MM Herman & Associates, LLC v. Black Knight Publishing c/o Black Knight
Claim Number: FA1005001324437
Complainant is MM Herman & Associates, LLC (“Complainant”), represented by Daniel
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swinefluarmour.com>, registered with FASTDOMAIN, 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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010.
On May 13, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <swinefluarmour.com> domain name is registered with FASTDOMAIN, INC. and that the Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 May 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on May 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 26, 2010.
On June 2, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, MM Herman & Associates, LLC (“MM Herman”), is in the business of providing specialty emergency supplies for pandemic influenza preparedness. Complainant argues that due to its continued use and the widespread recognition of the FLU ARMOUR mark in connection with these supplies since February 16, 2006 it has established common law rights in the mark.
Complainant claims that it has filed several applications for trademarks related to its business. Complainant asserts that it has a pending trademark application for the FLU ARMOUR mark with the United States Patent and Trademark Office (“USPTO”) that has been published for opposition (e.g., Serial No. 77,826,359 filed September 15, 2009) and that, to date, Complainant has received no evidence of a conflicting right to the FLU ARMOUR mark. The USPTO applications list a first use in commerce date of February 16, 2006 for Complainant’s mark.
Complainant states that the FLU ARMOUR mark was featured twice in the New York Times during the H1N1 (“swine flu”) outbreak in 2009. Additionally, the Complainant attests that the FLU ARMOUR mark was shown on ABC News during the H5N1 (“bird flu”) outbreak in 2006. Complainant avers that its customers include the Centers for Disease Control and Prevention, Marriott Hotels, Amgen, NYC Transit Authority, and the U.S. Department of Homeland Security. Complainant asserts that its website <fluarmour.com> has received millions of hits and remains a major driver of Complainant’s business.
Complainant alleges that Respondent uses the disputed <swinefluarmour.com> domain name for no legitimate business purpose other than to advertise for FLU ARMOUR’s chief competitors by running hyperlinked advertisements atop every page of its website. (See, e.g., Exhibits A-F). Complainant asserts that this advertising practice allows its competitors to capture profit, consumer interest, and goodwill that would otherwise have gone to <fluarmour.com>.
Complainant avers that the competitive advertising on <swinefluarmour.com> confuses consumers as to the source of Complainant’s products and drives business away from Complainant’s site and to its competitors. Further, Complainant asserts that Respondent did not establish its website until years after the FLU ARMOUR brand became successful and that Respondent cannot claim any prior right to the FLU ARMOUR mark. In addition, Complainant argues that Respondent profits from the disputed domain name in click-through revenue generated when visitors use the posted hyperlinks.
Complainant asserts that Respondent does not have a legitimate business purpose because the website does not offer any products for sale nor does it list product prices, quantity options, shipping costs, or product information. (See Exhibits A-F). Additionally, Complainant argues that the “only logical reason for choosing the <swinefluarmour.com> domain name is the diversion of traffic from <fluarmour.com>.” Also, Complainant attests that Respondent does not make a non-commercial or fair use of the domain name because, while the website does contain a few articles and educational hyperlinks, these are not updated nor do they hold a prominent position on the website.
Moreover, Complainant attests that Respondent’s use of its website “tarnishes and dilutes” the FLU ARMOUR mark by using it in connection with a toy pig nose and that consumers are bound to question whether FLU ARMOUR sells pandemic preparedness supplies or whether FLU ARMOUR takes the influenza pandemic seriously.
Respondent acknowledges that it is “fully willing to surrender control of <swinefluarmour.com>” to Complainant. Respondent avers that Respondent’s Authorized Representative’s former employer, FAC International, Inc. (“FAC”), initially acquired the domain name in order to sell respirators and medical facemasks for the swine flu pandemic. Respondent asserts, however, that the business “never left the planning stages” and was never used to conduct sales of pandemic preparedness supplies. Respondent claims that FAC decided, instead, to use the website “to run advertisements for companies that do sell respirators and masks” and to start selling toy pig noses. Further, Respondent states that “the site’s only real function was to run Google advertisements for companies offering swine flu-related products and services.” Also, Respondent acknowledges that while the website did contain news-related information, it was never updated.
Respondent admits that “Swine Flu Armour” never became “an established company or brand,” that it was “merely a domain name that was chosen to capitalize on the surging interest in swine flu and swine flu preparedness,” and “that <swinefluarmour.com> is confusingly similar to <fluarmour.com>.” Additionally, Respondent admits that “the disputed domain stands to siphon business from Complainant,” “the site both tarnishes and dilutes the FLU ARMOUR mark,” and that Complainant “is and always has been … the true and actual owner of the FLU ARMOUR mark.”
Notwithstanding the Respondent’s concessions, this Panel finds that it cannot transfer the domain name to Complainant without making findings and rendering a decision on the merits.
The Panel finds that Complainant has provided sufficient evidence to establish that the Domain Name is confusingly similar to Complainant’s applied-for but unregistered common-law mark.
The Panel finds that Respondent fails to rebut Complainant’s showing that Respondent lacked rights or a legitimate interest in the Domain Name.
Moreover, the Panel finds that Complainant has established that Respondent registered and currently uses the Domain Name in bad faith at the Complainant’s expense.
The Panel grants Complainant’s request for transfer because Complainant has produced sufficient evidence to prove all three elements required under Paragraph 4(a) of the Policy.
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.”
A. Consent to Transfer
Respondent consents to transfer the <swinefluarmour.com> domain name to Complainant. After this proceeding was initiated, however, FastDomain Inc. (“FastDomain”) placed a hold on Respondent’s account. Therefore, Respondent cannot transfer the disputed domain name while this proceeding is pending.
Some panels have found that they could forego the traditional UDRP analysis and immediately transfer the disputed domain name to Complainant upon Respondent’s consent. See Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”); accord Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant … Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make finding of fact or of compliance (or not) with the Policy.”)
Here, however, the Panel finds that Complainant has not, implicitly or otherwise, consented to the transfer of the domain name without a decision on the merits. As a matter of the Policy’s procedural rules, as well as to minimize the risk that the “consent-to-transfer” approach might allow cybersquatters to avoid adverse rulings against them, several panels have held that a merits decision is required. In Graebel Van Lines v. Texas International Property Associates, for example, the panel explained:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
FA 1195954 (Nat. Arb. Forum July 17, 2008). This panel finds that the Policy so requires, and accordingly will proceed to analyze the case under the elements of the UDRP.
B. UDRP Claim
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.
Although Complainant has not registered the FLU ARMOUR mark with the USPTO, the Panel finds that Complainant does have rights in the mark. Trademark registration is not necessary for the purposes of Policy ¶ 4(a)(i) when Complainant presents evidence of continuous use and the establishment of secondary meaning that demonstrates common-law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if Complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The Panel finds that Complainant’s evidence of continuous use, pending application with the USPTO, media coverage, millions of hits at its website and high-profile customers, taken together suffice to support a finding of common law rights in the FLU ARMOUR mark pursuant to Policy ¶ 4(a)(i). See Tuxedos by Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty. Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the Complainant established common law rights in the STELLAR CALL CENTERS mark because Complainant demonstrated that its mark had acquired secondary meaning).
Next, the Panel finds that Respondent’s <swinefluarmour.com> domain name is confusingly similar to Complainant’s FLU ARMOUR mark because Respondent’s only change to the mark is to add the descriptive term “swine.” The addition does nothing to diminish the confusing similarity because the term bears an obvious relationship to Complainant’s mark and business. Furthermore, the generic top-level domain (“gTLD”) “.com” does not cure the confusion and is insufficient to distinguish the disputed domain name from Complainant’s mark acording to Policy ¶ 4(a)(i). See Am. Express Co. V. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Furthermore, Respondent makes no contentions regarding Policy ¶ 4(a)(i) and admits that <swinefluarmour> is confusingly similar to <fluarmour.com> and the FLU ARMOUR mark. For these reasons, Respondent fails to rebut the finding that Respondent’s domain name is confusingly similar to Complainant’s FLU ARMOUR mark.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <swinefluarmour.com> domain name under Policy ¶ 4(a)(ii), and that Respondent fails to meet its burden of showing rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to 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.”).
Respondent is not commonly known by the <swinefluarmour.com> domain name. The WHOIS information for the disputed domain lists the registrant as “Black Knight Publishing c/o Black Knight,” which does not make any nominal association between Respondent and the disputed domain name. The Panel finds that Respondent is not identified by the disputed domain name, which signals a lack of rights and legitimate interests according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July7, 2006) (concluding that the Respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the Respondent was commonly known by the disputed domain names, and Complainant had not authorized the Respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the Respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that Respondent was commonly known by the domain names in dispute).
Additionally, Complainant contends and Respondent admits that the <swinefluarmour.com> website is used only for two purposes: advertising hyperlinks to Complainant’s competitor pandemic preparedness providers and purportedly selling fake pig noses. The Panel finds that the offering for sale is not a bona fide offering of goods, however, because, as Respondent admits, consumers cannot actually purchase the noses, and there is no valid contact information listed on the website. Furthermore, Respondent admits that even though its website contains a few educational articles and links, it does not make a legitimate noncommercial or fair use of the site because the links and information have not been updated, and they are not a prominent aspect of the website. Moreover, Respondent “acknowledges that Complainant is … the true and actual owner of the ‘Flu Armour’ mark” and makes no further contentions regarding Policy ¶ 4(a)(ii).
For these reasons, and in particular the presence of hyperlinks to Complainant’s competitors, the Panel finds that Respondent does not make a bona fide offering of goods or services sufficient to establish legitimate rights or interests under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that Respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with Complainant was 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where Respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Consequently, Respondent fails to meet its burden under Policy ¶ 4(c).
The Panel finds that Respondent uses the <swinefluarmour.com> domain name in bad faith because the website’s primary function is to promote links to Complainant’s competitors. Complainant argues and Respondent agrees that the website “stands to siphon business from Complainant, and that the site both tarnishes and dilutes the FLU ARMOUR mark.” These actions disrupt Complainant’s business and reveal bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of Complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where Respondent used the disputed domain name to operate a commercial search engine with links to the Complainant’s competitors).
Likewise, the Panel finds that Respondent’s use of Complainant’s mark in
domain name to attract Internet users for its own commercial gain demonstrates
bad faith registration and use according to Policy ¶ 4(b)(iv). Respondent
benefits from its appropriation
of Complainant’s FLU ARMOUR mark and diversion of Complainant’s customers to
Respondent’s website because the hyperlinks advertised on Respondent’s webpage
generate click-through revenue for Respondent.
In addition, Respondent maintains such use of the disputed domain name
in order to attract Complainant’s customers and then create confusion as to
Complainant’s association with the links displayed on Respondent’s
webpage. See Zee TV
USA, Inc. v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006) (finding that the Respondent
engaged in bad faith registration and use by using a domain name that was
confusingly similar to Complainant’s mark to offer links to third-party
websites that offered services similar to those offered by Complainant); see also Asbury Auto. Group,
Therefore, for the reasons discussed above, the Panel finds sufficient basis for the finding that Respondent used and registered the <swinefluarmour.com> disputed domain name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swinefluarmour.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: June 16, 2010
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