AromaSys, Inc. and In-Vironmental Integrity,
Inc. v. Singe Black c/o Vinyl Blue Enterprises Incorp
Claim Number: FA0904001255851
PARTIES
Complainant is AromaSys, Inc. and In-Vironmental Integrity, Inc.,
(“Complainant”) represented by Michael
M. Lafeber, of Briggs and Morgan,
P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aromasys.us>,
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on April 3, 2009; the Forum received a hard copy
of the Complaint on April 7, 2009.
On April 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that
the <aromasys.us> 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 the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On April 10, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 30, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On May 5, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Louis E. Condon as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <aromasys.us> domain name is identical to Complainant’s AROMASYS mark.
2.
Respondent does not have any rights or
legitimate interests in the <aromasys.us> domain name.
3.
Respondent registered and used the <aromasys.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainants, AromaSys, Inc. and
In-Vironmental Integrity, Inc. (hereinafter referred to as “Complainant”), are
sister corporations that design, manufacture, and market environmental
fragrance technologies. Complainant has
used the AROMASYS mark in connection with its operations since 1993, and has
registered its mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,988,713 issued August 30, 2005). Complainant also owns and operates the
<aromasys.com> domain name.
Respondent registered the disputed <aromasys.us>
domain name on December 10, 2007. The disputed domain name resolves to a
complaint website that makes disparaging statements about Complainant and its
products.
DISCUSSION
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
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; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant’s registration
of the AROMASYS mark with the USPTO adequately demonstrates its rights in the
mark under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat.
Arb.
Forum Jan. 31, 2007) (finding that the complainant had sufficiently established
rights in the SKUNK WORKS mark through its registration of the mark with the
USPTO); see
also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007)
(holding that “[t]his trademark registration [with the USPTO] establishes
Complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”).
The <aromasys.us> domain name contains solely Complainant’s exact AROMASYS mark while adding the country-code top-level domain “.us.” There is no distinction added to a mark when attaching any top-level domain, as such an element is mandatory in every domain name. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record to conclude that Respondent owns any
service marks or trademarks that reflect the <aromasys.us> domain
name. Therefore the Panel finds that
Respondent does not have rights and legitimate interests pursuant to Policy ¶
4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002)
(finding that there was no evidence that Respondent was the owner or
beneficiary of a mark that is identical to the <persiankitty.com> domain
name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept.
3, 2002) (holding that because Respondent did not own any trademarks or service
marks reflecting the <pepsicola.us> domain name, it had no rights or
legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent’s disputed domain name resolves to a website that is highly critical
of Complainant. The Panel finds that
whatever free speech rights Respondent may have fail to create a right in
Respondent to identify itself as Complainant or incorporate Complainant’s
trademark in a disputed domain name.
Therefore, the Panel finds that Respondent has not created a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iv). See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9,
2000) (“[T]he Panel does not dispute Respondent’s right to establish and
maintain a website critical of Complainant . . . However, the panel does
not consider that this gives Respondent the right to identify itself as
Complainant.”); see also Baker & Daniels v. DefaultData.com, FA
104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because the respondent’s
<bakeranddaniels.com> domain name merely incorporates the complainant’s
trademark, without more, it is not protected by the First Amendment); see also Name.Space
Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding
that although the content of the respondent’s site may be entitled to First
Amendment protection, the respondent’s use of the complainant’s trademark in
the domain name of its site is not protected.).
Moreover,
there is no evidence within the record by which the Panel may conclude that
Respondent is commonly known by the disputed domain name. Complainant has expressly claimed that
Respondent lacks affiliation with Complainant or license to use Complainant’s
mark in any domain name. Likewise, the
WHOIS information only lists Respondent as “Singe Black c/o Vinyl Blue Enterprises Incorp.” The Panel thus finds that Respondent lacks
rights and legitimate interests under Policy ¶ 4(c)(iii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration
or Use in Bad Faith
The Panel notes that it need not limit itself to an analysis of bad faith under the Policy ¶ 4(b) factors; rather it may consider the totality of the circumstances under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in [UDRP] paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
In this case, Respondent’s disputed
domain name resolves to a website that makes disparaging comments regarding
Complainant and its products. Though
there is no alleged commercial gain or competition with Complainant, the Panel adopts
the reasoning of the panel in Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), which stated that
although the respondent’s complaint website did not compete with the
complainant or earn commercial gain, the respondent’s appropriation of the
complainant’s trademark with a view to cause “damage and disruption to
[Complainant] cannot be right, still less where the use of the Domain Name will
trick internet users intending to visit the trademark owner’s site into
visiting the registrant’s site” in holding that the disputed domain name was
registered in bad faith. Moreover, in Diners Club Int’l, Ltd. v. Infotechnics Ltd.,
FA 169085 (Nat. Arb. Forum
Aug. 20, 2003), the panel found that “[the respondent’s] registration
and use of a domain name nearly identical to [the complainant’s] mark to
criticize [the complainant’s] business practices is evidence of registration
and use of the <diners-club.net> domain name in bad faith pursuant to [UDRP]
¶ 4(a)(iii).” Thus,
the Panel finds that Respondent’s criticism of Complainant’s business through
the disputed domain name was achieved only through both bad faith registration
and use, as Respondent misappropriated Complainant’s trademark through the identical
disputed domain name. Therefore, the Panel finds that Respondent
engaged in both bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <aromasys.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 14, 2009
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