advantage of seeking leave

in the first instance is that the Panel would be in a position quickly to rule

on the request and, if it determines that a further statement is warranted,

set a schedule that is fair to both parties and provides each party with an

opportunity to supplement the record. This procedure also would save the Parties

the expense of preparing further statements that the Panel decides not to accept.

See AmeriCares Foundation, Inc. v. Ewing, WIPO

Case No. D2003-0347 (June 26, 2003) (saving parties expense of

unnecessary supplemental briefing because request for leave to file supplemental

submissions denied).

In this case, only part of Complainant’s Additional Submission is an appropriate reply. The parties in this case enjoyed a former business relationship. Complainant asserts that Respondent registered a domain name containing its trademark without permission; Respondent claims that it was wholly unaware of Complainant’s mark at the time it coincidentally registered the domain name. To rebut that defense, Complainant seeks in Section II(A) of its Additional Submission (and associated exhibits) to prove that Respondent had actual or constructive notice of Complainant’s mark prior to its registration of the domain name. Because that defense was a surprise to Complainant (given the parties’ past dealings), Complainant did not anticipate at the time of the Complaint that this would be disputed. Accordingly, Section II(A) of the Additional Submission will be accepted.

The remainder of the Additional Submission is not accepted. The second section, Section II(B), merely reargues facts and conclusions flowing from the Complainant’s trademark registrations, which already were discussed in the Complaint. The third section seeks to reargue facts concerning the timing of the domain name registration, which also were adequately addressed in the Complaint. And the final section addresses the question of whether Respondent’s request for $46,000 can satisfy the Policy’s provision concerning bad faith offers to sell a domain name to the trademark owner for amounts in excess of the out of pocket expenses incurred in connection with the domain name – an issue on which the record was already sufficiently clear.

Having agreed to accept part of Complainant’s Additional Submission, the Panel

must next decide whether to grant Respondent’s alternative request for leave

to file a sur-reply. Because Rule 5 contemplates that a respondent will have

the right to respond to a complaint, and because Rule 10(b) directs the Panel

to treat the parties with equality, the Panel concludes that it is appropriate

to grant Respondent’s request. Pacific Fence & Wire Co. v. Pacific Fence

and Jim Paradise, WIPO Case No. D2001-0237

(June 11, 2001). Respondent may thus submit a sur-reply, limited solely

to the arguments raised in section II(A) of the Additional Submission, on or

before March 22, 2004. To help expedite the Panel’s consideration

of the sur-reply, if any, the Panel requests that Respondent submit its entire

sur-reply electronically, include scanned copies of any exhibits. Of course,

the Respondent should submit a confirming hard copy to the Center, as required

by the Rules, and must include the certification of Rule 5(a)(viii).

4. Factual Background

Complainant Custom Bilt Metals is in the business of manufacturing and distributing building materials, including a line of metal roofing products, for commercial and residential use throughout the United States. The roofing products are available in aluminum, steel and copper, and come in a variety of styles (tiles, shake, shingles, and sheeting). Complainant has sold these products under the LAST TIME METAL ROOFING mark since 1997.

Complainant owns a United States trademark registration for the mark LAST TIME METAL ROOFING, Reg. No. 2,174,603, in connection with metal roofing materials, which has been registered since 1998. Complainant also owns a United States trademark registration for the mark CUSTOM-BILT METALS LAST TIME METAL BUILDING PRODUCTS, Reg. No. 2,185,665, in connection with these and other building products.

Respondent Conquest Consulting is in the business of selling roofing systems to residential clients in Washington State and other parts of the United States. Respondent’s owner, Sean Sanborn, purchased metal roofing systems from Complainant starting in 1999, while he was with another company. Mr. Sanborn continued to purchase these products after he founded Conquest Consulting. On November 15, 2002, Respondent suspended its purchases of metal roofing products from Complainant.

On November 14, 2002, one day before it stopped doing business with the Complainant, Respondent registered the <lasttimeroofing.com> domain name with Network Solutions, Inc.

5. Parties’ Contentions

A. Complainant

Complainant asserts that Respondent’s registration and use of the domain name violates Complainant’s rights in the registered mark LAST TIME METAL ROOFING. Complainant alleges that <lasttimeroofing.com> is confusingly similar and nearly identical to its LAST TIME METAL ROOFING mark, and that the only difference between the mark and the domain name is the addition of the word "metal."

Complainant alleges that Respondent has no legitimate interest in the domain name because Respondent has no trademark rights in or license to use the LAST TIME mark. Complainant states that Respondent Conquest Consulting has never been commonly known or associated in any manner with the contested domain name.

Complainant further alleges that Respondent had both constructive and actual

knowledge of Complainant’s LAST TIME METAL ROOFING mark. First, Complainant

points out that the Trademark Office issued the registration for this mark on

July 21, 1998, more than four years prior to Respondent’s registration

of the subject domain name on November 14, 2002. Second, Complainant

contends that it sent Respondent product catalogs using the LAST TIME mark in

connection with its roofing products, and that Respondent ordered these products

from Complainant over an extended period of time.

Finally, Complainant contends that the domain name has been registered in bad

faith. In support of this assertion, Complainant points out that the domain

name was registered one day before Respondent closed its account with Complainant.

The timing of the registration, Complainant alleges, was out of maliciousness

and in order to misleadingly divert consumers from Complainant. Complainant

also argues that Respondent’s subsequent offer to sell the domain name to Complainant

for $46,000 provides a strong inference that Respondent registered the Domain

Name in bad faith.

B. Respondent

In its defense, Respondent alleges that its registration and use of the domain

name is neither identical or confusingly similar to Complainant’s mark. Respondent

argues that, to the extent they exist, Complainant’s trademark rights are limited

to the exact word marks and accompanying designs used in its Trademark Office

registrations. Respondent also argues that Complainant does not own any trademark

rights in the mark "Last Time" because it is descriptive of the nature

of the lifetime warranty Complainant offers with its roofing products.

Respondent further contends that Complainant’s mark is weak. Respondent points

to five federal and state trademark registrations by third parties in the United

States, to demonstrate the weakness of Complainant’s mark: ROOF YOUR HOME FOR

THE LAST TIME!, THE LAST ROOF YOU’LL EVER NEED!, LIFETIME ROOFING, LIFETIME

METAL ROOFING, and ROOFLAST. Respondent adds that Complainant has presented

no evidence of actual consumer confusion arising from Respondent’s use of the

domain name.

Respondent asserts that it has a legitimate interest in the domain name, <lasttimeroofing.com>,

which it uses in conjunction with its roof installation services. Respondent

claims it had no knowledge at the time it registered the domain name that Complainant

ever used the words "Last Time" or that Complainant had trademark

rights in those words.

Finally, Respondent contends that it did not register the domain name in bad

faith. It asserts that the timing of the registration on November 15, 2002,

was related to a dispute with its former marketing associate who allegedly owned

the rights to Respondent’s previous domain name, <lifetimeroof.com>. This

disagreement allegedly prompted Respondent to seek a new domain name for its

business, Conquest Consulting. As for the $46,000 offer, Respondent acknowledges

that it offered to sell the domain name to Complainant for this price. It claims,

however, that the price is an accurate reflection of the website development

costs and damages associated with delays and service problems by Complainant

over the course of their business relationship.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain

name, a Complainant must prove each of the following:

(i) 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;

(ii) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) that the Respondent has registered and has been using the domain name

in bad faith.

A. The Domain Name is Confusingly Similar to Complainant’s Mark

Respondent claims that Complainant lacks trademark rights because the words

"Last Time" are descriptive of the roofing products that Complainant

offers. Complainant’s federal trademark registrations for the mark, however,

are prima facie evidence of the marks’ validity. EAuto, L.L.C. v. Triple

S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO

Case No. D2000-0047 (March 24, 2000). Only the words "Metal

Roofing" were disclaimed in the registrations; the words "Last Time"

were recognized as sufficiently distinctive by the Trademark Office to support

registration. Given the nature of these UDRP proceedings, a Panel should not

overturn that presumption of validity (which, by necessity, includes the Trademark’s

Office conclusion at the time of the registration that the mark was neither

generic nor merely descriptive, but rather was distinctive) absent compelling

evidence. Id. Respondent has come forward with no such evidence.

Nor are the third party uses cited by Respondent sufficiently similar to Complainant’s

mark to support Respondent’s position that the mark is merely generic. Of the

five examples provided, only one even contains the words "Last Time"

(ROOF YOUR HOME FOR THE LAST TIME!), and that slogan is sufficiently different

from Complainant’s LAST TME METAL ROOFING mark that both can coexist.

Respondent’s claim that the mark is merely descriptive is further negated by

its acknowledgement that, for a period of time, it placed on its own website

the mark "Last Time Roof" used in connection with the sale of roofing

products, next to which it added the common-law "TM" symbol. This

recognition by Respondent that LAST TIME ROOF can function as a mark when it

uses the mark negates Respondent’s claim that LAST TIME METAL ROOFING cannot

function as a mark when used by Complainant.

The Panel thus concludes that Complainant has shown that it owns trademark

rights in the mark LAST TIME METAL ROOFING.

Respondent next argues that the domain name is not confusingly similar to Complainant’s

LAST TIME METAL ROOFING mark. That position cannot be sustained. The domain

name reproduces exactly the distinctive portion of the mark—LAST TIME. See

Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662 (September 19, 2000). The only change is in the purely

descriptive portion (the part disclaimed in the trademark registration)—ROOFING

versus METAL ROOFING. Differences in the descriptive portion of the domain name

do not change the overall impression of the domain name, and thus <lasttimeroofing.com>

is confusingly similar to the trademark LAST TIME METAL ROOFING. See

Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO

Case No. D2000-1525 (January 29, 2001).

B. Respondent Has No Legitimate Interest In the Domain Name

Respondent argues that it registered the domain name as a descriptive mark

for its own business, with no knowledge that Complainant used a similar mark,

and therefore that it has a legitimate interest in this domain name. In support

of this argument, Respondent asserts that it had no idea when it registered

the domain name that Complainant was using the mark LAST TIME in connection

with the sale of roofing products. As noted above, Complainant disputes Respondent’s

claim that it lacked knowledge of Complainant’s trademark rights.

Hotly contested factual disputes like this one create unique problems for Panels

in UDRP disputes. In the absence of discovery and live testimony, it can be

difficult for a Panel to evaluate such disputes and make the necessary credibility

determinations. Nevertheless, it is the Panel’s obligation to make such findings

as it can on the record as submitted, bearing in mind that Complainant bears

the burden of proving its case by a preponderance of the evidence. Bootie

Brewing Company v. Deanna D. Ward and Grabebottie Inc., WIPO

Case No. D2003-0185 (May 28, 2003); Tribeca Film Center, Inc. v. Lorenzo

Brusasco-Mackenzie, WIPO Case No. D2000-1772

(April 10, 2001).

Here, it is simply not credible that Respondent was unaware of Complainant’s

use of the LAST TIME mark. For a period of three years, from 1999 to 2002, Respondent’s

principal purchased Complainant’s roofing products (at first individually and

later through Conquest Consulting). At one point during their business relationship,

Respondent completed a credit application that bore Complainant’s federally-registered

trademark, CUSTOM-BILT METALS LAST TIME METAL BUILDING PRODUCTS. The distinguishing

words in this mark, LAST TIME, appear in large, all-cap, bold letters in the

center of the design, and were displayed at the upper-right corner of the application.

Complainant also has established that it sent Respondent catalogs with descriptions

of Complainant’s metal roofing products, which contained several uses of the

LAST TIME mark. This mark appears on numerous pages of these catalogs, in both

design form at the top and bottom of the pages, and in text descriptions of

the products. The uses of the mark in the text are in bold, all-capped letters,

and include: "LAST TIME® Metal Building Products", "LAST-TIME®

Metal Roofs" and "LAST-TIME® Metal Roofing". Respondent acknowledges

that it may have received these catalogs at one time, but claims to have discarded

the black binder in which the catalogs may have been sent. Even if that is true,

it is not plausible that Respondent never knew that Complainant used the mark

LAST TIME. It also strains credibility that Respondent coincidentally chose

this mark and registered it in a domain name without any thought of Complainant’s

rights on the eve of Respondent’s termination of its relationship with Complainant.

Given the long relationship of the parties and the evidence produced by Complainant,

this Panel thus finds, by a preponderance of the evidence on the limited record

presented, that Respondent had actual notice of Complainant’s use of the LAST

TIME mark in connection with roofing products.

C. Respondent Registered and Used the Domain Name in Bad Faith

As noted above, Respondent registered the domain name only after his business

relationship with Complainant fell apart. One day before sending Complainant

a letter terminating their supplier relationship, Respondent registered the

domain name. These actions, coupled with the Panel’s finding that Respondent

probably was aware of Complainant’s trademark rights, are alone sufficient to

establish bad faith. R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning

Corporation d/b/a Quaife America v. Bill Luton, WIPO

Case No. D2000-1201 (November 14, 2000).

Respondent’s demand that Complainant pay $46,000 for transfer of the domain

name also supports the Panel’s finding of bad faith. Respondent tries to claim

protection in Section 4(b)(i) of the Policy, which states that it is not bad

faith to offer to transfer a domain name in return for payment of the "documented

out-of-pocket costs directly related to the domain name." Not only has

Respondent failed to offer any documents supporting this figure, but also, Respondent

essentially concedes that this figure exceeds its "out-of-pocket costs

directly related to the domain name" when it admits that it was trying

to obtain reimbursement for the costs of developing its website, and for damages

allegedly related to poor customer service by Complainant. Website development

costs (given that most of the content can be transferred to a website using

a different domain name) and damages arising from the parties’ business dispute

cannot fairly be characterized as costs "directly related to the domain

name."

These factors, taken together, are sufficient to establish that Respondent

registered 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, <lasttimeroofing.com>

be transferred to the Complainant.

David H. Bernstein

Sole Panelist

Dated April 6, 2004