Frey Farms Produce LLC v. SZK.com c/o Michele Dinoia
Claim Number: FA0712001122529
Complainant is Frey Farms Produce, LLC (“Complainant”), represented by Dutro
E. Campbell, of Husch & Eppenberger, LLC, 190 Carondelet
Plaza, Suite 600, Saint Louis, MO 63105-3441. Respondent is SZK.com c/o Michele
Dinoia (“Respondent”), represented by Valerio
Donnini, 4, Via Venezia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <growkids.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2007.
On December 19, 2007, Dotster confirmed by e-mail to the National Arbitration Forum that the <growkids.com> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 December 28,
A timely Response was received and determined to be complete on January 17, 2008.
On January 28, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed P-E H
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has registered the mark GROW KIDS for “distributorship services featuring produces used in fundraising incentive programs for charitable merchandising by schools, churches, athletic teams, clubs and other charitable and non-profit organizations; business consultation services to assist non-profit organizations in planning, advertising, managing, conducting, and sales analysis of fundraising activities,” and has used the mark in commerce since October 1, 2005.
Complainant uses the mark extensively in advertising and promoting its fundraising services and has registered the domain name “growkids” under .org, .us and .biz.
Complainant argues that the disputed domain name is identical and confusingly similar to Complainant’s trademark, and that Respondent has no rights or legitimate interest with respect to <growkids.com>.
Complainant states that Respondent uses the domain name to direct Internet users to a search engine page provided by a “parked domain provider,” directing Internet users to third party commercial websites. Complainant concludes that Respondent is making a profit from the Internet traffic it diverts to these third party websites and, thus, is using the disputed domain name to cause a likelihood of confusion for its own commercial gain.
Complainant further argues that Respondent is a “recidivist cybersquatter,” known from over 20 UDRP proceedings resulting in the cancellation or transfer of the domain names of concern (a number of these UDRP proceedings are listed in the Complaint).
Finally, Complainant states that Respondent registered the disputed domain name for the primary purpose of selling, renting or otherwise transferring the same to Complainant or another third party, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, referring herewith the Appendix C of the Complaint (a printout of e-mail exchange between Complainant and Respondent).
Respondent denies that the domain name in dispute is identical or confusingly similar to a trademark in which Complainant has rights, and points to the fact that <growkids.com> was registered on August 28, 2001, therewith predating Complainant’s trademark rights with several years. Respondent argues that in order to fulfill the requirement of Paragraph 4(a)(i) of the Policy, a complainant must have rights in a trademark which antedates the date when the domain name in issue was registered, and refers to a number of previous UDRP decisions in support of this argument.
The Respondent contends that he has rights or legitimate interests in respect of the disputed domain name, as Respondent is using <growkids.com> “with a set of associated results from a database,” and has created a website offering resources and information on child health and child charity. Respondent is a father of four children and pays very careful attention to all problems related to growing kids.
argues that Complainant has not provided any evidence of facts indicating that the
Respondent knew or should have known of Complainant’s trademark at the time of
Respondent’s registration of the disputed domain name, and points to the fact
that Complainant’s trademark application was filed almost three years after the
registration of <growkids.com>. Further,
Complainant has produced no evidence that it operates or is known in
Respondent denies being a competitor of Complainant and contends that the domain name was not registered primarily for the purpose of selling, renting, or otherwise transferring the same to Complainant or to a competitor of Complainant. Respondent registered the domain name in 2003, and it was only after the second Complainant’s communication that Respondent answered that <growkids.com> was not listed for sale, unless he received a strong offer.
Complainant is the owner of the
Respondent registered the disputed domain name on August 28, 2003.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The relevant part of the disputed domain name is “growkids.” See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Complainant has established rights
in the GROW KIDS trademark in the
The domain name was registered on August 28, 2003. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and other cases, Policy ¶ 4(a)(i) does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Policy ¶ 4(a) (iii), which is considered below.
The Panel concludes that the <growkids.com> domain name is almost identical, and at least confusingly similar, to the registered trademark GROW KIDS, owned by Complainant, and accordingly that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Respondent seems to use the disputed domain name for a search engine website, advertising third-party products related to child health and child charity. Some Panels, including this one, would normally not consider use of a domain name to operate a pay-per-click site to constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), at least not if the said domain name is confusingly similar to a well known trademark.
In the present case,
however, Complainant has not presented any facts or circumstances indicating
that Respondent - residing in
The Panel concludes that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
As stated by Respondent and evident from the facts presented to this Panel, the domain name in dispute was registered more than two years before Complainant first used its trademark GROW KIDS.
As obviously, the said trademark did not exist – not to mention was not used, well known, applied for or registered - in the name of Complainant at the time Respondent registered the domain name, registration in bad faith pursuant to Policy ¶ 4(a)(iii) is impossible. See SPB Software House v. SPB Online Servs., Ltd., FA 1067638 (Nat. Arb. Forum Oct. 17, 2007) (“When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy ¶ 4(a)(iii) because the registrant could not have contemplated the complainant’s non-existent right.”).
Under these circumstances, there is no need to discuss the use of the domain name at issue. The Panel concludes that the disputed domain name was at least not registered in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: February 11, 2008
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