WTFN, Inc. v. Thomas Nardone
Claim Number: FA0710001100436
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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).
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…”
Complainant has established all the elements entitling it to the relief it seeks.
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.
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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