Recovery Unlimited, Inc. v. Mark A. Hayward
Claim Number: FA0806001210539
Complainant is Recovery Unlimited, Inc. (“Complainant”), represented by Jordan S. Weinstein, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2008.
On June 23, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names are registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 July 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
On July 21, 2008, the National Arbitration Forum granted, pursuant to Respondent’s request, an extension of time by which to file a timely Response to the Complaint to July 31, 2008.
A timely Response was received on July 31, 2008. The Response was deficient under ICANN Rule 5 as a hard copy was not received, but it was considered by the Panel.
Complainant filed an Additional Submission on August 5, 2008, which was considered.
Respondent filed Additional Submissions on August 2, 2008 and August 4, 2008, which were not considered.
On August 8, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain names be transferred from Respondent to Complainant.
Recovery Unlimited, a Virginia Corporation, is a 501(c)(3) non-profit organization supporting a highly successful addiction recovery program established in 1964. Donations support Recovery Unlimited's charitable work sustaining and expanding the 77-acre meeting and retreat center from which All Addicts Anonymous outreach programs are operated.
Donations to Recovery Unlimited include the proceeds of Green Demolitions, a donation program for Recovery Unlimited. Operated by Green Demolitions Surplus, Inc., an entity formed to handle the operation of the program, Green Demolitions is a self-sustaining donation program recycling luxury commercial surplus and donated kitchens, appliances, bathroom fixtures, lighting, home decor, etc. from houses being demolished and renovated.
Recovery Unlimited is the owner of the marks RECYCLING LUXURY FOR RECOVERY filed March 18, 2008, and RECYCLED LUXURY filed May 7, 2008, with the United States Patent and Trademark Office. Recovery Unlimited licenses these marks to Green Demolitions Surplus, Inc.
Complainant has been using the mark RECYCLING LUXURY FOR RECOVERY since at least as early as July 20, 2007, and the mark RECYCLED LUXURY since at least as early as September 28, 2007.
The other three domain names, <recyclingluxury.com>, <luxuryrecycling.net> and <luxuryrecycling.org>, resolve to "coming soon" pages courtesy of the registrar, Register.com.
Respondent Mark A.
Hayward was employed as the store manager of the Green Demolitions store in
The term "KEEPING IT GREEN" is confusingly similar to "KEEP IT GREEN", which appears as a tagline in the Green Demolitions newsletter. See, e.g., the newsletter included as part of Complainant's trademark application, Exh. 7. All four domain names are confusingly similar to the mark RECYCLED LUXURY because they contain near-identical words and have a similar meaning. As a result, the commercial impression created by the marks and the domain names are similar.
At the time of registration of the domain names, Respondent had actual knowledge of Complainant's marks, and consequently of Respondent's lack of rights in the terms contained in the disputed domain names. Respondent's registration and use of the disputed domain names in the face of his knowledge of Complainant's marks and Complainant's operations under the marks constitutes registration and use of the domain names in bad faith.
“Luxuryrecycling.com” is a full funded start up business that has investors and a board of directors. “Luxuryrecycling.com” is our trading name. “Luxuryrecycling Inc.” was set up to service the high end luxury market for new or very high end inventory either on consignment or donated, our business model has changed since inception and this will be explained in our formal reply.
Luxuryrecycling is not in the demolition business, the kitchen business, used furniture or in fact any of the sectors that Green Demolitions services. The only inventory close to kitchen product, a stove has been removed and we do not sell any of this type of product. We only deal in very high end luxury goods none of which are even close to the Green demolitions product.
Green demolitions.com., net., .org is in no way confusing with <luxuryrecyling.com> if you do any search on the world wide web they never come up in any similar search. There is no confusion and not one single dollar had been lost by Green demolitions by the existence of our company.
C. Complainant’s Additional Submission
Complainant has trademark rights to which the disputed domain names are confusingly similar. Respondent does not contest Complainant’s rights to its marks, and does not assert that the disputed domain names are not confusingly similar to Complainant’s marks.
Respondent fails to provide any evidence that he has legitimate interests in the domain names. As asserted in the Complaint and confirmed by Respondent, Respondent was formerly employed by Green Demolitions. As such, he had knowledge of Complainant, Complainant’s business, business names and trademarks before registering the domain names at issue, and was even employed by Green Demolitions at the time he registered three of the four disputed domain names.
Respondent has not provided any evidence to rebut Complainant’s proof of Respondent’s bad faith registration and use of the domain names.
D. Respondent’s Additional Submissions
As noted, Respondent’s e-mails to the Case Coordinator at the National Arbitration Forum on August 2 and August 4, 2008, were not considered because they are additional filings made without payment of the required filing fee.
The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
Respondent has no rights or legitimate interests in respect of the domain name; and
The domain name has been registered and is being used in bad faith.
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 does not possess a trademark registration for either of its asserted marks, but trademark registration is unnecessary under Policy ¶ 4(a)(i), if Complainant can establish continuous and extensive use of one or both of its asserted marks in commerce sufficient to establish common law rights in the marks. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency 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”).
Complainant has used its RECYCLING LUXURY FOR RECOVERY mark since at least as early as July 20, 2007, and its RECYCLED LUXURY mark since at least September 28, 2007.
Complainant has also used the RECYCLED LUXURY mark on a billboard, and the RECYCLING LUXURY FOR RECOVERY mark in its newsletter and on its websites. The Panel determines that Complainant has thus established rights in its asserted RECYCLED LUXURY and/or RECYCLING LUXURY FOR RECOVERY marks sufficient for the purposes of Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006).
The Panel determines that the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names are confusingly similar to one or both of Complainant’s alleged marks under Policy ¶ 4(a)(i). Complainant asserts that the disputed domain names are variations of its RECYCLED LUXURY and/or RECYCLING LUXURY FOR RECOVERY marks, as the disputed domain names incorporate the dominant portions of the marks, and in some cases vary the words slightly. The disputed domain names also contain a generic top-level domain (“gTLD”), which the Panel determines is insignificant to a Policy ¶ 4(a)(i) analysis. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant contends that Respondent is not authorized to use its marks, nor that Respondent is known by the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names in any manner. The Panel finds that Respondent is not commonly known by the disputed domain names as required by Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Complainant contends that the <luxuryrecycling.com> domain name is being used to display a website, which appears to be in direct competition with Complainant and its business. The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005).
Complainant states that the <recyclingluxury.com>,
<luxuryrecycling.net> and <luxuryrecycling.org> domain
names are not currently being actively used.
The Panel determines that failure to make an active use of the disputed
domain names indicates that Respondent lacks rights and legitimate interests in
the disputed domain names, and thus Respondent has failed to satisfy Policy ¶¶
4(c)(i) and (iii).
Pirelli & C. S.p.A. v.
Complainant asserts that Respondent has offered to sell the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names, along with six other domain names, to Complainant for an amount far in excess of Respondent’s out-of-pocket costs. The Panel finds this to be evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).
Complainant contends that Respondent is a former employee of Complainant, and as such, had actual knowledge of Complainant and its marks at the time Respondent registered the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names. The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Respondent’s attempt to sell the disputed domain names to Complainant indicates bad faith registration and use under Policy ¶ 4(b)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <recyclingluxury.com>, <luxuryrecycling.com>, <luxuryrecycling.net> and <luxuryrecycling.org> domain names be TRANSFERRED from Respondent to Complainant.
Dated: August 22, 2008
National Arbitration Forum
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