Stick Enterprises, Inc. v.
VOLTOS Industrial Internet c/o Reg Thompson
Claim Number: FA0809001226316
PARTIES
Complainant is Stick Enterprises, Inc. (“Complainant”), represented by Michael A. DiNardo, of KELLY LOWRY & KELLEY LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <learn-chapman-stick.com> and <chapmanstickmegatarcomparison.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Katalin Szamosi as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 25, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 29, 2008.
On September 29, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <learn-chapman-stick.com> and <chapmanstickmegatarcomparison.com>
domain names are registered with Enom, Inc.
and that Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 October 10, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 30, 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@learn-chapman-stick.com and postmaster@chapmanstickmegatarcomparison.com by e-mail.
A timely Response was received and determined to be complete on October 28, 2008.
An Additional Submission was received from Complainant on November 3,
2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
On 3 November, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
RELIEF
SOUGHT
Complainant requests that the <learn-chapman-stick.com> domain name
be transferred from Respondent to Complainant, and the <chapmanstickmegatarcomparison.com> domain name be cancelled.
PARTIES’
CONTENTIONS
A. Complainant
Complainant bases its Complaint on the following trademark
registrations: word trademark No. 1,900,586 "STICK", word trademark
No. 1,100,154 "THE STICK", figurative trademark No. 1,101,428
"the chapman stick touchboard" and word trademark No. 1,908,385
"CHAPMAN STICK". In support of the protection of these trademarks the
Complainant has enclosed the relevant extracts from the USPTO trademark register.
Complainant claims that the disputed domain names are identical to or
wholly incorporate the invoked trademarks.
According to the standpoint of Complainant the websites under the
disputed domain names are used by Respondent to promote and advance Respondent's
goods while disparaging Complainant's goods. Complainant claims that Respondent
registered the subject domain names for the purpose of trading on the goodwill
and name recognition developed by Complainant.
Complainant argues that Respondent has no rights or legitimate
interests in respect of the domain names, since:
§
the use
of the domain names by Respondent is not a legitimate non-commercial or fair
use without intent for commercial gain, as the domains misleadingly divert
consumers for Complainant's products to Respondent's website;
§
Respondent
was not previously or commonly known by the domain names or a variation of the
domain names;
§
Respondent
uses the domains in connection with the offering of directly competing goods.
Complainant claims that the registration and use of the domain names by
Respondent is in bad faith, since the Respondent's intent is to attract
Internet users to its website by creating a likelihood of confusion as to the
source, sponsorship affiliation or endorsement of Respondent's websites.
B. Respondent
Respondent firstly argues that previously an agreement entered into
between Complainant and Respondent, according to which Complainant shall not
enter into legal actions against Respondent.
Respondent claims that the subject domain names are not identical to
Complainant's trademarks, and the changes made to the Complainant's trademarks
in the subject domain names do not identify Complainant.
According to Respondent, as opposed to the allegations of Complainant,
the primary purpose of the "learn-chapman-stick.com" website is the
presentation and sale of an instructional book for musical instruments, while
that of the "chapmanstickmegatarcomparison.com" is to compare details
of the Chapman Stick instruments and the Mobius Megatar instruments. Respondent
argues that the possible negative critics on the latter website in respect of
Complainant's product are based on the comparison of the relevant accurate
facts.
Respondent states that Complainant did not evidence that Respondent
does not use the domains in a legitimate non-commercial or fair way without
intent for commercial gain.
Furthermore, Respondent argues that the Complaint was not filed in good
faith; it was filed with the purpose to quash Complainant's smaller competitor,
namely Respondent.
According to Respondent, the origin and ownership of the websites under
the subject domains are clear for the relevant consumers, and it accentuates
that the websites do not provide direct commercial benefit for the sale of
Respondent' musical instrument products.
C. Additional Submissions
Complainant filed Additional Submissions in response to the arguments
raised in the Response by Respondent.
In the Additional Submissions Complainant argues that the prior
agreement mentioned by Respondent expressly permits the parties entering into
arbitration proceedings, thus Respondent's allegation is misleading and
unfounded.
Complainant claims that Respondent does not have the legal rights to
use Complainant's trademarks in the subject domain names.
Respondent argues and files evidences in support thereof that the
advertisements on the website "www.chapmanstickmegatarcomparison.com"
were not posted there by the people selling the instruments,
they were copied by Respondent from other websites. Complainant also raises that recently Respondent has used Complainant's
trademarks in Google advertisements, which have been removed by Google upon a
complaint lodged by Complainant.
According to Complainant, Respondent uses Complainant's trademarks to
spread Respondent's negative opinions about Complainant's goods and services.
FINDINGS
Complainant, Stick Enterprises, Inc. is the producer and distributor of the specific musical
instrument product called CHAPMAN STICK. It is also owner of various trademarks
protecting the name and logo of the product, including the word trademark No. 1,908,385 "CHAPMAN
STICK". The above were duly evidenced by Complainant.
Respondent, VOLTOS Industrial Internet
also produces and sells specific musical instruments similar to the products of
Complainant under the name MOBIUS MEGATAR, thus Respondent is a direct
competitor of Complainant in small market of these specific musical instrument
products. Respondent operates websites under the disputed domains.
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.”
Preliminary Procedural
Issue: Deficient Response
The Panel highlights that the hard copy of Respondent’s Response is missing exhibits E, F, and H as they were
provided on CD and by e-mail only.
Although the Response does not fully comply with ICANN Rule 5, the Panel,
at its discretion decides to consider those parts of the Response as well,
which were filed electronically only, since the
electronically filed documents could be properly examined by the Panel and according
to the view of the Panel there is an actual need to
resolve the real dispute between the parties.
Preliminary Substantive Issue:
Business Dispute Potentially Outside the Scope of the UDRP
The Panel points out that Respondent claims that an
agreement was reached between Respondent and Complainant, which states that
Complainant will not enter into a legal action against Respondent, however,
Respondent has failed to voluntarily produce said agreement.
With respect to the fact that Respondent has failed to submit the
alleged agreement as evidence, the Panel decides not to consider Respondent's
arguments in this regard. However, the Panel finds that sufficient evidences were
provided for it by the parties to properly decide the dispute under the UDRP
and therefore decides to proceed with this
case and render a decision on the merits. See Weber-Stephen Prod. Co. v.
Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other
tribunal, however, this Panel can determine whether it has jurisdiction only
from the facts and arguments presented to it. In this case, Complainant did
allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations,
there would be no proper question as to this Panel’s jurisdiction.”).
Substantive issues
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.
The Panel examines the two disputed domains
separately in the light of the above conditions.
a. the domain name <learn-chapman-stick.com>
Complainant has provided evidence that it
registered its CHAPMAN STICK mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,908,385 issued August 1, 1995). The Panel accepts Complainant’s registration
of its CHAPMAN STICK mark with the USPTO establishes its prior rights in the
mark pursuant to Policy 4(a)(i).
The Panel highlights
that the subject domain name consists exclusively of Complainant's registered
trademark CHAPMAN STICK and a generic term "learn", which has - as
regards to its meaning - a clear relationship with Complainant's activity for
the relevant consumers. The Panel finds that the addition of generic terms with
an obvious relationship with the Complainant to a registered mark creates a
confusing similarity between the mark and the disputed domain name. See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
Therefore, the Panel finds that the domain
name <learn-chapman-stick.com>
is confusingly similar to Complainant's CHAPMAN STICK trademark.
The Panel accepts Complainant's arguments that Respondent is not and
has never been commonly known by the disputed
domain name.
Respondent operates under the corporate name “Voltos Industries"
and Respondent’s WHOIS information lists Respondent as “VOLTOS Industrial
Internet.” Complainant has not authorized Respondent to use its CHAPMAN STICK
mark either. Therefore, the Panel finds
that Respondent is not commonly known by the disputed domain name pursuant to
Policy 4(c)(ii).
Respondent’s disputed website
resolves to a website directly offering the Respondent's product, namely an
instructional book, which is associated with Complainant's product as well. Furthermore,
the website under the given domain name contains clear reference that
Respondent is the producer of its competing musical instrument product,
advertises the Respondent's product and provides direct access to Respondent's
website where Respondent's product can be purchased.
The Panel finds that Respondent’s
intention to confuse Internet users seeking Complainant’s business can be
established and that creating the risk that these Internet users are led to Respondent’s
competing website, where Respondent offers its products - its instructional
book and its musical instrument - is not 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). See
Clear Channel Commc’ns, Inc.
v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003)
(finding that the respondent, as a competitor of the complainant, had no rights
or legitimate interests in a domain name that utilized the complainant’s mark
for its competing website).
Thus, the Panel finds that Respondent has no right or legitimate
interest in using the disputed domain name.
In relation to the bad faith registration and use by Respondent, the
Panel firstly highlights that the parties are direct competitors of each other
in a small market segment and Respondent has registered and uses a domain name
confusingly similar to Complainant's registered trademark.
On the basis of the above the Panel finds Respondent’s use of the
disputed domain name confusingly similar to the direct competitor's registered
trademark is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between the complainant and the
respondent, the respondent likely registered the contested domain name with the
intent to disrupt the complainant's business and create user confusion).
The Panel also finds that the previous and
current use of the disputed domain name demonstrates that it is very likely
that Respondent is attempting to profit from Complainant’s goodwill associated
with its CHAPMAN STICK mark and this is also evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the
complainant were in the same line of business and the respondent was using a
domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to
attract Internet users to its <efitnesswarehouse.com> domain name).
Thus, the Panel finds that it can be established that Respondent has
registered and uses the subject domain name in bad faith.
b. the domain name <chapmanstickmegatarcomparision.com>
The Panel points out that the subject domain
name consists of the Complainant's registered trademark, the Respondent's
product name and the term "comparison".
According to the standpoint of the Panel, the
term "comparison" has a clear and evident meaning for the relevant
consumers speaking the English language. The Panel finds that based on this
meaning of the word "comparison" the consumers seeing the domain name
are aware of the fact that they will face not only Complainant's product,
therefore the domain name does not identify
and refer to Complainant only.
This is supported by the fact that the domain
name contains the Respondent's product name as well, which also suggests to the
consumers that the domain name is not associated with the Complainant only.
Thus, according to the view of the Panel the consumers do not confuse the
domain name with the Complainant's trademark, since the domain name has a clear
meaning for the consumers, which implies that the domain name does not pertain
exclusively to Complainant or its product.
The Panel notes that the present case is
quite similar to the cases in relation to domain names consisting of trademarks
and the word "sucks", concerning which there is an existing and
consequent case law. According to this case law, on the basis of the clear meaning
of the added term "sucks" the consumers are able to demarcate a
domain name containing the term "sucks" from the trademark incorporated
in the given domain name; and therefore in general the confusing similarity between
the domain name and the incorporated trademark cannot be established.
On the basis of the above the Panel finds
that the confusing similarity between the domain name <chapmanstickmegatarcomparision.com> and the Complainant's
CHAPMAN STICK mark does not exist.
First of all, the Panel highlights that with respect to the fact that
confusing similarity in relation to this domain name cannot be established, the
Panel is not obliged to examine further aspects on Paragraph 4(a) of the
Policy, however, for the sake of completeness, the Panel lays down findings in
connection with these issues as well.
The Panel mentions that the website under the subject domain name
contains a comparison between the Complainant's and the Respondent's products,
certain articles and news regarding both products, and it can be established
that the basic purpose of the website is not the sale of musical instrument
products - either Complainant's or Respondent's - by Respondent. It can also be
established that the website basically intends to compare the concerned
products.
Product comparison is in itself not prohibited by the law and not
considered as in bad faith, but restrictions are generally applied in the
various national jurisdictions. In the present case the Panel was not in the position
to assess and adjudge the statements made on the concerned website, since the
Panel was not provided with sufficient evidence to examine the accuracy of the
statements, i.e whether they are factually correct or not. The Panel notes that
furnishing evidence in this regard would have been the obligation of the
Complainant. The Panel also mentions that Complainant is in the position to
enforce its claims in connection with the alleged inaccuracy of Respondent's
statements by other legal means.
With respect to the fact that on the one hand product comparison is not
prohibited in general and the Panel is not in the position to assess the
contents of the website, and on the other hand that the website under the
disputed domain name does not directly offer the Respondent's product, the
Panel comes to the conclusion that it is likely that the Respondent's
legitimate interest can be established, which excludes the bad faith
registration or use as well.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be PARTLY
GRANTED. Accordingly, it is
Ordered that the <learn-chapman-stick.com> domain name be TRANSFERRED from Respondent to
Complainant.
The
relief in respect of the domain name <chapmanstickmegatarcomparison.com> is DENIED.
Therefore, it is also Ordered
that the <chapmanstickmegatarcomparison.com>
domain name REMAIN with Respondent.
Dr. Katalin Szamosi Panelist
Dated: 19 November, 2008
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