Luminous Media Limited v. Brett Hamlin
Claim Number: FA1009001344967
Complainant is Luminous Media Limited ("Complainant"), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Brett Hamlin ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tqualizers.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2010; the National Arbitration Forum received payment on September 7, 2010.
On September 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the tqualizers.com domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@tqualizers.com. Also on September 8, 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 September 28, 2010.
Complainant’s Additional Submission was received on October 4, 2010 and deemed compliant with Supplemental Rule 7.
On October 13, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Luminous Media Limited ("Luminous Media"), was established in 2005;
it is currently the world's leading manufacturer of dynamic advertising and marketing products that use electroluminescence technology. Complainant is headquartered in Hong Kong, and has a network of distributors in 23 countries to sell and market its trademarked products.
Complainant maintains an extensive Internet presence, including the following websites used to market its various products: <tqualizer.biz>; <flashwear.com>; and <eluminousmedia.com>.
Complainant’s trademark application was published for opposition on January 12, 2010, and Complainant's first use in commerce of the trademark T-QUALIZER was March 2006. Each of these events occurred prior to Respondent registering the disputed domain name <tqualizers.com>.
Complainant e-mailed Respondent notifying Respondent of its trademark rights in the mark T-QUALIZER, and requesting that Respondent cease use of the disputed domain name. Respondent replied to Complainant, stating that it "cannot comply with [Complainant's] request" and, further stated, "I would advise against making any further claims to the domain name tqualizers.com as it will be a waste of your time and of your clients money."
Complainant owns United States Trademark Reg. No. 3,766,098 for T-QUALIZER, registered on March 30, 2010, in international class 25. Thus, Complainant has established its rights in the T-QUALIZER trademark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO, and through its continuous use of the trademark since March 2006.
The disputed domain name is confusingly similar to Complainant's mark. The disputed domain name incorporates the entirety of Complainant's mark and merely adds an additional letter "s" at the end of the mark, as well as a generic top-level domain ".com". Such minor differences do not serve to distinguish the disputed domain name from Complainant's TQUALIZER trademark. The disputed domain name does not include a hyphen as between the "T" and "EQUALIZER" portions of Complainant's trademark. However, this minor difference is also insufficient to distinguish the disputed domain name from Complainant's mark.
The disputed domain name resolves to a website that offers goods in direct competition with Complainant's trademarked goods. Complainant owns the website <tqualizer.biz> where it markets and sells T-shirts that have electroluminescent graphics that animate with, and respond to, sounds and music. Furthermore, Complainant owns another website, <flashwear.com>, which also sells the above-mentioned electroluminescent T-shirts. On its website, Respondent states that it is the "Home Of The Equalizer Music Shirt That Flashes With The Music". There are extremely close similarities between Complainant's trademarked T-shirts and Respondent's T-shirts sold on the disputed domain name.
Respondent's domain name resolves to a website that offers electroluminescent T-shirts for sale that are in direct competition with Complainant. The Respondent presumably profits from the sale of these T-shirts. Thus, Respondent's use of the disputed domain name does not constitute 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).
There is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent is only known as “Brett Hamlin", as shown in the WHOIS information provided by Registrant.
Respondent registered the disputed domain name on January 30, 2010, shortly after
Complainant's T-QUALIZER trademark application was published for opposition on January 12, 2010. Complainant registered its <tqualizer.biz> domain name on October 19, 2006.
Respondent registered the disputed domain name with knowledge of Complainant's
trademark and website that sells electroluminescent T-shirts. The domain name resolves to Respondent's commercial website that offers electroluminescent T-shirts for sale that are in direct competition with Complainant. The diversion of Internet users to Respondent's confusingly similar disputed domain name disrupts Complainant's business and thus, constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
In addition, Respondent is using the disputed domain name to generate revenue through its offering of competing T-shirts and by confusing Internet users as to Complainant’s affiliation with the disputed domain name and resolving website. Thus, Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Respondent registered the domain name with actual knowledge of Complainant’s rights in the T-QUALIZER mark. Because of the obvious similarities in the layout and color scheme of Respondent's website, and the products and information contained on Respondent's website, with that of Complainant's <tqualizer.biz> website, it can reasonably be inferred that Respondent had actual knowledge of Complainant’s trademark rights. Registration of a domain name that is confusingly similar to another’s mark in spite of knowledge of the mark holder’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent contends as follows:
Complainant’s trademark application was published for opposition on January 12, 2010, but note that the trademark did not become official and was not entered into the registrar until March 30, 2010. This was after Respondent registered its domain name and after it established an Internet presence and began selling shirts online.
Complaint’s claimed unsuccessfully attempt to settle this dispute amicably with Respondent was more of a demand to hand the Complainant our domain name over.
Respondent fails to see how the Complainant has proved that we do not offer a bona fide offering of goods or services. The website markets and sells its custom branded shirts thus providing a bona fide offering of goods.
Respondent has a legitimate interest in the at-issue domain name. Respondent’s logo is modeled after our domain name (The ‘T’ and ‘Q’ corresponds to Respondent’s domain name tqualizers.com which further proves Respondent has a legitimate interest in the at-issue domain name.
Complainant “trademarked T-shirts” is a false statement. The T-shirts they sell branded as their “t-qualizer” shirts are in fact generic shirts that are found on manufacturer’s websites. Other manufacturers are manufacturing and selling the exact same shirts as the Complainants “trademarked” shirts.
Respondent is not commonly referred to as “Brett Hamlin.” Nowhere on Respondent’s website does it say “Brett Hamlin” and the only place it can be found is in the WHOIS database. Customers going to our website can see Respondent’s logo (which is very different from the complainants logo) and is displayed at the top of every page on our site. It is much more likely for a visitor to know us by our domain name and not the name “Brett Hamlin.”
Furthermore, Respondent has a significant Internet presence which is commonly referred to as our domain name including having 5 of the top 10 search results for “tqualizers.”
Respondent suggests that the Complainant is the one acting in bad faith and trying to hijack Respondent’s domain name. This is because they have had an online Internet presence for 4 years and have had ample opportunity to buy the domain name tqualizers.com. If Complainant felt it was such an important part of their identity they would have bought the most common gTLD (generic top level domain) which would be .com.
Complainant is trying to profit from Respondent’s success selling custom branded shirts and wishes to hijack Respondent’s domain name because of that.
If you use Google to search for “tqualizers,” you will see Respondent comes up first and second in the unpaid pure organic search. The Complainant comes up 4th after the YouTube videos results.
Complainant is also acting in bad faith and trying to hijack our domain because they have not registered their actual trademarked name of tqualizers.com.
The Complainant’s trademark did not become official until after Respondent established an Internet presence. Therefore it is unreasonable to say that Respondent had prior knowledge of their trademark submission when Respondent purchased its domain name.
Just because the Complainant uses a black background and we use a black background does not make it confusingly similar. These shirts are meant to be worn at night, so using a black background makes sense.
Respondent has a legitimate interest because: It has money and time invested in its website. Respondent’s shirts come sold with our “t-qualizers” logo and apparel tag.
Changing Respondent’s domain would effectively put Respondent out of business. Respondent would have to change its logo, shirt tags, business cards, shirt packaging, and rebuild a new Internet presence. We have our own custom branded shirts.
The Complainant must know this since they also sell shirts online.
Respondent has had no contact with the complainant other than when they contacted us about our domain name.
There is no mention of Complainant on Respondent’s website. Respondent has been selling its own custom branded shirts.
Complainant has had 4 years to register the at-issue domain and have not. The brand they are trying to build is "flashwear" because they have trademarked that name as well and have also registered the website www.flashwear.com on April 11, 2002.
The “flashwear” website sells the exact same shirts as the tqualizer.biz website. If they feel we are infringing on "their brand" then there is a bit of confusion as to what their brand actually is.
C. Additional Submissions
Complainant additionally contends as follows:
A trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) so long as Complainant produces evidence to show that it owns common law rights in its mark. Complainant had established common law trademark rights in the mark T-QUALIZER prior to Respondent’s registration of the disputed domain name. Complainant registered the domain name <tqualizer.biz> on October 19, 2006.
Complainant has since been continuously using the domain name to promote its electroluminescent shirt line. Complainant’s <tqualizer.biz> website as of March 1, 2007, and July 8, 2008, respectively, show Complainant offering for sale its trademarked shirt line year over year after registering <tqualizer.biz>.
Thus, Complainant had been using the mark T-QUALIZER in commerce continuously for years before Respondent registered the disputed domain name on January 30, 2010.
Furthermore, Complainant’s mark has acquired secondary meaning; the public associates the term T-QUALIZER with Complainant and Complainant’s shirts. On October 17, 2006, Complainant’s T-QUALIZER shirt was featured by TechTV correspondent Chi-Lan Lieu on the Ellen DeGeneres Show. On October 24, 2006, a representative from the Ellen DeGeneres Show emailed Complainant thanking Complainant for providing its shirts for the episode, and stating that “[t]he shirts were a big hit. Hooray!” The Ellen DeGeneres Show is a nationally syndicated talk-show that averages approximately 3.4 million viewers per episode.
October 9, 2007, Complainant’s T-QUALIZER line was featured on the Montel Williams show. The Montel Williams show was a nationally syndicated talk-show that averaged 3.9 million viewers per episode. On October 5, 2007, a production assistant from the Montel Williams show emailed Complainant to announce the airing of the show featuring Complainant’s shirt.
In addition, various celebrities have worn Complainant’s shirt in public, such as Fergie of the international pop music group The Black Eyed Peas, Aziz Ansari on NBC’s hit show Parks and Recreation, and the cast of the hit MTV show Jersey Shore. Thus, the widespread media attention and recognition of Complainant’s T-QUALIZER mark is evidence of secondary meaning in the public.
Complainant owns its own factory in China that manufactures shirts solely for Complainant. Furthermore, Complainant's shirts are very unique, and Complainant expended large sums of money and effort to ensure that its shirts bearing the T‑QUALIZER mark are not confused for lower-quality, imitations.
Complainant does not sell a generic product that is similar to the imitations. On the other hand, Complainant operates at a high cost a dedicated factory to produce its distinctive trademarked shirts that have unique differences to set it apart from the imitating shirts sold on Respondent's website.
Furthermore, since 2006 to January 2010, Complainant's website <tqualizer.biz> has received several hundred thousand visitors, and Complainant has generated considerable revenues during this time from sales of its T-QUALIZER brand.
Complainant holds a USPTO registration for the mark T-QUALIZER.
Complainant’s trademark rights in T‑QUALIZER predate Respondent’s registration of the at‑issue domain name.
Respondent’s website, which is referenced by the at‑issue domain name, offers products which directly compete with Complainant’s products.
Respondent knew, or should have known, of Complainant’s trademark rights at the time it registered the at-issue domain name.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant, Luminous Media Limited, asserts rights in the T‑QUALIZER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (United States Trademark Reg. No. 3,766,098 for T-QUALIZER, registered on March 30, 2010, in international class 25).
The Complainant’s trademark registration sufficiently proves Complainant’s rights in the T-QUALIZER mark pursuant to Policy ¶ 4(a)(i) dating back to February 4, 2009. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that Respondent’s <tqualizers.com> domain name is confusingly similar to its T‑QUALIZER mark. The Panel agrees. The at-issue domain name removes the hyphen from Complainant’s mark and adds the letter “s” and the generic top-level domain (“gTLD”) “.com.” These alterations do not sufficiently differentiate the domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also 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 <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Although Respondent contends that the <tqualizers.com> domain name is comprised of a common and generic term and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under 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.”).
The Panel thus concludes that the <tqualizers.com> domain name is confusingly similar to Complainant’s T-QUALIZERS mark pursuant to Policy ¶ 4(a)(i).
In practice, a panel’s inquiry concerning Policy ¶4(a)(ii) is two‑tiered. Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The threshold for such showing is low. 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). Once Complainant establishes a prima facie case the burden effectively shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name. “WHOIS” information identifies the domain name registrant as “Brett Hamlin,” a name which is not similar to the <tqualizers.com> domain name. There thus is evidence that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Additionally, Complainant has not authorized Respondent to use its mark or to register a domain name incorporating such mark. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 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 the complainant had not authorized the respondent to register a domain name containing its registered mark). As such, Complainant carries its slight initial burden and establishes a prima facie case supporting the conclusion that Respondent lacks of rights and interest under Policy ¶4(a)(ii).
Respondent contends that although the disputed domain name’s “WHOIS” record does not list the same name as registrant as the disputed domain name, it is nevertheless known as T‑Qualizers for the purposes of Policy 4(a)(ii). Respondent claims that it does not conduct business under the name “Brett Hamlin” -the registrant listed in the “WHOIS” information- but instead operates under its logo “TQ” and the disputed domain name. Respondent’s logo and domain name appear at the top of every page on its website. In this sense, according to Respondent, Respondent is commonly known by the <tqualizers.com> domain name. See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names). However, aside from Respondent’s claim there is no evidence that Respondent is known as T-Qualizers, and by Respondent’s admission it conducts business as “TQ” and not under the at-issue domain name. Thus Respondent cannot demonstrate rights to or legitimate interest in the disputed domain name by resorting to Policy ¶4(c)(ii).
Notably, the term T-QUALIZER on both parties’ websites appears to be used to describe a generic product rather than as a source identifier. There are no references on the Complainant’s website qualifying T-QUALIZER with an ® or ™, which would indicate a claim of trademark rights in the mark. Respondent cites to several other websites which also reference T-QUALIZER shirts and which likewise appear to use T‑QUALIZER in a non-trademark sense. The name T-Qualizer is apparently a combination of T-shirt and equalizer and as such is, on its face, more descriptive than fanciful. Furthermore, the presumption that trademark registration in advance of domain name registration establishes rights in a mark under Policy 4(a)i is rebuttable. Where the at-issue mark appears to be generic or descriptive, Complainant needs to show that the mark has acquired secondary meaning.
Complainant does present evidence to show that its mark acquired common law trademark rights in T‑QUALIZER well prior to its application for trademark registration, albeit such evidence is weak. The referenced clips from each of two popular television programs annexed by Complainant do not clearly show the T-QUALIZER mark as a source designator. Similarly, the other sellers of T‑Qualizer type shirts referenced by Respondent do not treat the term as a trademark. There is little in the record that tends to prove that T-QUALIZER has acquired secondary meaning rather than being merely descriptive of a T-shirt featuring an equalizer. As such Respondent might establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes). However, except for a few bald statements Respondent does not counter Complainant’s claim of common law rights or otherwise offer evidence that the at-issue mark is generic. Furthermore, in the instant case it is almost inconceivable that Respondent would not be aware of Complainant’s commercial activity at the <tqualizer.biz> website. The fact also remains that Complainant applied for trademark registration of T‑QUALIZER in advance of Respondent’s confusingly similar domain name registration. Thus, the evidence that Complainant’s trademark rights pre-date the domain name registration, including but not limited to the presumption of rights from the fact of trademark registration with the USPTO as well as the other evidence of record concerning the T‑QUALIZER mark on balance weigh in Complainant’s favor and tend to show that Complainant’s mark is not generic and has acquired secondary meaning.
Given Complainant’s long standing web presence at a domain name nearly identical to the disputed domain name and given Respondent’s commercial interest in electroluminescent T-shirts, Respondent either knew, or at least should have inquired about, Complainant’s claim of trademark rights in T-QUALIZER prior to registering the at-issue domain name. A simply inquiry via <uspto.gov>’s online search facility would expose the fact that Complainant applied for registration of the T‑QUALIZER mark in February of 2009. Respondent used (and uses) the <tqualizers.com> domain name to reference a website selling T‑shirts featuring electroluminescent graphics that compete with Complainant’s like styled shirts. Respondent likely profits from the sale of its competing T‑shirts. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the Panel held that “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.” Similarly, in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services. Equally here since Respondent either knew of Complainant’s claim of trademark rights or acted with indifference to the existence of such rights when it registered and traded at a website referenced by <tqualizers.com>, Respondent’s use of the disputed domain name for its online business is not bona fide pursuant to Policy ¶4(c)(i).
Therefore, because Complainant’s prima facie case is ineffectively challenged and for the reasons stated above, Complainant demonstrates that Respondent lacks rights and interest in respect of the domain name. See Policy ¶4(a)(ii).
The <tqualizers.com> website features electroluminescent T-shirts that compete with Complainant’s electroluminescent T-shirts. Since Complainant has trademark rights in T-QUALIZER, Respondent is thereby disrupting Complainant’s T‑shirt business by diverting Internet users from Complainant and to Respondent via the use of the confusingly similar domain name. Respondent’s use of the domain name in this manner might constitute bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). However, here there is no evidence that the domain name was registered primarily to disrupt Complainant’s business. More likely any disruption to Complainant’s business was and/or is simply the indirect consequence of registration and not its “primary … purpose.” Policy ¶4(b)(iii) is thus inapplicable.
Respondent commercially benefits from the sale of electroluminescent T‑shirts. Respondent’s T‑shirts resemble Complainant’s shirts. Respondent, by trading at a website referenced by a domain name confusingly similar to Complainant’s trademark, confuses Internet users as to Complainant’s affiliation with the <tqualizers.com> domain name, the referenced website and the featured t-shirt products offered there. Respondent asserts in its Response that the Complainant’s mark is generic. While such a contention is objectively refuted by the Panel’s finding elsewhere herein, there is nonetheless some evidence that might allow one to conclude that the at-issue mark was generic or descriptive. Significantly, a good faith reasonable belief by Respondent that T‑Qualizer(s) was simply a descriptive term might negate a finding of bad faith under the Policy. But in Respondent’s reply to Complainant’s pre-UDRP cease and desist letter (annexed to the Complaint), Respondent does not claim the T-QUALIZER mark is generic or descriptive. Rather, Respondent points to trivial differences between the Complainant’s trademark and the disputed domain name as somehow significantly distinguishing the trademark from the domain name. The argument appears strained and disingenuous.
Moreover and as discussed above in the previous section, there were ample reasons to compel Respondent to inquire further into the disputed domain name’s trademark status prior to registering the domain name. Under the particular facts of the instant case, by failing to do so the Respondent acted with indifference to Complainant’s trademark rights. It follows that by registering and using the disputed domain name to support a website selling goods similar to those of Complainant, Respondent is intentionally attempting to confuse Internet users as to the source of the goods offered at such website. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The circumstances described above constitutes evidence of bad faith registration and use of the domain name as set out at Policy ¶4(b)(iv).
For the reasons discussed above the Panel finds that Respondent has registered and used the at-issue domain name in bad faith pursuant to Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tqualizers.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 26, 2010
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