Olivia Newton-John as Trustee of the ONJ
Separate Property Trust and BHS International, Inc. v. Ijmond special products
c/o A de Jong
Claim Number: FA0812001236185
PARTIES
Complainant is Olivia Newton-John as Trustee
of the ONJ Separate Property Trust and BHS International, Inc. (“Complainant”),
represented by Lezlie Jensen-Huston, of Cobalt LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livaid.com>,
registered with Key-Systems Gmbh.
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.
R.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 29, 2008; the National Arbitration Forum received a
hard copy of the Complaint on December 2, 2008.
On December 2, 2008, Key-Systems Gmbh confirmed by e-mail to the
National Arbitration Forum that the <livaid.com>
domain name is registered with Key-Systems Gmbh and that the Respondent is the
current registrant of the name. Key-Systems
Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 December 4, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 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@livaid.com by e-mail.
A timely Response was received and determined to be complete on
December 24, 2008.
An Additional Submission was received from Complainant on December 29,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
Respondent also submitted an Additional Submission on January 4, 2009,
which was also determined to be timely under Supplemental Rule 7.
On January 2, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant complains that it holds registered marks “LIV” trademarks,
which are registered internationally. It
also asserts that it holds a common law mark in “LIVAID.”
According to Complainant, Respondent registered the domain name <livaid.com>
in October of 2007. Complainant asserts that the website to which
this domain name resolves features Complainant’s proprietary images
representing a woman performing a breast self-explanation with the “LIVAID
device and a single email address encouraging customers to contact info at <livaid.com> . . . .”
Complainant asserts that LIV mark and brand were created to promote
breast health, particularly the LIVAID self-examination device. These marks are owned by Olivia Newton-John,
nicknamed “Liv,” who is a breast cancer survivor.
The LIVAID device is “a heart-shaped [sic] device filled with a lubricant
that increases the sensitivity of the fingers during a breast self-exam . . .” The device was
originally distributed by LIV International and released on October 1,
2004. In a second release, the LIVAID
device is currently produced by Co-Complainant BHS International. (Complainant and Co-Complainant are referred
to as “Complainant.”) The device is both
patented and extremely well-known. The
name of the device, LIVAID, has been distributed extensively across the world
with 1.3 million such devices sold or distributed. The LIVAID device is marketed through the
website owned by Complainant, <liv.com>.
Complainant and Respondent entered into negotiations in April
2006. Respondent wished to become an
authorized distributor of a self-examination kit called the LIVKIT, a
predecessor of the LIVAID device. There
were protracted negotiations, but the parties never entered into a contractual
relationship.
Complainant points out that the proposed distribution agreement
prohibited the proposed distributor from acquiring any right or other interest
in any of the intellectual property owned by Complainant. Nevertheless, the Complainant alleges the
Respondent informed the Complainant that he had registered the domain name, <livaid.com>. Complainant immediately objected, asserting
that “LivAid” was a registered mark,
although that assertion was mistaken.
Respondent responded stating that the Respondent and Complainant should,
could or would work out their differences.
Negotiations allegedly then continued but no agreement was ever
reached. Nevertheless, Respondent
continued to operate the domain name.
Then, in 2008, Respondent requested payment for the domain name. Complainant sent a cease-and-desist
letter. The Respondent disdainfully
rejected Complainant’s offer to reimburse any expenses. Respondent, although it had previously been
communicating with Complainant in English began then to communicate with
Complainant in Dutch.
Complainant asserts that Respondent threatened to sell the domain name
to a third party. Complainant offers
extensive evidence that Respondent has received inquiries concerning the Complainant’s LIVAID
device and related services. Respondent
has even referred these inquiries to Complainant. Complainant asserts that Respondent is not
and has never been an authorized distributor of the “LIVAID” product.
Complainant goes on to assert that the domain name and the common law
mark are identical or confusingly similar.
Complainant does make a prima facie
case as to these allegations. (The
question, as discussed below, will be whether or not the Complainant has made a
prima facie case that it holds a
common law mark in the phrase or term “LIVAID.”)
Complainant demonstrates that Respondent does not have any rights or
legitimate interest in the name “LIVAID.”
It apparently is not using the name in connection with a bona fide offering of goods and
services. It has never been known by the
name “LivAid.com” or <livaid.com>.
As to bad faith, Complainant states that Respondent knew of
Complainant’s interest in the name but it allegedly registered the name LIV Aid
as a domain name. Further, Respondent is
apparently using the domain name to create confusion and is diverting potential
customers.
Respondent has allegedly offered to sell the domain name. As Complainant points out, in a reasonably
identical case, Capula Candles (P) Ltd.
v. Wayne Stewart Dixon, D2002-0945 (WIPO Dec. 2, 2002), found bad faith
where the Respondent, while negotiating a distribution agreement, registered
the domain name.
Complainant goes on to assert bad faith because the registration
occurred at a time when Respondent knew of Complainant’s interest. In fact, Complainant points out, the marketing materials received by Respondent
described the device as “LIV®Aid.”
Finally, Complainant asserts bad faith by asserting that Respondent
attempted to transfer title to the domain name.
Complainant also asserts that Respondent has transferred the domain
name to a third party in order to derail this proceeding.
B. Respondent
Respondent has filed a response in which it apologizes for its command
of the English language. Respondent
begins its response by pointing out that it has not transferred title to the
domain name in order to avoid this litigation.
It sets out a detailed explanation of that transfer and essentially
waives any defense of third party ownership.
Respondent denies that Complainant represented itself as LIVAID or “www.livaid.anything.” Respondent denies that Complainant ever used
“LIVAID” as a marketing term. Respondent
asserts that that term was never used until October of 2008. Respondent also disputes Complainant’s
characterization of the negotiations.
Respondent does admit that it has received—at its domain—inquiries concerning
the LIV device from third parties. Respondent
asserts that such inquiries have been forwarded to Complainant.
Respondent denies that it holds the domain hostage but does assert that
it used the domain as a “tool.”
Respondent asserts that it did not create the likelihood of confusion
because it is not using Complainant’s mark.
Again, Respondent asserts that it is willing to sell the domain name to
Complainant.
C. Additional Submissions
In Complainant’s Additional Submission, Complainant points out that
Respondent has not responded to the allegations that it lacks any legitimate
interest in the name. Complainant points
out that Respondent, in its Response, continues to offer to sell the domain
name.
Complainant states that Respondent seems to suggest that Complainant
has no common law mark before approximately October 2008. The Complainant goes on to state that it
developed or acquired common law rights perhaps as early as 2004. Attached to the Complainant’s supplementary
filing is the “Declaration of Ulli Haslacher in support of UDRP Complaint and
Additional Submission.” In that
Additional Submission, Complainant attempts to establish that it has a common
law mark in the term “LIVAID” and that it has consistently used that common law
mark since release of the LIVAID device as part of the LIV kit as early as
October 2004. The Haslacher Declaration
also reflects use of “LIVAID” on the <livaid.com>
website. Complainant again asserts that
Respondent was certainly aware of the Complainant’s rights in the term “LIVAID”
at the time that it filed its domain name.
In the supplemental filing, Complainant for the first time asserts that
the mark “LIV” is itself alone enough to establish that the domain name <livaid.com> is confusingly
similar to the registered mark “LIV.”
Finally, Respondent also suggests in its Response, that other persons
use “livaid” or some variant for domain names.
Complainant points out that those domain names are all owned by the same
person and argues, as supported by the Haslacher Declaration, that it has not
gotten around to attempting to deal with those (other)
unauthorized improper domain names. In
addition, Complainant asserts that there is a heart-shaped design associated
with the “LIVAID” device which is protected by a design patent.
Respondent’s Additional Submission asserts that it “informed ourselves…on
the trademark” before registering <livaid.com>. It only found “LIV,” Complainant’s registered
mark. Again, Respondent asserts that it
wants to negotiate with Complainant and denies any attempt to transfer
ownership of the domain name.
FINDINGS
Although the original Complaint does little in
the Panelist’s opinion to establish the existence of a common law mark, that
misstep is completely remedied.
Complainant has clearly established the existence of a common law mark
and has shown that the term “LIVAID” has acquired a secondary meaning
identifying the goods or services provided in the “LIVKIT.” Therefore, because Complainant holds a common
law mark, “Liv Aid” or “LIVAID,” it is obvious that the domain name <livaid.com> is identical or
confusingly similar to the mark.
As to rights in the name, Complainant has
established a prima facie case of
rights in the name and has reasonably established that Respondent has no rights
in the name. Respondent has made no
attempt to dispute that issue.
As to bad faith, Respondent’s conduct in
registering the domain name after negotiations between the parties had broken
down, coupled with its lack of rights in the name, would be enough to find bad
faith. However, it also is clear that
customers find the domain name confusingly similar to the mark and address
inquiries to Respondent concerning access to the goods and services sold by the
Complainant. Certainly, Respondent anticipated
such when it registered the domain name, for Respondent states that it
registered the domain name to protect commercial positions in the European
Union. Respondent also admits to receiving
inquiries at <livaid.com>
about the LIVKIT and device and admits forwarding those to Complainant.
Were this not enough, Respondent’s continued
attempts to sell the domain name it registered knowing of Complainant’s
interest would alone be sufficient.
Finally, the defense that others are doing this
too, as Complainant points out, is irrelevant.
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 its rights in the LIV
mark (Reg. No. 2,957,127 issued May 31, 2005), which was registered with the United
States Patent and Trademark Office (“USPTO”) and internationally. Complainant has sufficient rights in the LIV
mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (holding that the complainants established rights in marks
because the marks were registered with a trademark authority); see also
VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat.
Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS
SQUARE mark by registering it with the United States Patent and Trademark
Office (“USPTO”).”). However, it
is difficult to find that the LIV mark and the domain name are confusingly
similar. They certainly are not
identical.
Complainant also contends in its Complaint and Additional Submission
that it has used the LIVAID mark in connection with its LIVAID health care
device, which was first marketed in October 2004. Complainant asserts that this device has
since been listed in numerous television and magazine advertisements and
features, and that retailers have sold US $2,000,000 worth of the product. The Panel finds that the unrebutted evidence
is that Complainant’s LIVAID mark has achieved the requisite secondary meaning
to establish common law rights in the mark for Complainant. This gives Complainant sufficient standing
under Policy ¶ 4(a)(i) regarding the LIVAID mark. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000)
(finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark,
it also had common law rights in the BIBBERO mark because it had developed
brand name recognition with the word “bibbero”); see also Stellar
Call Ctrs. Pty Ltd. v. Bahr, FA
595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant
established common law rights in the STELLAR CALL CENTRES mark because the
complainant demonstrated that its mark had acquired secondary meaning).
Complainant's common law mark, LivAid or LIVAID, and Respondent’s <livaid.com>
domain name are identical. The addition of “.com” is irrelevant to a Policy
¶ 4(a)(i) analysis.
See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of
a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a
Policy ¶ 4(a)(i) analysis); see
also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005)
(finding <wuib.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name WUIB is part of the
Internet address and does not add source-identifying significance).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant has made a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). The burden then shifted to Respondent to show
it does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828
(Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a
prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under UDRP ¶ 4(a)(ii)
before the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant
has shown that Respondent is not commonly known by the disputed domain name and
is not authorized or permitted to use Complainant’s marks in any fashion. The WHOIS information lists Respondent as
“Ijmond special products c/o A de Jong.”
Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights
or legitimate interests in a disputed domain name where there is no evidence in
the record indicating that the respondent is commonly known by the disputed
domain name).
Complainant has shown that Respondent’s disputed domain name resolves to a website that features Complainant’s images and displays an e-mail address for Internet users to contact Complainant. Complainant also has shown that Respondent previously initiated talks with Complainant to become an authorized reseller of Complainant’s products, though these negotiations allegedly broke down. Respondent, even if it had been an authorized reseller, would still never have retained the right to use Complainant’s marks. Moreover, in its Additional Submission, Complainant argues that other unauthorized third-party use of LIVAID does not justify Respondent’s use and that the logos used by Respondent are protected by Complainant’s design patent. Respondent has failed to make 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 Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Jaccard Corp. v. GDC, FA 152463 (Nat. Arb. Forum June 19, 2003) (stating that as there was “no evidence of an agreement between Complainant and Respondent whereby Respondent has either or both of a privilege to have registered, and a privilege to use, the mark that is the subject of one or more of Complainant's trademarks as a domain name” the respondent had no rights or legitimate interests in the disputed domain name).
According
to Complainant, Respondent requested that Complainant offer to purchase the
disputed domain name and threatened to sell the disputed domain name to another
party if the offer was not acceptable to Respondent. Respondent admits to this
desire to sell in its Response. This
evidence also demonstrates Respondent’s lack of rights and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii). See
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent offered to sell the disputed
domain name to Complainant, and threatened to sell the disputed domain name to
another party if the offer was not acceptable.
Respondent admits to this desire to sell in its Response. Respondent
clearly intended the disputed domain name to be for sale for an amount in
excess of Respondent’s out-of-pocket registration costs. Respondent certainly
appears to have registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(i).
See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding
that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant
that he “would consider a cash offer” for the sale of the disputed domain name
registration while inviting the complainant to “submit an opening cash or stock
offer”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628
(WIPO Aug. 11, 2000) (finding that the
attempted sale of a domain name is evidence of bad faith).
Respondent admits that it registered the
domain name in order to attract Internet users for commercial gain, for Respondent stated that it registered the domain in
order to protect the domain name and used the domain name for anticipated
commercial purposes. Therefore,
Respondent registered and is using the disputed domain name in bad faith under
Policy ¶ 4(b)(iv).
See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain); see also Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent
to confuse consumers is not required for a finding of trademark infringement,
intent to deceive is strong evidence of a likelihood of confusion.").
Complainant also argues in its Complaint and
Additional Submission that, due to the parties’ previous negotiations,
Respondent had actual notice of Complainant’s rights its marks. Because the mark is a common law mark, and
because Respondent did apparently investigate the existence of a registered
mark, these facts do not support a finding of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v.
Finally, Complainant’s argument that
Respondent sought to “avoid prosecution under the UDRP by its veiled-attempt to
transfer of the Domain Name soon after it learned that Complainant intended to
file the [instant] action” is rebutted by Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livaid.com>
domain name be TRANSFERRED from Respondent to Complainant.
R.
Dated: January
16, 2009
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