Green Seal, Inc. v. Core Products c/o Brent Crawford
Claim Number: FA0905001261982
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.
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 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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>.
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).
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.
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page