WTFN, Inc. v. Thomas Nardone
Claim Number: FA0710001100436
PARTIES
Complainant is WTFN, Inc. (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coochyshave.com>, registered with Melbourne IT,
Ltd. d/b/a Internet Names Worldwide.
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 19, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 22, 2007.
On Oct 23, 2007, Melbourne IT, Ltd. confirmed by e-mail to the
National Arbitration Forum that the <coochyshave.com> domain name is
registered with Melbourne IT, Ltd. and
that the Respondent is the current registrant of the name. Melbourne IT,
Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 October 26, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of November 15, 2007 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@coochyshave.com by e-mail.
A timely Response was received on November
14, 2007.
An Additional Submission was filed by Complainant outside the time
limit set by the Forum’s Supplemental Rule 7. A further Additional Submission
was filed by Respondent, also outside the time limit set by the Forum’s Supplemental
Rule 7.
On November 21, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1985 Complainant has made and sold personal care products,
including a shaving preparation under the mark COOCHY, which Complainant
registered with the USPTO on August 24, 2004 in relation to shaving products,
citing first use in commerce on January 1, 1985.
Respondent registered the domain name <coochyshave.com> on May 28, 2004. It is linked to an active
commercial website selling and depicting Complainant’s COOCHY personal shaving
preparations, the home page of which is entitled “Coochy Shave.com home to
coochy cream and coochy shaving products.”
Complainant has established with extrinsic proof that it has rights in
the COOCHY mark through registration in the
Respondent has no rights or legitimate interests in respect of the
domain name. Complainant has no relationship with Respondent and has not given
Respondent permission to register and use the disputed domain name. Respondent had actual and constructive
knowledge of Complainant’s rights when he registered the disputed domain name.
The disputed domain name was registered and is being used in bad faith
under Policy 4(b)(iv) because Respondent intentionally
attempted to attract potential customers from Complainant to his website by
taking advantage of Internet users searching under Complainant’s mark and
diverting them to his commercial website.
See Perot Sys. Corp. v. Perot.net, FA 95312, (Nat. Arb. Forum Aug. 29, 2000). Further, registration of the domain name,
despite knowledge of Complainant’s collective common law and registered rights
in the COOCHY mark, is evidence, in and of itself, of bad faith registration
and use. See Atlantic Paranormal Soc’y & Pilgrim Films & Television, Inc. v.
Xerium Techs., FA575661 (Nat. Arb. Forum November 23, 2005). Finally,
unauthorized use of Complainant’s COOCHY mark to sell Complainant’s products
represents bad faith use under the Policy. See G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508, (Nat. Arb.
Forum Oct. 16, 2002).
B. Respondent
The Panel notes that Complainant, in its Additional Submission (as to
the admissibility of which see later), objects to the Response because it fails
to conform to the basic and fundamentally important requirements of Rules 5(b)(ii), (iii), (vi), (vii) and (viii). In such a situation it
has been held that the appropriate sanction is to accord the Response little
weight as evidence. See CMP Media LLC v.
Auntminnie.com, FA 103045 (Nat. Arb. Forum February 27, 2002). In his
Additional Submission, Respondent says the relevant information was contained
in his covering facsimile.
Without determining whether or not the Response was deficient, the
Panel admits the Response, a summary of which follows.
Respondent is President of PriveCo Inc., “The World’s Most Private
Company,” which, since 1998, has provided a way to avoid embarrassment by
building a website offering answers to embarrassing questions and by selling
products that are embarrassing to buy in person.
The <coochyshave.com>
website does this by offering advice to people who want to know how to remove
their pubic hair (the term “coochy” being well accepted slang for the female
pubic area) and by retailing products for shaving the pubic area.
The disputed domain name was purchased to offer pubic shaving
advice. Initially, the domain name
pointed to another website operated by the company, <www.pubicshaveingadvice.com>.
This situation was raised by Respondent in a friendly conversation at an
industry trade show with a sales representative of Complainant, who requested
that the website be altered so as to recommend Complainant’s products
specifically with less emphasis on competitive offerings and to be similar to
Complainant’s product packaging. Respondent agreed and completed the website in
2004. Since then the website has become #1 when searching for Coochy products
via Google.
Respondent considers Complainant is abusing the arbitration process in
trying to take away what has become a valuable asset through Respondent’s online
marketing, expertise and search engine optimization.
Respondent argues that the cases cited by Complainant are
distinguishable and that the disputed domain name is not the same as the
trademarked term.
Respondent provides as references the <urbandictionary.com> entry
for “coochy”, to show the universal use of that term, and the
<pubicshavingadvice.com> website, to show that PriveCo Inc. is actively
involved in offering pubic shaving advice.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
Complainant’s Additional Submission contains much that
is repetitious of the Complaint. The Panel has had regard to it only insofar as
it objects to the Response (see above) and insofar as it responds to
Respondent’s claim to have discussed his website with an employee of
Complainant, which Complainant could not reasonably have anticipated when it
filed the Complaint.
Complainant says Respondent offers no credible
evidence that Complainant or the unidentified sales representative was aware
that he had registered or was using the disputed domain name in connection with
the <coochyshave.com>
website. In any event, the unidentified
sales representative’s alleged actions were never authorized or approved by
Complainant. Even assuming Complainant, through its representative, approved of
Respondent’s use of a website to sell Complainant’s goods, Complainant never
approved Respondent’s use or registration of the disputed domain name.
Respondent’s Additional Submission contains much that
is repetitious of the Response. The Panel has had regard to it only insofar as
it responds to Complainant’s objection to the Response and insofar as it says,
in relation to the time when Respondent registered the disputed domain name: “While we were aware of the product Coochy, we
were also equally aware of the slang term Coochy…”
FINDINGS
Complainant has established all the
elements entitling it to the relief it seeks.
DISCUSSION
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.” It is generally accepted
that Panelists may visit a respondent’s website in
order to obtain more information about the use of the domain name: see http://www.wipo.int/amc/en/domains/search/overview/index.html#45 and the cases
there cited.
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;
(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.
Paragraph 4(a)(i) of the
Policy embodies no requirement that a complainant’s trademark rights must be
shown to have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005) and the cases
there cited. Whether, on all the evidence, it appears that Complainant had
common law rights in that mark prior to the registration of the disputed domain
name will be considered under the next heading. For the present, it suffices
that Complainant has demonstrated that it has rights in the
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, D2006-0812 (WIPO Sept. 16, 2006). The top level domain “.com” is to be disregarded: Magnum Piering, Inc. v. Mudjackers & Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Although not identical, the disputed domain
name is clearly confusingly similar to Complainant’s COOCHY registered
trademark, the descriptive word “shave” doing nothing to detract from the
distinctiveness of that mark since shaving is the very field in which the mark
is distinctive.
Complainant has established this element of
its case.
When Respondent registered the disputed domain name, Complainant’s mark had not yet been registered. The then-pending trademark registration application did not give rise to trademark rights. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) and Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001).
Complainant claims to have established with
extrinsic proof that it has common law rights in the COOCHY mark through
continuous use in commerce since 1985. No such extrinsic proof has been
provided by Complainant. However, the Panel accepts that Complainant had common
law rights in the COOCHY mark at the time Respondent registered the disputed
domain name because Respondent claims to have been operating in the field of
selling and advising upon the use of products of that kind since 1998, was
aware of the COOCHY product and has not sought to dispute Complainant’s claim
to common law rights.
For the purposes of paragraph 4(a)(ii) of the Policy, Complainant’s formal assertion that it
has not granted Respondent any license or other authorization to use its common
law trademark in relation to the disputed domain name is sufficient for
Complainant to show a prima facie case of absence of rights or
legitimate interests in the disputed domain name on the part of Respondent. The
burden of proof therefore shifts to Respondent.
Respondent does not distinguish
between himself and the company of which he is President. The Panel takes the
same approach.
Paragraph 4(c) of
the Policy enumerates (non-exhaustively) several ways in which Respondent may
demonstrate rights or legitimate interests in the disputed domain name. Paragraphs
4(c)(ii) and (iii) do not apply because Respondent is
not known by the disputed domain name and is using it for commercial gain. Does
paragraph 4(c)(i) of the Policy apply to the facts of this dispute: “before any notice to you of the
dispute, your 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?”
Respondent uses the
website under the disputed domain name to offer for sale Complainant’s goods. Previous panels have held that to be bona fide, such
an offering should meet several minimum requirements: Oki Data Americas,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001); Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, D2004-0481
(WIPO Aug. 20, 2004); Experian Info. Solutions, Inc. v. Credit Research,
Inc., D2002-0095 (WIPO May 7, 2002) and most recently Jack Daniel’s Props., Inc. v.
Imanez/jackdanielsgifts.com, D2007-1443 (WIPO Nov. 20, 2007), namely:
(1) Respondent must
actually be offering the goods or services at issue.
(2) Respondent must use
the site to sell only the trademarked goods; otherwise, it could be using the
trademark to bait Internet users and then switch them to other goods.
(3) The site must
accurately disclose the registrant’s relationship with the trademark owner; it
may not, for example, falsely suggest that it is the trademark owner, or that
the website is the official site, if, in fact, it is only one of many sale
agents.
(4) Respondent must not
try to corner the market in all domain names, thus depriving the trademark
owner of reflecting its own mark in the domain name.
Here Respondent is offering the goods at issue; the site does not offer other goods and there is no evidence that he had tried to corner the market in relevant domain names. Requirements (1), (2) and (4) are therefore met.
As regards to element (3), this Panelist visited the Respondent’s <coochyshave.com> website in order to obtain more information about the use of the domain name. The website contains no disclaimer of affiliation with Complainant. On the “Where to Buy” page the following appears: “Most adult and lingerie retailers stock coochy shave. It is also available online at ShopInPrivate.com [hyperlinked]. We suggest ShopInPrivate.com because they have a long history of stocking Coochy products and we have had much positive feedback about their service.” The homepage of the <shopinprivate.com> website (which this Panelist also visited) carries a footnote: “ShopInPrivate.com is a division of PriveCo, the world's most private company.”
Far from distinguishing Respondent’s website from Complainant, the
statement on the “Where to Buy” page of the <coochyshave.com> website appears to distinguish “we” (whoever
is behind the <coochyshave.com>
website) from “they” (whoever is behind the <shopinprivate.com> website),
whereas both “we” and “they” are in fact the same entity, PriveCo., of which
Respondent is President. The effect of
this false appearance of separateness is to reinforce the impression that an
Internet user seeking Complainant would have that the user had reached
Complainant’s website, generated by the confusing similarity of the disputed domain
name to Complainant’s COOCHY trademark. There is nothing on Respondent’s <coochyshave.com> website to
dispel that impression. The overall result is to give the appearance that it is
Complainant that is making the recommendation that buyers obtain their supplies
of Complainant’s products from <shopinprivate.com>. Accordingly,
Respondent fails to comply with element (3) and the Panel finds that
Respondent’s offering of goods is not bona
fide.
The Panel finds that Respondent has no rights or legitimate interests
in the disputed domain name. Complainant has established this element.
Since Respondent concedes that he was aware of the product Coochy when he registered the disputed domain name, the Panel finds that Respondent had actual knowledge of Complainant’s COOCHY mark at that time. The fact that Respondent was also aware of the slang meaning of that term is irrelevant. In the field of shaving products the term is distinctive of Complainant, as it was at the time Respondent registered the disputed domain name.
This Panel concludes that Respondent has
intentionally attempted to attract, for commercial gain, Internet users to his
website by creating a likelihood of confusion with Complainant’s mark as to the
sponsorship or endorsement of his website. Under Policy 4(b)(iv),
this constitutes evidence of both bad faith registration and bad faith use. The
Panel therefore finds that Respondent registered and is using the disputed
domain name in bad faith.
Complainant has established this element.
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 <coochyshave.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 5, 2007
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