National Arbitration Forum

 

DECISION

 

WTFN, Inc. v. ECDomains, Inc.

Claim Number: FA0901001245303

 

PARTIES

Complainant is WTFN, Inc. (“Complainant”), represented by Stephen J. Strauss, Esquire of Fulwider Patton LLP, California, USA.  Respondent is ECDomains, Inc. (“Respondent”), Rhode Island, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <coochyshavecream.com>, <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshavingcream.net>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

M. KELLY TILLERY, ESQUIRE as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2009.

 

On February 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <coochyshavecream.com>, <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshavingcream.net> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names.  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 February 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 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 postmaster@coochyshavecream.com, postmaster@coochyshavecream.net, postmaster-@coochyshavingcream.com, and postmaster@coochyshavingcream.net by e-mail.

 

A Response was received on March 4, 2009.  However because this Response was received not in hard copy, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5. 

 

Complainant submitted an Additional Submission on March 11, 2009, which was in compliance with Supplemental Rule 7.

 

Respondent submitted an Additional Submission on March 11, 2009, which was in compliance with Supplemental Rule 7.

 

On March 16, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant contends that:

 

1)      it is in the business of manufacturing, distributing, advertising and selling personal care products, including a personal shaving preparation sold under the mark COOCHY® since at least as early as January 1985;

2)      it is the owner of United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 2,877,153 for COOCHY®, issued on August 24, 2004;

3)      on October 9, 2007, Respondent registered the domain names <coochyshavecream.com>, <coochyshavecream.net>, <coochy-shavingcream.com> and <coochyshavingcream.net> which each incorporate Complainant’s mark in its entirety.

4)      Respondent has linked the <coochyshavecream.com> domain name to an active commercial website selling Complainant's personal products including its COOCHY® personal shaving preparations;

5)      Respondent has never used or developed the other three domain names in connection with the bona fide offering of any goods or services; they all resolve into websites incorporating a generic search engine and links to other third party websites that promote and sell adult novelty products;

6)      it has no relationship with Respondent, nor has it given permission or authorized Respondent to register and use the disputed domain names;

7)      to the best of its knowledge, Respondent has not been commonly known by any of the disputed domain names;

8)      Respondent had actual and constructive knowledge of Complainant’s rights in the COOCHY® mark when it registered the disputed domain names;

9)      Respondent has made no demonstrable preparations to use the other three disputed domain names;

10)   Respondent registered and uses the <coochyshavecream.com> domain name in bad faith as it intentionally attempts to attract potential customers from Complainant to Respondent's commercial website by taking advantage of Internet users who are searching for Complainant's COOCHY® products and diverting them to Respondent's commercial website;

11)  Respondent’s non-commercial and passive holding of the other three disputed domain names is evidence of bad faith;

12)  Respondent’s registration of the disputed domain names, despite knowledge of Complainant's Common Law and Registered Rights in the COOCHY® mark, is evidence, in and of itself, of bad faith registration and use;

13)  unauthorized use of it’s COOCHY® mark to sell Complainant’s products represents bad faith use.

B. Respondent

 

 Respondent contends that:

 

1)      “coochy” is a common name used for centuries to describe a vagina;

2)      Complainant’s USPTO Trademark Registration was improperly issued as it is “vulgar, offensive and scandalous”;

3)      there are many Third Party Uses of “coochy”;

4)      it has not and does not pull customers away from Complainant because Complainant does not sell to consumers through a website;

5)      it does not use the domain names in bad faith as it sells Complainant’s products through its site;

6)      Complainant’s COOCHY mark is generic and thus not protectable.

 

C. Additional Submissions

 

·        Complainant

 

Complainant further contends that:

 

1)      Respondent fails to conform with ICANN Rule for Uniform domain name Resolution Policy 5(b)(ii) [identification of the name, postal address, e-mail address, telephone and facsimile numbers of the Respondent], 5(b)(iii) [identification of the preferred method of communicating with Respondent], 5(b)(vi) [identification of legal proceedings] and 5(b)(vii) [statement that a copy of the response was transmitted or sent to Complainant], and, the Response does not contain a Certification Statement required under Rule 5(b)(viii); as such, the Response must be given little weight as evidence;

2)      Respondent does not dispute that: 

(a)                Complainant owns the rights to the COOCHY® mark and name in connection with personal shaving preparations;

(b)               the other three disputed domain names are identical to Complainant’s COOCHY® Mark;

(c)                Respondent had actual and constructive knowledge of the COOCHY® mark and registration at the time it registered the disputed domain names and admits that it is fully aware of Complainant’s COOCHY® mark since it purchases Complainant’s COOCHY® products from one of its distributors;

(d)               Respondent was never authorized or licensed by Complainant to register or use the disputed domain names;

(e)                Respondent has not been commonly known by any of the disputed domain names;

(f)                 Respondent used the <coochyshavecream.com> domain name in connection with a commercial website that sold Complainant’s COOCHY® products;

(g)                The other three disputed domain names direct Internet users to inactive websites providing third party hyperlinks promoting and selling adult novelty products.

3)                  Although, the word “coochy” may be an otherwise generic term for a woman’s vagina, its COOCHY® mark is used in an unusual and distinctive manner to identify its personal care preparations and the USPTO established that as a mark, COOCHY does not have generic meanings;

4)                  Respondent’s websites located at <coochyshavecream.net>, <coochyshavingcream.com> and <coochyshavingcream.net> all clearly indicate that the domain name “may be for sale by its owner!,” further evidencing Respondent’s lack of rights and legitimate interests and registered and used the disputed domain names in bad faith;

5)                  Respondent modified the <coochyshavecream.com> website after the initiation of these proceedings - Respondent's previous commercial website, which sold Complainant's COOCHY® products, has been replaced with an essentially blank page that states "This web site is coming soon"; further demonstrating Respondent's lack of rights or legitimate interests and registered and used the disputed domain names in bad faith.

·        Respondent

 

Respondent further contends that:

 

1)                  it has authorization from many wholesale companies to purchase, sell and market Complainant’s COOCHY® Shaving Cream and thus to market same in any way it feels necessary to generate sales;

2)                  Complainant has distributors which sell to retail customers and have the right to pass on to others, such as Respondent, the right to sell, market and ship its products to consumers;

3)                  it has brought in sales of over $75,000 last year for Complainant selling COOCHY® Shaving Cream;

4)                  it closed  its website since it refused to sell Complainant’s products if Complainant reneged on letting retail customers resell its products.

FINDINGS

 

1)   Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain names are confusingly similar to a trademark in which Complainant has rights.

 

2)   Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the domain names.

 

3)   Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain names have been registered and are being used in bad faith.

 

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.

 

PROCEDURAL ISSUES

 

Although Respondent’s Response was received by electronic submission in timely manner, Respondent failed to submit a timely hard copy as required by ICANN Rule 5.  Therefore, the Panel has sole discretion as to the amount of weight to give the Response.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist).  The Panel shall accept and consider the Response.  See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”);  J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the Respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

Complainant’s argument in its Additional Submissions regarding Respondent’s alleged failure to comply with Rules 5(b)(ii), (iii), (vi), (vii) and (viii) are noted.  However, these are administrative filing requirements which are within the purview of the National Arbitration Forum, not that of this Panel.  Since the NAF accepted Respondent’s filings as compliant, except as noted herein, this Panel shall not alter same, even if empowered to do so.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in the COOCHY® mark pursuant to Policy ¶4(a)(i) by registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,877,153 issued Aug. 24, 2004) in connection with its personal shaving products.  The Panel finds that registration with the USPTO establishes Complainant’s rights in the COOCHY® mark.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). 

 

The <coochyshavecream.com> and <coochyshavecream.net> domain names consist of Complainant’s mark and the words “shave” and “cream,” which simply describe Complainant’s product.  The <coochyshavingcream.com> and <coochyshavingcream.net> domain names consist of Complainant’s mark and the words “shaving” and “cream,” which also merely describe Complainant’s product.  Each disputed domain name also contains the generic top-level domain “.com” or “.net.”  The Panel finds that the addition of descriptive words and/or a gTLD does not prevent the disputed domain names from being confusingly similar to Complainant’s COOCHY mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).  The Panel finds that all four disputed domain names are, though not identical, confusingly similar to Complainant’s mark. 

 

Respondent asserts that it plans to challenge Complainant’s registration of the COOCHY® mark with the USPTO. Addressing the validity of a Registered Trademark is beyond the scope of the Policy and the power of this Panel.  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Classic Media, Inc. v. Royal, D2006-0208 (WIPO June 19, 2006) (“To the extent the Respondent wishes to contest the continued validity of any of Complainant’s LASSIE Marks, the Respondent must do so through an appropriate administrative and/or judicial avenue that has appropriate jurisdiction over the issue, such as by filing an action in the USPTO to cancel any of Complainant’s federal registrations or alternatively instituting federal litigation.  Absent Respondent having done so and attained a final ruling in its favor, this Panel is constrained to defer, as it must, to the USPTO’s initial determination implicit in its having granted a registration, i.e., that each of Complainant’s LASSIE Marks has acquired sufficient distinctiveness and thus qualifies for continued federal trademark protection and enjoys all the rights afforded thereby.”).

 

Respondent contends that the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark.  Such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts 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 asserts that it has not granted any license or permission to Respondent to use its COOCHY® mark and that Respondent is not commonly known by any of the disputed domain names.  The WHOIS information associated with the disputed domain names lists Respondent as “ECDomains, Inc.”  Respondent has not claimed or submitted any evidence that it is commonly known by any of the disputed domain names.  The Panel finds that Respondent has not any established rights or legitimate interests in the disputed domain names 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant asserts that Respondent is using the <coochyshavecream.com> domain name to resolve to a commercial website selling Complainant’s products without authorization and products of Complainant’s direct competitors.  This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).

 

Complainant asserts that Respondent is using the <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshaving-cream.net> domain names to display links to third-party websites, some of which directly compete with Complainant.  Complainant further asserts that Respondent’s websites resolving from the disputed domain names are parking pages for which Respondent receives click-through fees.  This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Respondent argues that the shaving cream it sells through the <coochyshavecream.com> domain name is purchased from one of Complainant’s distributors, which allows it the right to sell the shaving cream.  Respondent use of the mark in a domain name could be a bona fide offering of goods and establish rights under Policy ¶ 4(c)(i).  See Inter-Tel, Inc. v. Marcus, FA 727697 (Nat. Arb. Forum July 27, 2006) (finding that the respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name)).  However, there is no evidence of record, other than Respondent’s unsupported claim, that Complainant authorized any of its distributors to authorize Respondent to use its mark in a domain name or that any such distributor did so.  Further, unlike the Inter-Tel case, Respondent does not use the mark in a domain name for a site that sells only Complainant’s products nor does Respondent’s site accurately state the relationship, or lack thereof between Complainant and Respondent.  While traditional trademark law doctrines of Fair Use and Exhaustion/First Sale permit a subsequent purchaser of a trademarked product to use the trademark in reselling (including advertising) the product, it does not permit the use of the mark in a domain name, at least as the first and dominant portion thereof, just as same would not sanction such use as a store name for a store where such products are sold. 

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is using the <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshavingcream.net> domain names to resolve to websites that contains links for third-party websites, some of which directly compete with Complainant.  Respondent is using the disputed domain names to divert Internet users to Complainant’s competitors and thereby disrupt Complainant’s business, constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). 

 

The <coochyshavecream.com> domain name resolves to a website offering Complainant’s products and products of its direct competitors.  This is bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

According to Complainant, the websites that resolve from the <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshavingcream.net> domain names display advertisements and links to websites that are both related and unrelated to Complainant’s marks.  The <coochyshavecream.com> domain name is being used to sells its products along with its competitor’s products.  Respondent is clearly taking advantage of the inherent confusion between the disputed domain names and Complainant’s mark for Respondent’s own financial gain.  Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant contends that Respondent had actual knowledge of Complainant's COOCHY® mark when registering the disputed domain names.  Respondent had actual notice of Complainant’s mark; Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

 

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 <coochyshavecream.com>, <coochyshavecream.net>, <coochyshavingcream.com>, and <coochyshaving-cream.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

M. KELLY TILLERY, ESQUIRE, Panelist
Dated: March 30, 2009