Interstate Battery System
International, Inc. v. Little Lambs, Inc.
Claim Number: FA0906001265748
PARTIES
Complainant is Interstate Battery System International,
Inc. (“Complainant”), represented by Christopher S. Willis,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interstatefundraising.com>, registered
with Godaddy.com,
Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically May 29, 2009; the National
Arbitration Forum received a hard copy of the Complaint June 4, 2009.
On June 1, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <interstatefundraising.com> domain
name is registered with Godaddy.com, Inc.
and that Respondent is the current registrant of the name. Godaddy.com,
Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 10, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 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@interstatefundraising.com by e-mail.
Respondent's Response was received
in hard copy on June 30, 2009, but the electronic copy was not received until July 1,
2009. However, because
the electronic copy was received after the Response deadline, the Response
is considered deficient under ICANN Rule 5.
On July 7, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this matter:
1. The domain name that Respondent registered, <interstatefundraising.com>,
is confusingly similar to a mark in which Complainant has exclusive rights.
2. Respondent has no rights to or legitimate
interests in the domain name in question that contains Complainant’s protected
mark.
3. Respondent registered and used the disputed
domain name in bad faith.
B. Respondent did not file a timely response;
however the Panel elected to review the Response to determine if it’s full
consideration would require a result that was different from the one issued
here.
Preliminary Issue:
Deficient Response
Respondent’s Response was received in electronic copy after the Response deadline and a hard copy of the Response was not received. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
The Panel, at its discretion, and
preferring substance over procedure, chooses
to accept and review the Response. See
Clear!BlueHoldings, LLC. V. NaviSite, Inc., FA888071 (Nat. Arb. Forum Mar. 5, 2007)
(deciding to consider the respondent’s response even though it was deficient
because it provided useful information to the panel in making its decision);
see also J.W. Spear &
Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17,
2003) (finding that where 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”).
FINDINGS
Complainant established
rights in the INTERSTATE mark dating back at least as early as 1966, with first
use in commerce shown as 1953.
Included in Complainant’s
advertised area of commerce is Interstate Batteries’ “fundraising program.”
Respondent knew at least by
February 2008 of Complainant’s fundraising activities.
In that month, Respondent
approached Complainant about a cooperative activity in fundraising.
On April 21, 2008,
Respondent registered the disputed domain name.
The disputed domain name
contains Complainant’s protected mark in its entirety and adds the descriptive
word “fundraising.”
The domain name is
confusingly similar to Complainant’s protected mark.
The Respondent has not shown
rights in the mark or a bona fide
use.
Given Respondent’s overtures
to Complainant, bad faith registration and use is shown by Respondent’s
purposeful use of the mark of another to register a domain name and
Respondent’s opportunistic invasion of the goodwill associated with
Complainant’s mark in Complainant’s area of commerce in an attempt to compete
with Complainant using Complainant’s own mark.
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 Complainant to 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) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) Respondent registered and used the disputed domain
name in bad faith.
Complainant established rights in the INTERSTATE mark under
Policy ¶ 4(a)(i) through its numerous registrations of this mark and related
marks with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg.
No. 843,147 issued December 26, 1967). See Miller Brewing
The <interstatefundraising.com>
domain name
contains Complainant’s entire mark, and adds the descriptive term
“fundraising,” which describes a portion of Complainant’s business, and adds
the generic top-level domain (“gTLD”) “.com.”
The disputed <interstatefundraising.com>
domain name is confusingly similar to Complainant’s INTERSTATE mark under
Policy ¶ 4(a)(i). See Oki Data Ams.,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding that the addition of the generic term “finance,” which
described the complainant’s financial services business, as well as a gTLD, did
not sufficiently distinguish the respondent’s disputed domain name from the
complainant’s mark under Policy ¶ 4(a)(i)); see
also Jerry Damson, Inc. v. Tex. Int’l Prop.
Assocs., FA 916991 (Nat. Arb. Forum
Apr. 10, 2007) (“The mere addition of a generic top-level domain
(“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from
the mark.”).
While
Respondent contends that the <interstatefundraising.com> domain name
is comprised of common, descriptive terms and as such cannot be found to be
confusingly similar to Complainant’s mark, such a determination is not
necessary under an analysis of ICANN 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.”).
While Respondent alleges that the <interstatefundraising.com> domain name is comprised of generic terms, this argument is inapplicable to Policy ¶ 4(a)(i), but will be discussed in greater detail in the analysis of Policy ¶¶ 4(a)(ii) and (iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶
4(a)(i).
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). Once
Complainant does so, the burden shifts to Respondent to show it does have
rights to 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.”).
Both Complainant and Respondent
offer fundraising products although the products themselves differ. The issue is whether Respondent’s use of the disputed domain name constitutes
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). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003)
(finding that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a
domain name for commercial benefit by diverting Internet users to a website
that sold goods and services similar to those offered by the complainant and
thus, was not using the name in connection with a bona fide offering of
goods or services nor a legitimate noncommercial or fair use).
The
WHOIS information lists Respondent as “Little Lambs, Inc.” and Respondent does not assert it
is commonly known by the <interstatefundraising.com>
domain name. Complainant contends that Respondent is not commonly
known by the disputed domain name. The Panel
agrees. Respondent is not known by the <interstatefundraising.com>
domain name under Policy ¶
4(c)(ii). See Bluegreen Corp. v.
eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent
was not commonly known by the disputed domain names where it maintained the
domain name registrations on the complainant’s behalf and then appropriated the
disputed domain names for itself, without permission from the complainant); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Complainant established a prima facie case to
support its arguments that Respondent lacks rights and legitimate interests
under Policy ¶ 4(a)(ii). See SEMCO Prods.,
LLC. V. dmg world media (
Respondent contends
that the <interstatefundraising.com> domain name accurately describes the goods and
services Respondent offers, and that this evidences Respondent’s rights to and
legitimate interests in the disputed domain name. The Panel disagrees. Respondent knew prior to registering the disputed
domain name that Complainant had protected rights in the INTERSTATE mark. Respondent concedes that the parties
negotiated a possible cooperative effort. The parties did not reach such an
agreement. Thereafter, Respondent
registered the disputed domain name.
Respondent claims that
it made demonstrable preparations to use the disputed domain name in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). Contrary to
Respondent’s contention that it thereafter engaged in bona fide use by selling its fundraising products, Respondent
submitted no documentary proof to show any bona fide use of the domain
name. Respondent did not show rights to
or legitimate interest in the domain name.
Respondent
also argues that the terms of the <interstatefundraising.com> domain name are generic and of common use and
therefore, Complainant does not have an exclusive monopoly on the terms on the
Internet. Under other uses, even in
domain names, such allegations may be established by a Respondent that did not
opportunistically invade the rights of another to use of a protected mark. But here, Respondent knowingly used
Complainant’s mark in a domain name that it intended to use to compete with
Complainant.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent
registered the <interstatefundraising.com> domain name primarily for
the purpose of preventing Complainant from reflecting its INTERSTATE mark in a
corresponding domain name. The Panel agrees.
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(ii). See Kabushiki
Kaisha Toshiba v. Tel. Island, D2004-0711
(WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain
name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in
a corresponding domain name); see also Albertson's,
Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(ii) in the respondent’s registration of the
<albertsonscoupons.com> and <albertsons-coupons.com> domain
names because the respondent “registered the domain names in order to
prevent Complainant from registering its common law ALBERTSON’S COUPON mark in
a corresponding domain name”).
Both Complainant and Respondent offer fundraising products and some of them are similar according to the registration certificates and some not based on the allegations. Complainant asserts that Respondent registered and is using the <interstatefundraising.com> domain name primarily for the purpose of disrupting Complainant’s business. Again, the Panel agrees. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant contends that Respondent’s use of the <interstatefundraising.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name. Given Respondent’s
actions after the two failed to reach an agreement on a cooperative fundraising
effort, it may be presumed that
Respondent knew of Complainant’s rights in a publicly registered mark and
Complainant’s lack of consent to Respondent’s registration and use of a domain
name containing Complainant’s protected mark in order to engage in the same
area of commerce. Under an analysis of Policy
¶ 4(b)(iv), such actions support findings of bad faith registration and use. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); 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).
Respondent urges that Complainant failed to set out each of the four specified elements of bad faith in Policy ¶ 4(a)(iii). While the Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, this list merely illustrates possible situations that demonstrate bad faith. The Panel looks to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
The Panel finds
that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
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 <interstatefundraising.com> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 22, 2009.
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