Nurtured Family LLC v.
Claim Number: FA0805001195715
Complainant is Nurtured Family LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nuturedfamily.com>, registered with Compana, LLC.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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