Nurtured Family LLC v.
Claim Number: FA0805001195715
PARTIES
Complainant is Nurtured Family LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nuturedfamily.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 29, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 3, 2008.
On May 29, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <nuturedfamily.com> 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 June 4, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 24, 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@nuturedfamily.com by e-mail.
A timely Response was received and determined to be complete on June 24, 2008.
On July 2, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that:
§
NURTURED FAMILY is a trademark registered on April
3, 2007, Registration Number 3,224,687.
§
The
website <nurturedfamily.com> is
used for the purpose of providing tools and products which promote growth of
stronger families, including, but not limited to, natural baby products, cloth
diapering, baby wearing, and nursing and maternity products.
§
Respondent’s
domain name is confusingly similar to the Complainant’s domain name, misspelled
by only one letter.
§
Respondent
is using <nuturedfamily.com>
to profit from the mistyping of our website, <nurturedfamily.com>, which
has been in use by our company since inception in
2003.
§
Links on
Respondent’s domain name are similar, and in some instances the same as the
Complainant’s product lines.
§
Respondent has no legitimate interest in respect to
the domain name <nuturedfamily.com> because it is not
offering any goods or services, only links to other sites for the sole purpose
of generating revenue from pay-per-click advertisements.
§
Respondent
is misleading consumers away from Complainant’s website, by displaying product
categories which are similar, and in some instances the same as the
Complainant’s product categories.
§
The domain
name <nuturedfamily.com>
has been registered and used in bad faith because the Respondent is profiting
from the mistyping of Complainant’s website, a practice known as typosquatting,
and is using the website <nuturedfamily.com> to generate
revenue through pay-per-click advertisements, thus diverting Complainant’s
customers to other websites including competitors.
§
Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website.
B. Respondent
By its Response, the Respondent
alleges that:
§
Complainant
has failed to provide any proof for the first element of the Policy, as the
disputed domain name registration predated the Complainant’s trademark registration
with several years before.
§
Complainant
has started to use the disputed domain name first on February 5, 2004.
§
Complainant’s
trademark is made up of generic descriptive terms.
§
Complaint
fails to prove that Respondent has no rights or legitimate interest in the
name. As it does not provide any evidence in support the claim that website
visitors are confused when arriving at the disputed domain.
§
Respondent
contracts with Hitfarm which connects
its own websites to the domain name to offer a legitimate business of
targeted advertising searches that are legal everywhere in the world and are
actually undertaken in connection with industry leaders Google and Yahoo.
§
Respondent
has no control over what terms advertisers bid on at Google or Yahoo and what
terms appear on its website.
§
Complainant
has not demonstrated that the disputed domain name was registered and is being
used in bad faith.
§
There is
no discussion whatsoever in the Complaint that Respondent was aware of
Complainant at the time the disputed domain name was registered and Respondent
had no knowledge of Complainant at that time.
§
Respondent
registered the disputed domain name because it believed it contained a
descriptive phrase to which no party had exclusive rights.
§
Respondent
is the registrant of thousands of domain names, which consist of electronically
registered generic words and descriptive phrase,
§
Respondent did not register the disputed
domain name to sell to Complainant or any other party nor has there been any
such allegation by Complainant.
FINDINGS
The disputed domain name registration
predates the registration of the Complainant’s trademark NURTURED FAMILY and the Panel finds no element of
bad faith registration of the disputed domain name by the Respondent. The
Complainant failed to bring any evidence to prove that the Respondent was
clearly aware when it registered the disputed domain name of the intention of
the Complainant to register its domain name as a trademark.
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 NURTURED FAMILY
mark through its trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the mark (Reg. No. 3,224,687 issued April 3,
2007, filed March 22, 2006).
On the other side, the Panel is aware that the Complainant did not apply
for a trademark registration for the NURTURED FAMILY mark until March 22, 2006
and thus the Complainant’s
establishment of rights in the NURTURED FAMILY mark does not predate the disputed domain name registered
on December 27, 2004.
As the
UDRP makes no specific reference to the date of which the owner of the trade or
service mark acquired rights, the registration of a domain name before a
Complainant acquires trademark rights in a name does not prevent a finding of
identity or confusing similarity.
The
registration time of the trademark in relation to which the disputed domain
name registration is discussed, has obvious more impact on the analyzing of the
complaint for the purposes of Policy ¶ 4(a)(iii).
Therefore, the Panel finds that this trademark
registration adequately conveys rights in the mark for the purposes of Policy ¶
4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)
(“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”); see also
The Panel also
determines that the disputed
domain name is confusingly similar to Complainant’s NURTURED FAMILY mark, as
Complainant contends that the disputed domain name contains Complainant’s mark,
absent one letter “r” from the mark. The
Panel also considers that the addition of the generic top-level domain “.com”
is irrelevant for the purposes of Policy ¶ 4(a)(i) as
all domain names must contain a top-level domain.
Concluding for the purposes of Policy ¶ 4(a)(i), the Panel
finds that the disputed domain name is confusingly similar under Policy ¶
4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder &
Complainant contends that Respondent is using
the disputed domain name to generate click-through fees for its own commercial
benefit by displaying a website that hosts hyperlinks for various third-party
websites, some of which are in direct competition with Complainant. The Panel determines that such use is neither
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate or
noncommercial fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scot.
Group plc v. Demand Domains, FA 714952
(Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of
a commercial web directory displaying various links to third-party websites was
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent
presumably earned “click-through” fees for each consumer it redirected to other
websites); see also Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing
websites does not represent a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
For the purpose of the Policy ¶ 4(a)(iii) the
disputed domain name should be registered and used in bad faith.
As mentioned above the
Complainant’s trademark registration does not predate the registration of the
disputed domain name. If this situation
does not does not prevent a finding under the Policy ¶ 4(a)(i) it
certainly makes more difficult to find that the registration of the domain name was in bad faith because the
registrant could not have contemplated the complainant’s non-existent right.
The Panel is aware that in
certain situations, such bad faith registration of the disputed domain name may
be found especially when the Respondent is clearly aware of the Complainant,
and it is clear that the aim of the registration was to take advantage of the
confusion between the domain name and any potential Complainant rights.
Nevertheless,
in this case the Complainant has not met the burden of proof that the Respondent
registered the disputed domain name with a clear aim to take advantage of the
confusion between the domain name and any potential Complainant rights. According to the Respondent contentions, which
were not denied by the Complainant, the Respondent registered the disputed
domain name only several months after the registration of the <nurturedfamily.com>
Complainant’s domain name and with almost
two years before the Complainant applied for the registration of its
trademark NURTURED FAMILY.
In the circumstances of this case
and on the record the Panel has before it, the Panel concludes that the
disputed domain name had not been registered in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Beatrice Onica Jarka, Panelist
Dated: July 15, 2008
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