Stick Enterprises, Inc. v. VOLTOS Industrial Internet c/o Reg Thompson
Claim Number: FA0809001226316
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.
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.
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 email@example.com and firstname.lastname@example.org 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.
Complainant requests that the <learn-chapman-stick.com> domain name be transferred from Respondent to Complainant, and the <chapmanstickmegatarcomparison.com> domain name be cancelled.
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.
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.
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.
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.”).
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.
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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