David Hall's Center for Cellular Health, LLC v. Needak Manufacturing
Claim Number: FA0208000123892
Complainant is David Hall's Center For Cellular Health, LLC, Manti, UT, (“Complainant”) represented by John E. Delaney, of Parsons Behle & Latimer. Respondent is Needak Manufacturing, O’Neill, NE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cellerciser.com>, <cellerciser.org>, <cellerciser.net>, <cellerciser.biz>, <cellerciser.info>, <cellercise.org>, <cellercise.net>, <cellercise.biz> and <cellercise.info>, registered with Enom.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 26, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.
On August 29, 2002, Enom confirmed by e-mail to the Forum that the domain names <cellerciser.com>, <cellerciser.org>, <cellerciser.net>, <cellerciser.biz>, <cellerciser.info>, <cellercise.org>, <cellercise.net>, <cellercise.biz> and <cellercise.info> are registered with Enom and that the Respondent is the current registrant of the names. Enom has verified that Respondent is bound by the Enom 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 September 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2002 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, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on September 26, 2002.
Complainant’s additional submission was received on October 7, 2002. Respondent’s additional submission was received on October 10, 2002.
On October 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, David Hall’s Center for Cellular Health, LLC, claims to hold a trademark for “Cellerciser,” also the name of a mini-trampoline called the “Easy-bounce Cellerciser.” Complainant contends that Respondent sells a competitive product called Rebounder. Complainant contends the Respondent has intentionally attempted to disrupt Complainant’s business and Respondent’s registration of the disputed domain names “could be used to” confuse Complainant’s customers.
Respondent, Needak Manufacturing, contends that “Cellercise” is an abandoned trademark and that “cellercise” is the “contracted form of ‘cell exercise,’” and it is referred to in several exercise programs. Respondent contends that the “movements by [Complainant] are nothing new, but rather a re-packaging of the work of others.” Respondent contends that David Hall was formerly associated with Respondent’s business where he learned proprietary information about Respondent’s rebounder product. Respondent claims that Mr. Hall left Respondent’s business and sold the rebounder under the name of David Hall’s Center for Cellular Health, LLC. Respondent claims the right to use the domain names and to provide “accurate information” about rebound exercise.
C. Additional Submissions
Complainant and Respondent have made additional submissions. Complainant’s additional submission states that the parties are competitors in the marketing and sale of mini-trampolines. Complainant claims to hold registered trademarks incorporating the word “cellercise” and claims to have used the word “cellercise” in commerce since 1998. According to Complainant, Respondent registered the disputed domain names on August 15, 2002, after Respondent was aware of Complainant’s use of the trademarks. Complainant’s response describes the parties’ efforts at attempting to resolve this dispute. Complainant denies Respondent’s contention that the mark “cellercise” is generic.
It its additional submission, Respondent restates its position that Complainant has failed to prove that the terms “cellercise” and “cellerciser” are unique terms. Respondent contends that it is in the interest of the rebounding industry that these terms remain generic. Finally, Respondent contends that Complainant has failed to show that the domain names were registered in bad faith.
Complainant, David Hall’s Center for Cellular Health, LLC, holds two trademarks incorporating the word “Cellerciser,” which is also the name of a mini-trampoline called the “Easy-bounce Cellerciser.” These marks were registered in May 2001. Respondent sells a competitive product called Rebounder. David Hall was formerly associated with Respondent’s business. Respondent registered the disputed domain names on August 15, 2002, after Respondent was aware of Complainant’s use of the trademarks.
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.
Identical and/or Confusingly Similar
Complainant holds two federally registered trademarks: Cellerciser and Easy-Bounce Cellerciser. These marks were registered in May 2001. Although Respondent has asserted that Complainant has abandoned its “Cellercise” mark, it is offered to evidence of abandonment.
Respondent’s domain names are identical or substantially identical to Complainant’s marks because they incorporate the word “Cellerciser,” or a variation thereof, and merely add the generic top-level domain “.com.” The addition of a top-level domain is irrelevant when conducting a Policy ¶ 4(a)(i) analysis because top-level domains are a required element of a domain name and have no distinctive qualities of their own. As a result, the addition of a top-level domain name does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Rights or Legitimate Interests
If Respondent can demonstrate that it has a right or legitimate interest in the domain name, then the Complaint must fail. To demonstrate its right or legitimate interest in the many domain names it has registered, Respondent argues that it has the right to provide accurate information about rebound exercise in order to create a better informed public. Furthermore, Respondent contends that the word “cellerciser” is a generic name. As to the former argument, Respondent will remain able to provide the public accurate information about rebound exercise regardless of the outcome of this dispute. As to the latter contention, Complainant has come forward demonstrating its legitimate interest in the domain names with evidence of similar trademark registrations.
A respondent may be found to have a legitimate interest in a domain name if the respondent, before any notice of the dispute, has used or has made demonstrable preparations to use, the domain name or a name corresponding to it, in connection with a bona fide offering of goods or services. Respondent has not come forward with evidence demonstrating that, prior to the initiation of this dispute, it has used the word “cellercise” in connection with the marketing of its products.
A legitimate interest may also be shown by proof that a respondent has been commonly known by the domain name. Again, Respondent has not demonstrated that this is the case.
Finally, a legitimate interest may be shown if the respondent is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. Because Respondent is a competitor of Complainant, it cannot demonstrate a noncommercial purpose in the use of the domain names.
Registration and Use in Bad Faith
Bad faith can be shown if a respondent has registered the domain name in order to prevent the owner of the trademark from “reflecting the mark in a corresponding domain name,” provided that the respondent has engaged in a pattern of such conduct. The registration of nine domain names, all identical or confusingly similar to a trademark held by Complainant, constitutes a pattern of registering domain names to prevent Complainant from “reflecting the mark” in a corresponding domain name. See Ingersoll Rand v. Gully, D2000-0021 (WIPO Mar. 9, 2000).
The domain names <cellerciser.com>, <cellerciser.org>, <cellerciser.net>, <cellerciser.biz>, <cellerciser.info>, <cellercise.org>, <cellercise.net>, <cellercise.biz> and <cellercise.info are herby TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 7, 2002
Reissued: November 15, 2002
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