National Arbitration Forum

 

DECISION

 

Kay Hill, Ltd. v. Texas International Property Associates- NA NA

Claim Number: FA0805001190984

 

PARTIES

Complainant is Kay Hill, Ltd. (“Complainant”), represented by Ali A. Akhtar, of Schaffer & Brustkern, L.L.P., Texas, USA.  Respondent is Texas International Property Associates- NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tabootoys.net>, registered with Compana, LLC.

 

PANEL

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.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2008.

 

On May 22, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <tabootoys.net> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 May 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2008 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@tabootoys.net by e-mail.

 

A timely Response was received and determined to be complete on June 18, 2008.

 

On June 25, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name <tabootoys.net> be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Kay Hill, Ltd., of Austin, Texas (“Complainant”) seeks the transfer of the domain name <tabootoys.net> from Respondent, Texas International Property Associates-NA NA, of Dallas, Texas (“Respondent”).  Complainant is the owner of the registered service mark for TABUTOYS.COM.  The service mark is registered to Complainant by the United States Patent and Trademark Office (‘USPTO”) in connection with its computerized online retail store services in the field of adult toys, clothing, books and videos, under U.S. Reg. No. 3,260,528.  The Application was filed on April 6, 2006, registered on July 10, 2007, and has a claimed date of first use in commerce of June 30, 2003.  Complainant contends that Respondent’s domain name <tabootoys.net> is confusingly similar to Complainant’s registered service mark TABUTOYS.COM, and that the two names differ audibly only in their three letter extension.  Complainant contends that Respondent registered its domain on or about January 31, 2006.  Complainant contends that Respondent’s website is for the same general goods or services as Complainant.  Complainant contends that Respondent’s website contains nothing but listings to other websites offering adult toys and clothing.  Complainant contends that Respondent is benefiting from passive advertising or referral income derived from click-generated traffic which is not a bona fide offering of goods or services.  Complainant further contends that Respondent is not commonly known in any manner by its domain name <tabootoys.net> and that Complainant is a notorious “typosquatter” that registers domains in bulk that are confusingly similar to other trademarks, service marks and trade names.  Complainant contends that Respondent has been the named Respondent in at least 72 domain dispute decisions by the National Arbitration Forum which have resulted in 64 transfers or cancellations of the offending domain names, and 45 similar decisions recorded by the World Intellectual Property Organization.  Complainant contends that Respondent has no rights or commercial interests in the domain name <tabootoys.net>, has demonstrated no intent to use the domain name in connection with any bona fide offering of goods or services, and registered the domain name almost three years after Complainant’s first use in commerce.  Complainant further contends that Respondent was unresponsive to Complainant’s cease-and-desist letters.

 

B. Respondent

Respondent contends that Complainant has no enforceable rights under the Policy.  Respondent contends that the different spelling between the service mark application TABUTOYS.COM with a “u” and the domain name registration <tabootoys.net>, with two “o’s” is a critical linguistic distinction with respect to marks that are used on the Internet.  Respondent also points out that it registered the domain name on January 31, 2006, prior to Complainant’s filing its service mark application, and prior to federal registration of Complainant’s mark.  Respondent contends that its click-through site is a bona fide offering of goods and services.  Respondent contends that its registration and use was not in bad faith because Respondent registered the disputed domain name believing it contained a descriptive term to which no party had exclusive rights.  Respondent contends that at the time of registration of the domain name, a search of the USPTO records would have revealed no federal registration for “TABUTOYS” nor would have a Google search for the same have returned any indication of Complainant’s rights.  Complainant admits that it has been involved in a number of UDRP decisions resulting in transfers, however, it notes that Complainant has failed to address the fact that Respondent prevailed in at least five UDRP decisions.

 

FINDINGS

The panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant currently has rights, however, Complainant has only established sufficient rights dating back to its service mark application filing on April 6, 2006, and thus, Respondent’s prior registration of the domain name on January 31, 2006 does not constitute bad faith registration and use sufficient to warrant transfer under the UDRP.

 

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.”

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has rights in the TABUTOYS.COM mark (Reg. No. 3,260,528, issued July 10, 2007, filed April 6, 2006), which is registered with the United States Patent and Trademark Office (“USPTO”).  Complainant has rights in the mark under Policy ¶ 4(a)(i) due to this registration of the mark with the USPTO.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

In an attempt to achieve UDRP standing, Complainant has asserted its common law rights in the TABUTOYS.COM mark through the “first use in commerce” date listed on its United States Patent and Trademark Office (“USPTO”) trademark registration.  This first use in commerce date is listed as June 30, 2003, which predates Respondent’s registration of the disputed domain name on January 31, 2006.  Complainant has not asserted any other evidence supporting potential common law rights.

 

Without further proof, the relevant date of rights in a registered mark do not commence with the date of first use or first use in commerce, but rather with the trademark filing date.  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

 

However, Complainant does not need to assert registration of a mark with a regulatory body such as the USPTO in order to achieve UDRP standing.  Complainant may assert common law rights in the mark under Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Bad Faith Registration and Use

 

An analysis of the second UDRP factor is unnecessary in light of Complainant’s failure to establish bad faith registration and use of the domain name.  Complainant contends that it has marketed its adult products under the mark since June 30, 2003, which predates Respondent’s registration of the disputed domain name on January 30, 2006.  However, Complainant asserts no additional evidence in support of its claim for common law rights.

 

In order to achieve sufficient common law rights in a mark, a complainant must set forth evidence that the mark achieved sufficient secondary meaning that predates the disputed domain name’s registration.  A mere recital of a first date of use in commerce is insufficient.  In order to achieve secondary meaning under the UDRP, the panel in Tomlinson Affiliate Serv. Inc. v. Tex. Int’l Prop. Assocs., FA 1138312 (Nat. Arb. Forum Mar. 11, 2008) cited the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” which states that  “a complainant ‘must show that the name has become a distinctive identifier associated with the complainant of its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.’”

 

Sufficient common law rights may be found for a complainant based on a first use in commerce date listed on the USPTO trademark registration that predated the respondent’s registration of the disputed domain name, where there is some evidence to support the assertions.  In OpenTable, Inc. v. Web Brands, Inc., FA 1163837 (Nat. Arb. Forum Apr. 28, 2008), the Panel “accept[ed] also that the [c]omplainant has prior rights in the OPEN TABLE trademarks [predating the respondent’s domain name registration], as the first use in commerce of these marks is 1999 as provided in the USPTO registrations.”  However, in that case the complainant also provided documentary evidence to back up its assertions of a first date use in commerce: “[i]n its additional submissions, the [c]omplainant considers that: … the [c]omplainant established trademark rights in 1999, well before [r]espondent sought registration of the <opentables.com> domain name on April 17, 2002, as it is proven by variety of press releases and other information which refer to the Complainant’s trade name ‘Open Table Inc.’”

 

In Taylor v. Avenstar, FA 1169965 (Nat. Arb. Forum May 7, 2008), the panel found that “[c]omplainants also allege that … they have marketed their products under [marks since August 1, 2004 and February 25, 2005]….  Both of these dates correspond to the first dates of use in commerce on each mark’s respective USPTO registration.  Complainants argue that they have spent over $150,000 in advertising and marketing these products lines, and offer as evidence numerous media articles documenting Complainants’ products as early as December 2004.”  The Taylor panel subsequently found sufficient common law rights for the complainant in that case.  See also Mindware Holdings, Inc. v. Epium Plc, FA 1049533 (Nat. Arb. Forum Sept. 12, 2007) (finding that the complainant set forth sufficient evidence that its mark was used “continuously and extensively since at least 1991 in connection with the promotion and sale of various puzzles and games, as well as other child activities and toys,” and that such supported common law rights dating to the first use in commerce listed on the USPTO registration); see also usDocuments, Inc. v. Flexible Designs, Inc. D2003-0583 (WIPO Sept. 17, 2003) (finding no common law rights; and noting that “[c]omplainant’s trademark application asserts usage of the mark only since July 16, 2003…. Complainant has wholly failed to offer any proof that the domain name at issue has acquired secondary meaning.”).

 

In this case, Complainant has not come forth with any additional evidence supporting the first use in commerce date listed in its registration and alleged in its Complaint sufficient to establish secondary meaning under the UDRP.  Thus Complainant has failed to allege that its mark achieved secondary meaning sufficient to achieve common law rights prior to April 6, 2006, under Policy ¶ 4(a)(i).

 

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).

 

Respondent alleges that the registration of the disputed domain name occurred prior to Complainant’s application for trademark rights, and that as such Respondent could not have registered the disputed domain name in bad faith.  Complainant has failed to establish common law rights in the mark prior to the date of its Application, April 6, 2006, thus Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).

 

DECISION

Having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <tabootoys.net> domain name NOT BE TRANSFERRED from the Respondent to the Complainant.

 

 

 

David P. Miranda, Esq., Panelist
Dated: July 9, 2008

 

 

 

 

 

 

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