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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toilets.com, Inc. v. Porta-Jon of the Piedmont

Case No. D2008-1043

1. The Parties

Complainant is Toilets.com, Inc., Utica, Michigan, United States of America, internally represented.

Respondent is Porta-Jon of the Piedmont, Gastonia, North Carolina, United States of America, represented by the law firm Womble Carlyle Sandridge & Rice, PLLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <porta-jon.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 11, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 11, 2008, Tucows transmitted by email to the Center its verification response, confirming that the 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”), 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 July 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2008. The Response was filed with the Center on August 1, 2008.

The Center appointed Richard G. Lyon as the sole panelist in this matter on August 13, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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

This case is the first time this Panel has encountered the parties’ agreement on all relevant factual matters. As noted in the following section, the parties disagree on the consequences of those facts under the Policy.

In addition to being a common first name, “john” is a common American slang word for toilet. Both parties in this case or their predecessor companies have made or rented portable toilets since the 1970s.

Complainant is based in Michigan, and it or its predecessor company first used the phrase “porta-john” for its goods and services in 1962. Complainant owns a trademark registered with the United States Patent and Trademark Office (USPTO) in January 1972 for PORTA-JOHN. Complainant’s principal website is “www.porta-john.com”, which it has used continuously since 1997.

Respondent or its predecessor company has conducted a similar business in the state of North Carolina since May 1969, and incorporated its business under the name Porta-jon of the Piedmont, Inc. in North Carolina in 1973. Respondent holds state trademark registrations for PORTA-JON in North Carolina and South Carolina, and has continuously used the hyphenated word “PORTA-JON” in the conduct of its business since that time. Respondent registered the disputed domain name in 1998 and has used it continuously since that date as an active website to promote its business.

Over the years Complainant has sent several cease-and-desist letters to Respondent. The first of these dated December 12, 1973; other letters were sent in 1985, 1995 and 1998. Respondent’s counsel answered each of these letters, stating among other things that its use of the word “PORTA-JON” in its name and business predated Complainant’s enforceable trademark rights.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to a service mark in which Complainant has enforceable rights.

Complainant has rights in PORTA-JOHN by reason of its USPTO-registered mark and its use of that mark in commerce since 1959. The disputed domain name differs from this mark only by the alternate spelling of “john” as “jon.”¹ The deletion of a single letter and the use of an alternate spelling of the common slang word for toilet do not obviate confusion between Complainant’s mark and the disputed domain name. Complainant submits correspondence from several of its customers who were actually confused.

Respondent lacks rights or a legitimate interest in the disputed domain name.

Citing the correspondence between the parties referred to above, Complainant asserts that it has priority over Respondent’s first use of the phrase “PORTA-JON”. Respondent’s use of an intentionally similar name was intended to confuse consumers and has done so on many occasions. Respondent’s “continuous infringing use” of PORTA-JON does not give it a right or legitimate interest under the Policy.

Bad Faith

Respondent registered the disputed domain name in 1998 for services that compete directly with those offered by Complainant. It was aware of Complainant’s mark when it did so. That constitutes registration in bad faith and Respondent’s continuous use of the domain name and its corporate name constitute use in bad faith.

B. Respondent

Respondent contends as follows:

Respondent does not contest Complainant’s trademark rights or the similarity of the disputed domain name with Complainant’s mark.

Respondent has legal rights and a legitimate interest in the disputed domain name.

Respondent’s right to the disputed domain name arises from its corporate name and its use of that name, both of which have extended for almost forty years, and from its two state trademark registrations. Subsequent adoption of its corporate name into the disputed domain name is thus entirely proper. The services offered by Respondent through the disputed domain name are bona fide and have been so since registration in 1998.

Respondent did not register and has not used the disputed domain name in bad faith.

Respondent’s conduct fits into none of the examples of bad faith in paragraph 4(b) of the Policy. On the contrary, it has been known by the word PORTA-JON for many years and has used the disputed domain name for its own business continuously since registration.

6. Discussion and Findings

The requirements of paragraph 4(a)(i) of the Policy are conjunctive, and a complaint fails if any is not met. As the record – indeed the Complaint – demonstrates that beyond any doubt Complainant has not carried its burden under paragraph 4(a)(ii) of the Policy, the Complaint must be denied.

Paragraph 4(c) of the Policy reads in pertinent part:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.

Respondent and its predecessor companies have borne the corporate name of Porta-Jon of the Piedmont, and have conducted an operating business under that name, for more than thirty years prior to commencement of this proceeding. Respondent has used the disputed domain name for this business for more than a decade without complaint. Unless all such use is not bona fide, Respondent lies within the Policy provision quoted above.

The only argument the Panel can fathom, and that only with great difficulty, for such a finding might be that Complainant’s (or its predecessor company’s) cease-and-desist letters from the 1970s are somehow “notice of this dispute” and thus render any subsequent use illegitimate for purposes of paragraph 4(a)(ii). On its face that argument is frivolous. So far as the present record reflects no court or other governmental agency has ever made a finding against Respondent’s or its predecessors’ use of PORTA-JON, or even that Complainant or any of its predecessors (or anyone else) ever asked a court or governmental agency to do so.

This Panel cannot conceive circumstances in which decades of use of a business name, without interruption, can fail to give a registrant a right or legitimate interest under the Policy to incorporate the principal word in that name into a domain name used for purposes of that business. Such circumstances are exactly the reason for the safe harbor in paragraph 4(c)(ii) of the Policy. To the extent Complainant believes its business has been adversely affected by Respondent’s long-time conduct, an action in court for trademark infringement or unfair competition is the appropriate means for seeking redress. A court action, not a Policy proceeding, similarly is the place to determine “priority” and other rights under national trademark laws. With its abbreviated proceedings and considerably lower costs, the Policy may appear to be a quick-and-dirty alternative to an infringement action or, as appears to be true in this case, to a further cease-and-desist letter. This case is a clear abuse of the Policy in just such a manner.

Denial of the Complaint based on facts alleged in the Complaint usually justifies a finding of Reverse Domain Name Hijacking, see Car Advisory Network, Inc. v. Journal Community Publishing Group, Inc., WIPO Case No. D2008-0717; Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598. The Panel unhesitatingly makes such a finding here, where the Complaint is nothing more than harassment.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Dated: August 22, 2008

¹ “Jon,” either on its own or as a shorthand reference to Jonathan, is also a common first name in the United States.