Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach
Claim Number: FA0805001191122
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
The Panel finds that the Complainant has failed to establish each of the three elements necessary to prevail.
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.
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).
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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