Dynaflex International, Inc. v. Elive Ltd c/o NA NA
Claim Number: FA0912001298818
Complainant is Dynaflex International, Inc. (“Complainant”), represented by Clement Cheng, of Clement Cheng, Attorney at Law, California, United States. Respondent is Elive Ltd c/o NA NA (“Respondent”), represented by Jason Stratford-Lysandrides, of BPE Solicitors LLP, United Kingdom
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powerballs.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael Albert, as Panel Chair, James A. Carmody, as Panelist, and James Bridgeman,
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 14, 2009.
On December 14, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <powerballs.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 11, 2010 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 11, 2010.
On January 25, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael Albert, James A. Carmody, and James Bridgeman, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Complainant and respondent both sell the same products, namely gyroscopic wrist exercisers; that both parties’ wrist exercisers have similar construction and similar color scheme; and that Respondent copied Complainant’s trade dress.
Complaint further contends that it owns the trademark POWERBALL (US Reg. #2,666,631) and patents such as United States patent 5,800,311. It alleges that Respondent’s products infringe on its trademark and competes against Complainant by selling competing infringing products in the United States.
Complainant alleges that Respondent, which operates in Ireland, lacks rights or legitimate interests in the mark and does not have an Irish trademark registration.
Respondent acknowledges that both parties sell the same or similar products, namely a gyroscopic wrist exerciser sold under the POWERBALL mark, and manufactured by a Taiwanese company.
Respondent disputes Complainant’s rights to the United States trademark and further disputes the ancillary allegations relating to patents and other matters.
Respondent further contends that it is a legitimate re-seller in Ireland of genuine POWERBALL products made by the same manufacturer whose products Complainant re-sells in the United States.
Respondent alleges, and provides evidence, that it or its predecessor in interest has been selling these products since 1998, which is prior to Complainant’s United States trademark registration.
It appears that both parties purchase and sell the same item manufactured by the same Taiwanese company and, as suggested by Respondent, they are respectively the United States and Irish distributors for the Taiwanese product. The parties appear to have known of each other’s existence for at least the past six years.
Respondent's predecessor in interest registered the <powerballs.com> domain name in November of 1998.
The Taiwanese manufacturer of the POWERBALL product made at least one sale of these items into the United States as early as March of 1998.
Complainant’s United States trademark registration for POWERBALL is dated December 2002 and claims a date of first use and first use in commerce of January 1999.
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.
Through its United States trademark registration, Complainant has established legal rights in the POWERBALL mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant has further established that the disputed domain name is confusingly similar to its registered mark, as the two differ only by the addition of the plural “s” and of the top-level domain “.com” – both of which distinctions are routinely held not to obviate confusion under Policy ¶ 4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed domain names failed to avoid the confusing similarity between the domain names and the complainant’s mark pursuant to Policy ¶ 4(a)(i)); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).
Complainant must first make a prima facie showing 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).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information indicates the registrant is known as “Robert Mollers.” 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is using the disputed domain name to market gyroscopic wrist exercisers that compete with Complainant’s sales of the same product and that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website). Complainant further has offered some evidence that Respondent’s products may be marketed into the United States.
Accordingly, Complainant appears to have met its obligation to make a prima facie case that Respondent lacks rights or legitimate interests in the domain name.
Respondent, however, has rebutted that case with sufficient evidence that its use of the mark is legitimate, and indeed has pre-dated Complainant’s domain name registration, trademark registration, and even its own first use of the mark. Complainant claims first use of the mark in 1999. Respondent has shown evidence of first use in 1998.
Indeed, Respondent’s predecessor-in-interest registered the disputed domain name on November 9, 1998. Complainant has not alleged or provided evidence of rights in its POWERBALL mark prior to that date. Accordingly, Respondent has established rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Complainaint having failed to establish that Respondent lacks rights or legitimate interests in the domain name, the issue of bad faith registration and use is moot. Nevertheless, for the reasons noted in the section above, Complainant has likewise failed to establish bad faith registration and use. Respondent could not have registered the domain in bad faith in 1998 inasmuch as Complainant's first claimed use was 1999.
Complainant having failed to establish two of the three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panel Chair
James A. Carmody, Panelist
James Bridgeman, Panelist
Dated: February 15, 2010
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