Dynaflex International, Inc.
v. Elive Ltd c/o NA NA
Claim Number: FA0912001298818
PARTIES
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.
PANEL
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,
as Panelist.
PROCEDURAL HISTORY
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
postmaster@powerballs.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.
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.
DECISION
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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