MM Herman & Associates,
LLC v. Black Knight Publishing c/o Black Knight
Claim Number: FA1005001324437
PARTIES
Complainant is MM Herman & Associates, LLC (“Complainant”), represented by Daniel
B.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swinefluarmour.com>, registered with
FASTDOMAIN,
INC.
PANEL
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.
PROCEDURAL HISTORY
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
postmaster@swinefluarmour.com. 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.”
FINDINGS
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.
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.”
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
the <swinefluarmour.com>
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,
Inc. v.
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.
DECISION
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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