Julius Sämann Ltd. v. Flower
Manufacturing, LLC.
Claim Number: FA0812001236979
PARTIES
Complainant is Julius Sämann Ltd. (“Complainant”), represented by Roberta
S. Bren, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <customcarfreshners.com> and <customcarfresheners.com>,
registered with Network Solutions, 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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 4, 2008.
On December 4, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <customcarfreshners.com> and <customcarfresheners.com>
domain names are registered with Network
Solutions, Inc. and that Respondent is the current registrant of the
names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 8, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 29, 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@customcarfreshners.com and postmaster@customcarfresheners.com by e-mail.
On December 23, 2008, Respondent requested an extension to file the
Response under National Arbitration Forum Supplemental Rule 6. On December 26, 2008, the National
Arbitration Forum granted that extension, setting a new deadline of January 17,
2009 by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on January 15, 2009.
On January 20, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant makes the following statement.
The Complainant is Julius Sämann Ltd. ("JSL"), a Bermuda
corporation with a place of business at Chancery Hall,
The disputed domain names wholly incorporate Complainant's CAR-FRESHNER
mark and are therefore confusingly similar to Complainant's mark under the
Policy. Complainant has never licensed
its CAR-FRESHNER mark to Respondent, or otherwise authorized Respondent to use
its CAR-FRESHNER mark.
Respondent’s mere registration of a domain name, by itself, does not
create a right or legitimate interest in the domain name for purposes of the
Policy.
As a competitor of Complainant, Respondent likely had actual knowledge
of Complainant's mark. Respondent also
had constructive knowledge of Complainant's registered marks pursuant to 15
U.S.C. § 1072.
Before any notice to the Respondent of the dispute, Respondent did not
use, or make demonstrable preparations to use, the domain names or names
corresponding to the domain names in connection with a bona fide offering of goods or services. ICANN Policy 4(c)(i).
Any use of the domain names by Respondent, a competitor of Complainant, in
connection with air fresheners is neither bona
fide nor legitimate because it trades upon the reputation of Complainant's
marks. Respondent is using the domain
names containing Complainant's mark for the purpose of attracting Internet
users to Respondent's website in order to gain potential customers.
Respondent is not making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue. ICANN Policy 4(c)(iii). Respondent’s use of the domain names is
clearly commercial and not fair use.
Respondent has not been commonly known by the name Custom Carfreshners
or Custom Carfresheners, as contemplated by ICANN Policy 4(c)(ii).
Therefore, Respondent has no rights or legitimate interests in the
disputed domain names under the factors set forth in the ICANN Policy.
By registering and using the disputed domain names, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
websites by creating a likelihood of confusion with Complainant’s mark as to
source, sponsorship, affiliation, or endorsement of Respondent’s website. This constitutes registration and use of the
domain names in bad faith under the Policy.
Respondent's registration and use of domain names containing a
competitor's trademark constitutes bad faith registration and use of the domain
names. See ICANN Policy 4(b)(iii).
Finally, Respondent's registration and use of the domain names occurred
with at least constructive knowledge of Complainant's registered mark.
B. Respondent
The Respondent makes the following statement.
The parties have entered into a settlement agreement, pursuant to which
Respondent requests that the Panel order that both disputed domain names, be
transferred to the Complainant in this proceeding.
Respondent submits that it is not necessary for the Panel to enter
findings of fact when ordering the transfer of the domain names at the request
of both parties. See, e.g., Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., Case No. FA0311000212653;
Dream Execution Tech. Co. Ltd. v. Privacy
Ltd. Disclosed Agent for YOLAPT, Case No. FA0807001218178.
FINDINGS
The panel will not make any findings of fact, for the reasons explained below.
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.
As noted above, Paragraph 15(a) of 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” (emphasis added).
In this case, the parties have both asked for the domain name to be
transferred to the Complainant. This
Panel holds that in this UDRP proceeding, in accordance with a general legal
principle governing arbitrations as well as national court proceedings, that it
would not be appropriate for it to act nec
ultra petita nec infra petita, that is, that it should not here issue a
decision that would be either less than requested, nor more than requested by
the parties. Since the requests of the
parties in this case are identical, the Panel recognizes the common request,
and finds it unnecessary in the circumstances to make findings of fact or of
compliance (or not) with the three requisite elements of the Policy.
A similar conclusion was reached by the Panel in Boehringer
Ingelheim International GmbH v. Modern Ltd. ‑ Cayman Web Development,
FA0211000133625 (Nat. Arb. Forum, January 9, 2003); in Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, FA0307000170616 (Nat. Arb.
Forum, September 5, 2003); and in United Pet Group, Inc. v.
For the reasons
indicated above, the Panel need not consider this element of the Policy.
For the reasons
indicated above, the Panel need not consider this element of the Policy.
For the reasons
indicated above, the Panel need not consider this element of the Policy.
DECISION
For all the reasons set forth above, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is Ordered that the <customcarfreshners.com> and <customcarfresheners.com>
domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 3, 2009
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