iLounge, Inc. v. 949 EXCLUSIVE
Claim Number: FA0902001249399
Complainant is iLounge,
Inc. (“Complainant”), represented by Jeffrey K. Joyner, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iloungeoc.com>, registered with Godaddy.com, Inc.
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.
Luiz Edgard Montaury Pimenta, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2009.
On February 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <iloungeoc.com> domain name is registered with Godaddy.com, Inc. and that the 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 March 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 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 firstname.lastname@example.org by e-mail.
A Response was received on March 27, 2009 and was deemed deficient pursuant to ICANN Rule 5 since it was received after the Response deadline.
An Additional Submission was received from Complainant on March 31, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On April 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that is a corporation incorporated in the State of California and headquartered in Irvine, Orange County, California and the owner of the “iLounge” mark in connection with online services, computer services, clothing and accessories, and the highly popular Internet website located at www.ilounge.com. Complainant informs that the iLounge Website provides worldwide access to its services, which include publications, reviews, chat forums, and other materials and information relating to computer and portable handheld devices. Complainant contends that, as a result of its nationwide members and marketing efforts, the iLounge Website receives approximately twenty million page views per month. Complainant informs that it has been using the “iLounge” mark continuously since at least as early as 2005. Complainant argues that, based upon its continuous use and promotion of the iLounge mark, it has established rights to use of the “iLounge” mark in connection with online services, computer services, clothing and accessories, and the iLounge Website.
Complainant contends that the infringing domain name is unquestionably similar to its “iLounge” mark. Complainant further contends that, in fact it is not similar to the marks, it actually contains the entirety of the mark, adding only the “oc” at the end of the mark and adding only the top level domain <.com>. Complainant argues that when a registered domain name differs from a mark by only adding letters, it is considered to be identical or confusingly similar to that mark. Complainant supports that the “oc” term appears to indicate Orange County, a descriptive geographical term indicating Respondent’s business location and, as Complainant is also located in the very same Orange County, the addition of the “oc” serves no function to distinguish Respondent from Complainant; and to the contrary, it further enhances confusion.
Complainant informs that actual confusion has occurred, as it has received an inquiry seeking employment from Respondent and an inquiry regarding Respondent’s services. In addition, Complainant informs that it recently received two more email inquiries regarding the reservation of Respondent’s services and that an advertiser on Complainant’s iLounge website, while searching for Complainant’s address on the Internet, was also confused by Respondent’s website with the infringing domain name and that an internet publication also refers Respondent as “iLounge”, identical to Complainant’s mark.
Complainant also argues that Respondent has no rights or legitimate interests in the infringing domain name. Complainant argues that it is the rightful owner of the “iLounge” mark; and has not licensed or authorized Respondent the use of the “iLounge” mark at any time and that because the infringing domain name is identical or confusingly similar to complainant’s iLounge mark and actual confusion has occurred showing the general public perceives Complainant and Respondent are the same entity, Respondent is legally incapable of using it for a legitimate purpose. Moreover, Complainant asserts that Respondent has no authority to use the “iLounge” mark in connection with any goods or services, and, as such, it would be incapable of using the mark for the bona fide offering of goods and services.
Further, Complainant asserts that there is no evidence that Respondent is commonly known by the text of the infringing domain name and that nothing in Respondent’s Whois Information suggests that Respondent is commonly known by the <iloungeoc.com> infringing domain name. Complainant supports that all evidence suggests that Respondent is commonly known as “949 exclusive” or “iLounge Orange County”.
Complainant contends that Respondent is not making any legitimate noncommercial or fair use of the infringing domain name and that it is clearly using the infringing domain name for a commercial purpose, namely offering, advertising and promoting Respondent’s business.
Complainant contends that Respondent registered and is using the infringing domain name in bad faith in derogation of ICANN Rule 3(b)(ix)(3) because, as demonstrated above, Respondent registered an infringing domain name that is either identical or confusingly similar to Complainant’s distinctive mark and actual confusion has occurred.
Complainant alleges that there can be no doubt that Respondent was aware of complainant’s “iLounge” mark and the goods and services offered there under when it registered the infringing domain name as Respondent registered the domain name over three years after complainant commenced use of the “iLounge” mark. Complainant informs that its trademark application for the “iLounge” mark has been filed and publicly available through the United States Patent and Trademark Office since 2005.
Complainant asserts that Respondent clearly chose the infringing domain name because it contained the distinctive “iLounge” mark and that, in doing so, Respondent hoped that Internet users would find Respondent’s website when searching for the iLounge website on the WWW. Complainant alleges that Respondent hoped so, and did successfully, create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of the website as evidenced by the actual confusion and that Respondent’s prior knowledge of Complainant’s “iLounge” mark and its intent to profit by confusing the public are clear evidence of bad faith under the Policy. Respondent is not entitled to possess the domain name registration for the <iloungeoc.com> infringing domain name.
Respondent asserts that Complainant’s mark ILOUNGE deals with online services, computer services, printed materials, clothing and accessories whereas Respondent’s domain, iloungeoc.com AKA iLounge ORANGE COUNTY, deals with a single location restaurant and bar, which is completely unrelated to Complainant’s business.
Respondent applies the Sleekcraft factors, created by the leading case of AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, to support its allegations that the disputed domain name is not identical nor confusingly similar to Complainant’s trademarks.
Respondent alleges that unlike the Complainant which is referencing the word “lounge” to its business that deals with online services and computer services, the Respondent’s domain, being “iloungeoc.com”, is a single location restaurant (AKA a “Lounge”), located in Orange County (AKA “OC”) and that these are two different distinct businesses with two different types of customers, one serving as a lounge and restaurant, the other serving phone accessories.
Respondent asserts that, like every lounge business, Respondent’s lounge (“lounge”) located in Irvine (“i”), a city located in Orange County (“OC”), has been commonly known by its domain name “iloungeoc.com” and that there is no possible alternative but for the thousands of guests that Respondent serves in its lounge business to identify this lounge located in Irvine, County of Orange, but as “ILOUNGE ORANGE COUNTY”
Respondent informs that there is a currently pending live trademark application submitted by the Respondent with the United States Patent and Trademark Office for its lounge and restaurant business.
Respondent alleges that its single location restaurant just like many single location restaurants and lounges, has been referenced long before Complainant came into business in 2005 as a “LOUNGE”, that Respondent’s lounge business has thousands of visitors on its website with week-end capacity at its location being full on a weekly basis and that this is not due to a misunderstanding of Respondent’s visitors wanting to use online goods or services , but rather seeking to obtain information about a restaurant and bar lounge business located in Orange County.
Respondent alleges that it did not, nor does any circumstance exist to indicate that it has registered the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a Competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name and that Respondent has not registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Furthermore, Respondent alleges hat it has not intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on Respondent’s website or location.
Also, Respondent informs that it heavily relies on this domain name to conduct its business for its event reservations and restaurant bookings. Complainant contends that the Complainant has produced no evidence to show how detriment its website is to its business, but has provided some e-mails that were allegedly forwarded to it by other potential customers of Respondent. Respondent contends that said e-mails although hearsay evidence and not admissible, only show that it is the Complainant that is benefiting from this alleged confusion, by receiving inquiries from the Respondent’s business. Respondent declares that it has received no inquiries regarding ilounge products or services to him from ilounge.com site visitors and/or customers.
Finally, Respondent asserts that because of the fact that Respondent’s core of its business comes from its online events booking and reservations, transferring its domain name to the Complainant will cause its business to potentially go bankrupt.
C. Additional Submissions
An Additional Submission was received from Complainant on March 31, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
In his Additional Submission, Complainant contends that Respondent attempted to distinguish the infringing domain name from Complainant’s mark with the application of the factors set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (“Sleekcraft Factors”). Complaint asserts that, aside from whether the Sleekcraft Factors are the proper test in the context of a domain name dispute, Respondent’s application of the Sleekcraft Factors is misplaced, as Respondent would have failed to address that when applying the Sleekcraft Factors “Evidence that the use of the two marks has already led to confusion is persuasive proof that future confusion is likely”. Complaint once again asserts that it has submitted proof of multiple occasions of actual confusion. Complainant contends that it has submitted evidence that shows that consumers seek Respondent’s services in total disregard of the alleged difference between Complainant’s website and Respondent’s website and that job seekers came to Complainant for employment relating to Respondent’s services.
Complainant contends that Respondent incorrectly interprets the meaning of likelihood of confusion. Complainant asserts that the goods or services of the parties need not be identical or directly competitive to find a likelihood of confusion and that they need only be related in some manner or the conditions surrounding their marketing be such they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods or services come from a common source. Complainant concludes that it is likely that consumers will believe that Respondent’s business provides internet access and is, therefore, offering goods and services related to Complainant’s goods and services.
Complainant also argues that Complainant and Respondent are both based in Orange County and publicize their goods and services associated with the mark in that location. Complainant concludes that the channel of commerce for Complainant’s and Respondent’s respective goods and services are not entirely distinct.
Complainant contests Respondent’s allegation that Complainant’s mark lacks strength, saying that it is in fact strong, given its wide user base. Furthermore, Complainant alleges that Respondent’s further allegation that its own mark “iLounge Orange County” is “clearly descriptive” while Complainant’s “iLounge” mark is a suggestive mark, would defeat Defendant’s arguments. Complainant asserts that Respondent’s mark is merely geographically descriptive and lacks secondary meaning.
Complainant asserts that “iLounge” is the dominant portion of Complainant’s mark and the infringing domain name and is therefore recognized as more significant in creating a commercial impression.
Complainant contends that Respondent also attempted to distinguish the infringing domain name from Complainant’s mark with “ILOUNGE ORANGE COUNTY” trademark application filed by Respondent, but that such trademark comprises words, colors, and certain styles which play no role in the domain name dispute context.
Complainant contends that it is legally impossible for Respondent to have rights on the disputed domain name.
Complainant contends that Respondent had actual knowledge of Complainant’s trademark rights when it registered the disputed domain name, which supports the bad faith use and registrations allegations. Complainant asserts that any reasonable trademark search or due diligence conducted by Respondent would reveal Complainant’s trademark application. Complainant also contends that a simple Google search for the term “ilounge” would have revealed Complainant’s iLounge mark. Complainant concludes that there can be no doubt that Respondent was aware of Complainant’s “iLounge” mark and the goods and services offered there under when it filed its trademark application and/or registered the disputed domain name.
Finally, Complainant contends that Respondent’s alleged financial hardship is irrelevant.
The Panel finds that Complainant has established common law rights in the mark “iLounge” in connection with online services, computer services, clothing and accessories.
The Panel finds that Respondent has established
common law rights in the mark “iLounge
Preliminary Issue: Deficient Response
Respondent has provided a Response that was deficient pursuant to ICANN Rule 5 because it was received after the Response deadline. The Panel may therefore decide whether or not to consider Respondent’s 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). In the present case, the Panel decides to consider Respondent’s response. But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ").
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.
argues in its Complaint and Additional Submission that Respondent’s <iloungeoc.com> domain name is confusingly similar to Complainant’s
mark. The Panel finds that the
addition of the letters “oc” and the generic top-level domain (“gTLD”) “.com”
do not create a meaningful distinction, therefore the <iloungeoc.com> domain name can be considered
as confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ,
FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com>
domain name was confusingly similar to the complainant’s AOL mark because “…the
addition of a string of indiscriminate letters to a famous mark in a second
level domain does not differentiate the domain name from the mark.”); see also Jerry
Damson, Inc. v.
Both Respondent and Complainant address this issue by analyzing the content of the websites hosted under their respective domain names and the business activities performed by them. The Panel finds that in a domain name dispute this is not relevant, as the only analysis, regarding the first element of the Policy, is the identity or similarity between the disputed domain name and Complainant’s trademarks.
The Panel finds that Complainant has complied with the first element of the policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
Respondent asserts it is commonly known by
the <iloungeoc.com> domain
name. Respondent states that its
business name is “iLounge
Respondent provides evidence that the <iloungeoc.com> domain name is being used to advertise, promote and fulfill reservations for Respondent’s restaurant located in Orange County California. The Panel finds that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO Apr. 27, 2004) (finding that the <harrodssalon.com> domain name was used in a bona fide manner because the respondent had been in the salon business for ten years prior to registering the domain name and the owner’s surname was “Harrod”).
The Panel finds that Complainant failed to comply with the second element of the Policy.
As Complainant has failed to prove that Respondent lacks rights and legitimate interests, the Panel declines to analyze the last element of the Policy (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that relief shall be DENIED.
Luiz Edgard Montaury Pimenta, Panelist
Dated: April 17, 2009