Green Seal, Inc. v. Core
Products c/o Brent Crawford
Claim Number: FA0905001261982
PARTIES
Complainant is Green Seal, Inc. (“Complainant”), represented by Stephanie
F. Goeller, of Pillsbury Winthrop Shaw Pittman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <greenseal.com>, registered with Domaindiscover, and <green-seal.com>, registered
with Network
Solutions, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 8, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 12, 2009.
On May 11, 2009, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <greenseal.com> domain
name is registered with Domaindiscover,
and that the Respondent is the current registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover 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 May 11, 2009, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <green-seal.com> domain name is
registered with Network Solutions, Inc., and
that the Respondent is the current registrant of the name. Network Solutions,
Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the Policy.
On May 21,
A timely Response was received and determined to be complete on June 10, 2009.
On June 15, 2009, Complainant submitted an Additional Submission that
was determined to be in compliance with Supplemental Rule 7.
On June 17, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that Green Seal, Inc. was founded in 1989 as a
nonprofit organization that promotes environmentally responsible products and
services. Complainant also informs that since at least 1991 has
been using the GREEN SEAL mark and certifications marks incorporating the words
GREEN SEAL CERTIFIED. Also, Complainant
asserts that it owns two United States Trademark Registrations for its GREEN
SEAL CERTIFIED certifications mark.
Complainant informs that on July 5, 1995, domain name the <greenseal.org>
which it owns and uses, was registered.
Complainant alleges that it permits limited use of the GREEN SEAL
CERTIFIED mark on third-party packaging and advertising of products that have
been certified by it. Complainant argues that authorized third parties must use
the GREEN SEAL logo with design elements in close proximity to the word
CERTIFIED. Complainant contends that third parties are not authorized to use
the GREEN SEAL word trademark without first obtaining Complainant’s prior
written consent.
Complainant argues that Respondent has no rights or legitimate
interests in the <greenseal.com>
or <green-seal.com> disputed domain
names. Indeed, Complainant contends that the use of the GREEN SEAL mark in the
disputed domain names constitute a clear attempt to falsely suggest a greater
connection or affiliation with Complainant when no such connection or
affiliation exists. Complainant informs that Respondent is not a licensee.
Complainant also argues that Respondent is attempting to capitalize on
Complainant’s notoriety in the marketplace in order to boost sales of it
products. Complainant contends that this type of predatory, infringing behavior
illustrates that Respondent has no rights or legitimate interests in the <greenseal.com> or <green-seal.com> domain names
under the terms of the Policy.
Complainant states that upon information and belief, Respondent is not
commonly known or identified by the <greenseal.com>
or <green-seal.com> domain
names or the trademark GREEN SEAL. Complainant informs that Respondent’s
registration of the <greenseal.com>
and <green-seal.com> domain
names do not automatically establish a legitimate interest in those domain
names.
Complainant contends that Respondent registered the <greenseal.com> and <green-seal.com> domain names in
bad faith in an attempt to falsely suggest a greater connection or affiliation
with Complainant, confuse consumers, and capitalize on the fame and notoriety
of Complainant and its GREEN SEAL mark. Indeed, Complainant alleges that
Respondent’s registration of domain names containing Complainant’s well-known
mark is evidence of bad faith registration, as registration of a well-known
trademark by a party with no connection to the owner of the trademark and no
authorization and legitimate purpose to utilize the mark is indicative of bad
faith.
Complainant argues that Respondent had actual notice of Complainant’s
GREEN SEAL mark at least as early as October 27, 2003 when Complainant sent
correspondence to Respondent regarding Respondent’s application for Green Seal
certification.
Also, Complainant informs that on August 7, 2006, sent Respondent an
email asking Respondent to transfer the <greenseal.com>
domain name to Complainant. Indeed, Complainant asserts that the waiver
requested by Respondent represented approximately $8,400 in fees that would otherwise
have been paid to Complainant for these certification services. Complainant
also states that in July 2008, counsel for Respondent reiterated its position
that it was willing to transfer the domain names to Complainant in exchange for
a waiver of three product evaluation fees.
In addition, Complainant asserts that while some consumers may
eventually figure out that Respondent is not affiliated with Complainant beyond
having some of its products certified by Complainant if it reads the disclaimer
contained on Respondent’s websites, Respondent will have already succeeded in
using its confusingly similar domain names to attract those consumers for
commercial gain. Also, Complainant alleges that the disclaimer itself is
recognition by Respondent that its use of confusingly similar domain names
attracts consumers seeking Complainant’s website.
To conclude, Complainant states that Respondent’s behavior constitutes
cybersquatting under Section 42(a)(d)(1)(A) of the
Lanham Act, trademark infringement under Sections 32(1)(a) and 43(a) of the
Lanham Act, unfair competition, and bad faith registration and use of the
greenseal.com and green-seal.com domain names under DomainDiscover’s Terms for
Domain Registration and Paragraph 11 of Network Solutions’ Service Agreement.
B. Respondent
First of all, Respondent states that the Complainant and Respondent are
in agreement on several of the factual matters involved in this case, including
the fact that Respondent registered the domain name of <greenseal.com> on December 11, 1999 and has been utilizing
the same since that date. Also, Respondent confirms that registered the domain
name <green-seal.com> on March
15, 2004 and has been utilizing the same since that date. Indeed, Respondent
reiterates that is the manufacturer of several products that have been
certified by the Complainant and for which the Respondent has the right to
advertise as “Green Seal Certified.” Respondent also confirms that it provides
a disclaimer on its website.
Respondent asserts that its uses of disputed domain names are not an
attempt to create the likelihood of confusion. Indeed, Respondent alleges that it
provides a link to the Complainant’s site in order to assist any person who may
have accidently reached the Respondent’s website instead of the Complainant’s
website.
Respondent argues that it has products that are associated with and
have a “Green Seal Certification” and also argues that some of the
certifications predate the registration of the domain names by Respondent.
Respondent states that it has not registered the disputed domain names
in bad faith. Also, Respondent asserts that evidence of such bad faith is
refuted by fact there was no intent on the behalf of the Respondent to acquire
the disputed domain names to sell, rent or otherwise transfer to the
Complainant. Also, Respondent alleges that it is aware that consumers may be
searching for products that have a Green Seal Certification such as those
offered by the Respondent.
Respondent argues that it is not attempting confuse any person by the
use of these names, but, alleges that it does see value in being able to
attract customers that may be looking for its products that are Green Seal
Certified.
Additionally, to address any allegation of bad faith, Respondent states
its acts do not disrupt the business of any competitor.
To conclude, Respondent contends that even though it is not commonly
known by the name of Greenseal, it is commonly associated with the
certification that is made by that organization. Finally, Respondent alleges
that its use of the disputed names is a fair use of those names.
C. Additional Submissions
Complainant submitted an Additional Submission on June 15, 2009. As it
was timely under the National Arbitration Forum’s Supplemental Rule 7, the
Panel decides that this submission should be allowed and given due weight.
In its Additional Submission, Complainant informs that Respondent
argued that it has not registered the domain names at issue in bad faith and
that it was only attempting to capitalize on the legitimate business interest
it had earned by obtaining a “Green Seal Certification” for several of its
products. On the other hand, Complainant contends that Respondent’s attempt to
rationalize its behavior is baseless and does not entitle it to the disputed
domain names.
Complainant asserts that traditional notions of fair use do not permit
the use of a complainant’s mark in a domain name owned by another. Indeed,
Complainant argues that Respondent has no legitimate business interest in the
disputed domain names simply because it has received certifications from them.
Complainant asserts that Respondent puts forth absolutely no evidence
of a legitimate business interest in misdirecting Internet users based on the
disputed domain names. Also, Complainant informs that Respondent submits an
Internet search showing how others advertise that they have “Green Seal
Certified Products.” Nonetheless, Complainant states that not one other
manufacturer with certified products has advertised its certification in a domain
name.
Complainant informs that Respondent and other certificants are
expressly permitted to advertise their certifications. However, Complainant
contends that adopting domain names that misdirect potential clients to
Respondent’s website is not simply advertising. Also, Complainant argues that
it is an unauthorized use of its marks.
Complainant states that Respondent is not an authorized distributor of
its goods and services and that Respondent sells only its
owns products. Also, Complainant alleges that simply because some of
those products are certified by Green Seal does not give Respondent the right
to register domain names that suggest Respondent is Complainant or is somehow
related to Complainant.
The disclaimer, which exists in Respondent’s website, is both legally
and factually deficient to avoid confusion – alleges the Complainant. Also,
Complainant asserts that the addition of a disclaimer does not mitigate
confusion, particularly when the disputed domain name consists of the Complainant’s
mark.
In addition, Complainant asserts that the disclaimer language is
insufficient to mitigate confusion because the disputed domain names suggest a
connection, affiliation or sponsorship.
To conclude, Complainant alleges
that because Respondent admits that users can find its website “by mistake” and
because is fails to disclaim any connection with Complainant, the disclaimer
shows Respondent’s bad faith in both registering and using the disputed domain
names.
FINDINGS
The Panel finds that Complainant owns two
United States Trademark Registrations for its certification marks incorporating
the words GREEN SEAL CERTIFIED, including Reg. Nos. 1,863,375 and 3,092,390.
Reg. No. 1,863,375 is statutorily incontestable pursuant to 15 U.S.C. § 1065.
Complainant’s principal website is located at <greenseal.org>. This
website was registered on July 5, 1995. Thus, <greenseal.org> was
registered before than <greenseal.com>
and <green-seal.com>. Complainant owns and uses the trademark GREEN
SEAL and certification marks incorporating the words GREEN SEAL CERTIFIED and
designs elements to identify and distinguish its services and certification
from services and certifications of others.
On the other hand, Respondent registered its
websites <greenseal.com> and <green-seal.com> only after the
registration of Complainant’s principle website <greenseal.org>.
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.
The Panel finds that the domain names in
dispute are identical to Complainant’s GREEN SEAL mark.
Previous panels have found
that the addition of a hyphen does not sufficiently distinguish a disputed
domain name from a mark. See Health Devices Corp. v.
So, the Panel finds that the Complainant has
established the first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a) (ii) of the Policy. See
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
contends that Respondent is not commonly known by the disputed domain name
because the WHOIS information indicates that Respondent is known as “Core
Products c/o Brent Crawford.” Complainant also asserts that it has never licensed or authorized
Respondent to use the GREEN SEAL CERTIFIED mark in connection with the disputed domain names, although
Respondent is authorized to use the mark in connection with the packaging and
marketing of certain products. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact
information for the disputed domain [name], one can infer that Respondent,
Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in
any derivation.”). Complainant
reiterates this position in its Additional Submission, noting Respondent is not
an authorized distributor of Complainant's goods or services.
Complainant has provided
evidence of Respondent's use of the disputed domain names, which redirect Internet
users to Respondent's own website, where Respondent’s products are advertised,
which reveals Respondent's commercial benefit.
The Panel finds Respondent's use of the confusingly similar disputed
domain names is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent
to divert Internet users seeking Complainant’s website to a website of
Respondent and for Respondent’s benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii).”).
In addition, the Complainant
alleged that Respondent offered to transfer the disputed domain names to
Complainant in exchange for certification service fees totaling approximately
$8,400. The Panel finds this is evidence of Respondent’s lack of rights or
legitimate interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”).
Complainant states Respondent offered to
transfer the disputed domain names to Complainant in exchange for certification
service fees totaling approximately $8400. This fact is evidence of bad faith registration
and use pursuant to Policy
¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA
192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer
to sell the domain name for $2,000 sufficient evidence of bad faith
registration and use under Policy ¶ 4(b)(i)); see also Little Six, Inc. v. Domain For
Complainant asserts Respondent is attempting to profit when using the disputed domain names by falsely suggesting that Complainant is affiliated with the disputed domain names and Respondent's products. Furthermore, the Panel finds that Respondent is attempting to profit from Internet users’ confusion proved that domain names in dispute are quite similar to the GREEN SEAL mark. Therefore, The Panel finds Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
In addition,
Complainant alleged that by the time Respondent registered the domain names in
dispute it already had the knowledge of Complainant’s rights in GREEN SEAL mark,
as many applications of several of Respondent’s products had been submitted to
Complainant for certification. Once proved that, the Panel finds that
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(a) (iii). See Yahoo! Inc. v.
To conclude, in its
Additional Submission, Complainant contends that Respondent’s use of a
disclaimer in its website is insufficient to dispel Internet users’ confusion
as to Complainant's affiliation with the websites resolving from the disputed
domain names. The Panel finds the use of a disclaimer does not mitigate a
finding of bad faith registration and use under Policy ¶ 4(a)(iii).
See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”). Even if Internet users read the disclaimer and go to Complainant’s
real website, Respondent will have reached its purpose of misleading
Complainant’s clients and exposing them to its own products and ads.
Finally, the Panel finds
that the Complainant has established the third element of the Policy.
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 <greenseal.com> and <green-seal.com>
domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: July 01, 2009
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