Peaches Uniforms Inc. v. 24-7 Outdoors Inc.
Claim Number: FA0812001238992
Complainant is Peaches Uniforms Inc. (“Complainant”), represented by Jeff
A McDaniel, of Daffer McDaniel LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peaches.com>, registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
James A. Carmody, Charles K. McCotter, Jr. and John J. Upchurch as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.
On December 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <peaches.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 12, 2009 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 by e-mail.
A timely Response was received and determined to be complete on January 13, 2009.
An Additional Submission was received from Complainant on January 20, 2009. Pursuant to Supplemental Rule #7, the Additional Submission was determined to be timely and complete.
An Additional Submission was received from Respondent on January 27, 2009. While received two days after the deadline for submissions pursuant to Supplemental Rule #7, the panel determined to consider the same as if timely filed.
On January 26, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Charles K. McCotter, Jr. and John J. Upchurch as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint is based on the following factual and legal grounds as asserted by Complainant:
[i] The Complainant is the registered owner of United States Trademark Reg. Nos. 3,223,701 and 3,223,702 for the trademark PEACHES (the “Mark”) first used in commerce on December 1, 1987 and registered on April 3, 2007 in association with the following goods: surgical scrubs, surgical caps, surgical aprons, surgical gowns, masks for surgical purposes, surgical shoe covers, stethoscope covers, lab coats, warm-ups, dresses, dress suits, skirts, vests, shirts, blouses, t-shirts, women’s tunics, smocks, pinafores, jumpers, sweatshirts, jackets, coats, shorts, pants, sweatshirts, sweatpants, jogging pants, nurse pants, leggings, stockings, socks, shoes, slippers, belts, head wear, and head sweatbands. The Complainant is also the registered owner of United States Trademark Reg. No. 1,552,025 for the mark PEACHES UNIFORMS first used in commerce on December 1, 1987 and registered on August 15, 1989 in association with nurses’ uniforms. The goods indentified in these registrations are collectively referred to as the “Products.”
[ii] In addition to the registered Mark, Complainant owns substantial common law rights to the Mark in connection with such goods, which has been in continuous use since at least as early as 1987, as indicated by the trademark registration referenced above and by the 1988 catalog displaying the use of the common law trademark PEACHES.
[iii] The Complainant has continuously used the trademark PEACHES in
[iv] The PEACHES trademark is an arbitrary mark having a common meaning that has no relation to the Products sold by Complainant.
[v] The Complainant has used the PEACHES mark on the Internet since December 1, 1998, at a site accessible through the domain name <peachesuniforms.com>.
[vi] The disputed domain name resolved to a website that displayed various hyperlinks to third-party websites, most of which were in direct competition with Complainant. The Respondent’s website included hyperlinks related to various categories, including “Cheap Scrubs,” “Discount Scrubs,” “Scrub Tops,” “Scrub Uniforms,” “Hospital Uniforms,” and “Scrub Tops.” By following the links, Internet users were taken to pages full of links to sites of third parties that offered Products and related goods in competition with the business of Complainant or purporting to offer Complainant’s Products without Complainant’s permission. It is reasonable to infer that the Respondent derives pecuniary gain from such use of the disputed domain name by way of pay-per-click referral fees.
[vii] Respondent’s corporate or personal name does not include the word “Peaches.” Respondent’s WHOIS information identifies Respondent as “24-7 Outdoors, Inc.,” a name with no apparent relation to the disputed domain name.
[viii] Respondent’s <peaches.com> domain name is identical to and confusingly similar to Complainant’s PEACHES mark. Furthermore, the Registrant has used the name “Peaches” in connection with this domain name to mislead Internet visitors to websites that feature Products and other related goods sold in competition with the business of Complaint. Use of the peaches.com domain name to provide links to the very types of products offered by Complainant is likely to cause consumers to believe mistakenly that the website is operated by or affiliated with Complainant.
[ix] Respondent does not have any rights or legitimate interests in the <peaches.com> domain name.
[x] To date, Respondent has registered at least over 2,500 domain names. It is thus reasonable to presume that the Respondent is in the business of acquiring and selling domain name registrations. Respondent’s business model seems to essentially involve directing confused Internet users, who are in search of a legitimate business, to Respondent’s websites, which feature links to competitor sites.
[xi] As is indicated in the above registrations, Complainant has been using the PEACHES mark since 1987 which significantly predates the 1995 registration date of the disputed domain name.
[xii] The disputed domain contained zero pages for the first four years after Respondent registered the domain. Thereafter, the domain has been used solely as a linking site.
[xiii] On October 16, 2008, Complainant sent a demand and transfer letter to Respondent. Just two days after Complainant sent its demand of transfer letter to Respondent, the content of peaches.com was altered. The site was modified to automatically forward visitors to <http://www.onlinepickupsecrets.com/?hop=shark357> on or about October 19, to <http://www.date.com/serious.do?trackid=000000010294&keyword=serious&AID=10390020&PID=3206853> on or about October 22, to <http://www.brightgiftbaskets.com/> on or about November 1, and to <http://www.giftcards.com/index.html> on or about November 13, 2008.
[xiv] These alterations are further evidence of intentional unlawful use of the disputed domain name by Respondent.
1. The Respondent’s domain name peaches.com is both identical and confusingly similar to Complainant’s trademark PEACHES.
2. Respondent has no rights or legitimate interests in the domain name. Respondent is not a licensee of complainant nor otherwise authorized to use Complainant’s marks.
3. Respondent has registered and is using the disputed name in bad faith pursuant to the Policy 4(a)(iii).
B. Respondent alleges:
1. Respondent submits that the domain name is neither confusingly similar nor identical to the sole chronologically-relevant evidence of a trade or service mark that the Complainant has presented, i.e., “Peaches Uniforms”.
2. The Complainant has failed to demonstrate that the Respondent’s use of the domain name prior to notice of a dispute was illegitimate, and, accordingly, the registration of the disputed domain name was not in bad faith.
C. Additional Submissions
1. Complainant asserts:
(a) Respondent does not contest that it used the disputed domain name in an attempt to attract Internet users to the Respondent’s site, and ultimately to Complainant’s competitors’ products, by creating a likelihood of confusion with Complainant’s Mark. Respondent does not and cannot assert that it had any right to do so.
(b) It is not true, as alleged by Respondent, that only the Respondent’s intent at the time of registration is relevant.
2. Respondent asserts:
(a) The Complainant’s chronology demonstrates that the Respondent experimented with several different advertising systems and methods and that in 2004 – nine years after registering the domain name – one of those systems produced a link relating to “uniforms” at the Complainant’s corresponding website.
(b) The demonstration by the Complainant that a uniform-relevant link appeared in 2004 is not probative of bad faith registration under the Policy. The Complainant is required to show that the Respondent had intentionally and abusively registered the domain name in bad faith in 1995.
The Panel finds that Complainant has failed to demonstrate that the subject domain name <peaches.com> was registered in bad faith in 1995, and determines that the requested relief shall be denied.
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. The Panel determined that this element was case determinative, and elected to address it initially.
The Panel first turns its attention to the question of whether Complainant has met its burden of proof of bad faith registration and use under Policy ¶4(a)(iii).
Respondent registered the <peaches.com> domain name in 1995. Complainant’s trademark registration for the PEACHES mark confers rights in that mark dating back to June 6, 2006, the date on which Complainant filed the trademark application. Because Respondent’s rights in the <peaches.com> domain name predate Complainant’s rights in the PEACHES mark derived through its trademark registration of the mark, the Panel finds that Respondent cannot have registered the <peaches.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”).
Complainant’s rights should be examined at the time of the subject domain name’s registration in 1995. At that time Complainant had the Peaches Uniforms and logo design registration. PEACHES, the trademark, was registered April 3, 2007, some 12 years later. Complainant is claiming common law rights in Peaches at the time of the 1995 domain name registration, but its exhibits do not support common law rights.
This case is dependent upon whether there was bad faith registration and use. Peaches is descriptive or generic. The question then is whether Respondent was targeting Complainant’s trademark upon registration. Respondent’s use of the domain name is relevant to the bad faith registration determination. Respondent was registering as many descriptive domain names as he could. Some time after registration, the website provided links to adult sites consistent with Respondent’s association of the term Peaches with desirable women. Subsequently, the domain name was parked and began referencing uniforms, thereby targeting Complainant’s mark many years later. In the absence of such use earlier, we don’t believe that such use initiated approximately 10 years following the domain name registration is sufficient to support a finding of bad faith registration.
Given these findings, there is no need for the Panel to address the remaining elements of the policy relating to rights or legitimate interests or that the domain name is identical or confusingly similar to Complainant’s mark. Since Complainant has failed to satisfy the third element of the Policy, it is not necessary for the Panel to make findings as to the other two. Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element); Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant had failed to meet its burden for one).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Chair
Charles K. McCotter, Jr., Panelist
James A. Carmody, Panelist
Dated: February 9, 2009
National Arbitration Forum