Ivanko Barbell Company v.
Syclone Corporation c/o Adam Auerbach
Claim Number: FA0805001191122
PARTIES
Complainant is Ivanko Barbell Company (“Complainant”), represented by Michael
A. Painter, of Isaacman,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ivanko.com>, registered with Fabulous.com
Pty Ltd.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
John J. Upchurch, Honorable Paul A. Dorf (retired) and Joel M. Grossman
as Panelists.
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 16, 2008.
On May 18, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <ivanko.com> domain name is
registered with Fabulous.com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 May 23, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 12, 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@ivanko.com by e-mail.
A timely Response was received and determined to be complete on June 12, 2008.
Complainant filed a timely Additional Submission on June 17, 2008. Respondent filed a timely Additional
Submission on June 20, 2008.
On June 23, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed John J. Upchurch, Hon. Paul A. Dorf (retired) and
Joel M. Grossman as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The
disputed domain name is identical to or confusingly similar to Complainant’s
IVANCO mark.
2.
Respondent
is no longer authorized to use Complainant’s mark, and thus has no rights and
legitimate interests to maintain the domain name.
3.
Respondent
uses and maintains the domain name in bad faith.
B. Respondent
1. It
is conceded that the disputed domain name is identical to or confusingly similar
to Complainant’s mark.
2.
Respondent
was asked by Complainant to launch a website to market Complainant’s goods, and
did so with Complainant’s permission, cooperation and support, operating the
website under these circumstances for over seven years, when Complainant sought
to revoke its consent.
3.
Complainant
made no reservation or exception to its long standing consent permitting
Respondent’s registration and use of the domain name; and, accordingly, the
same was not registered and used in bad faith.
C. Additional Submissions
1. Complainant
– Respondent’s use and ownership of the domain name was terminable upon request
of the Complainant; the distinctiveness of the IVANCO trademark has been gained
over use for many years; and Respondent’s use has resulted in numerous examples
of actual confusion.
2.
Respondent –
FINDINGS
The Panel finds that the Complainant has
failed to establish each of the three elements necessary to prevail.
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.
Complainant
asserts rights in the IVANKO mark based on its registration of the mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,201,283
issued July 13, 1982). The Panel
determines that this trademark registration adequately conveys rights in the
mark to Complainant for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <ivanko.com> domain name is identical to Complainant’s IVANKO mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain “.com.” See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).
Respondent admits
that Complainant has a trademark registration for the IVANKO mark. Respondent makes no other relevant arguments
with regard to Policy Policy ¶ 4(a)(i).
Complainant admits that Respondent
was authorized to register the <ivanko.com>
domain name, incorporating Complainant’s mark, to sell Complainant’s goods, at
the time at which the disputed domain name was registered. Accordingly, Respondent certainly at one time
had rights or legitimate interests in the domain name. However, it is unclear whether Respondent
still has such rights in view of the fact that Complainant has terminated
Respondent as an approved distributor as of May 8, 2008. The
panel need not reach a decision on this point given the lack of bad faith
registration, as discussed immediately below.
The Panel finds that Complainant failed to meet its 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) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Policy ¶ 4(a)(iii) requires that
the disputed domain name have been both registered and used in bad faith in order to show that Respondent violated
this portion of the Policy. The Panel
determines that as Respondent was authorized by Complainant to register the
disputed domain name, bad faith registration can not be shown, and thus,
Complainant has failed to satisfy Policy ¶ 4(a)(iii). See Hewlett Packard Co. v. Napier, FA
94368 (Nat. Arb. Forum Apr. 28, 2000) (finding that the complainant failed to
establish that the respondent registered the domain name <openview.org>
in bad faith where the complainant acquiesced to the
respondent’s registration and use of the domain name); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO
Jan. 5, 2001) (finding that a respondent did not register a disputed domain
name in bad faith where it “registered the Domain Name with the full consent
and knowledge of Complainant” and therefore “did not have the requisite bad
faith when he registered the Domain Name, which is an express requirement of
the Policy”).
The Panel finds that Respondent’s use of a disclaimer on the website that resolves from the <ivanko.com> domain name indicates that the disputed domain name was not used in bad faith under Policy ¶ 4(a)(iii). See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where the respondent conspicuously informs viewers that his site is not affiliated with the complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website); see also Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith when the respondent put a very visible disclaimer on its website located at <catparts.com> , because the disclaimer eliminated any possibility that the respondent was attempting to imply an affiliation with the complainant and the complainant’s CATERPILLAR mark).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Chairman
Hon.
Paul A. Dorf (retired), Panelist
Joel M. Grossman, Panelist
Dated: July 22, 2008
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