national arbitration forum

 

DECISION

 

Consumer Opinion Corp. v. John Cross

Claim Number: FA1012001362852

 

PARTIES

Complainant is Consumer Opinion Corp. (“Complainant”), represented by Anna Vishev of Law Office of Anna Vishev P.C., New York, USA.  Respondent is John Cross (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thepissedoffconsumer.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Calvin A. Hamilton as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2010; the National Arbitration Forum received payment on December 10, 2010.

 

On December 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thepissedoffconsumer.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2011 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@thepissedoffconsumer.com.  Also on December 15, 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 January 4, 2011.

 

An  Additional Submission was filed by The Claimant on January 10, 2011. The said Submission was timely filed in accord with the Forum’s Supplemental Rule 7.

 

On January 5, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant

 

Complainant contends that Respondent’s domain name, <thepissedoffconsumer.com>, is substantially identical to, and confusingly similar with Complainant’s mark, PISSED CONSUMER. Claimant alleges that the registration of the mark with the USPTO establishes its rights to the PISSED CONSUMER mark pursuant to UDRP policy.

 

Claimant’s asserts that the dominant portion of Respondent’s domain name merely adds the definite article “the” and the generic work “off” to Complainant’s PISSED CONSUMER mark and that such action is insufficient for purposes of avoiding a finding of confusing similarity under Policy 4(a)(i).

Complainant further sets forth that Respondent’s use of the generic word “off” in connection with Complainant’s mark increases the likelihood of confusion since the word “off” is often used in combination with the word ”pissed”.

 

Claimant contends that Respondent has no right or legitimate interest in the domain name subject of this complaint. It states that Respondent is not commonly known by the domain name. Additionally, that Respondent copied the look, feel and content of Complainant’s website. Further, that Respondent uses a proxy service which demonstrates that it has no rights and legitimate interests in the domain name.

 

Complainant asserts that Respondent’s registration of its domain name, in the light of the fame of Complainant’s distinct and registered mark, is evidence of bad faith. Further, that in this context, Respondent copied the look, feel and content of Claimant’s website and uses a proxy registration which is indicative of a bad faith registration. 

 

B. Respondent

 

Respondent argues that it registered its domain on July 28th, 2008 at a time when Claimant, nor its trademark, did not exist.

Respondent emphasizes that there are millions of websites registered; tens of thousands with the same name. That there are 2533 websites with the word “pissed” in the domain name and 42,000 websites with the word “consumer” in the domain name.

 

Respondent asserts that registration of the domain name in dispute was not to confuse or be similar to websites on the Internet,  rather the name was chosen to evoke a state of mind.

 

Respondent states that there never was an attempt to duplicate the “look and feel” of <pissedconsumer.com>. Respondent posits that the similarity may derive from the fact that both Claimant and Respondents are hosted by the Godaddy.com, Inc. and chances are that the Complainant, like Respondent, used the joomla template to build its site.

 

Respondent does not believe that there exists any similarity in the respective logos. Nor does Respondent find credibility in Claimant’s assertions of Respondent’s use of a proxy registration.

 

Respondent asserts that it conducted the requisite due diligence prior to registration of the domain name which did not reveal any conflicts. Neither Consumer Opinion Corp nor the trademark PISSED CONSUMER existed at the time the due diligence was conducted. Respondent concludes that this fact alone shows that there could not have been any bad faith registration.

 

B.     Additional Submissions

 

Claimant in an Additional Submission contends that its mark had been in use in US commerce at least since February 1st, 2007 and more specifically, the <pissedconsumer.com> domain was registered on November 5th, 2006. Accordingly, when Respondent registered its domain name, Claimant’s domain name and trademark were already notorious.

 

Additionally, that Respondent, by its own admission, selected a template most closely resembling that of Claimant’s even though there were other available templates. Further, that Respondent duplicated the color scheme of Claimant’s website.

 

Claimant argues that Respondent derives commercial gain from <thepissedoffconsumer.com> website through advertisements appearing on the site.

 

 

FINDINGS AND DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant sets forth evidence of its registration for its PISSED CONSUMER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,679,454 filed February 24, 2009; issued September 8, 2009).  Complainant maintains that it uses its mark in creating an online community for registered users to post consumer opinions, complaints, and product reviews.

 

This Panel determines that registration with the USPTO is sufficient to establish rights in a mark.  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).

 

It is also well established that the relevant date of a complainant’s rights in a mark is the date of filing with the USPTO.  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”).

 

Accordingly, the Panel finds that Complainant has established rights in its PISSED CONSUMER mark dating back to February 24, 2009. 

 

Complainant also asserts common law rights in the PISSED CONSUMER mark based on its use since at least as early as February 2008.  Complainant asserts that its website resolving from the <pissedconsumer.com> domain name, is dedicated to allowing consumers to post reviews, complaints, and comments about various products and/or companies.  Complainant indicates that it began using its website in February 2008 and that through long and widespread use the PISSED CONSUMER mark has become well known among disgruntled consumers throughout the United States.  Additionally, Complainant has provided evidence which shows that the <pissedconsumer.com> domain name was registered as far back as November 2006 so that Respondent’s due diligence exercise should have discovered the said registration.

 

The Panel finds that Complainant has provided evidence establishing common law rights in the mark predating February 2008.  See Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s…registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”); see also 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).

 

Complainant argues that Respondent’s <thepissedoffconsumer.com> is confusingly similar to Complainant’s PISSED CONSUMER mark.  Complainant alleges that Respondent’s disputed domain name differs only by the addition of the generic terms “the” and “off,” along with the addition of the generic top-level domain (“gTLD”) “.com.” 

 

The Panel finds that these alterations are not sufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  

 

Respondent argues that its registration of the <thepissedoffconsumer.com> domain name predates Complainant’s alleged rights in the mark.

 

This Panel find that 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 AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

Respondent further argues that the disputed domain name is not confusingly similar to Complainant’s mark because Respondent’s domain name was chosen to evoke a state of mind with the potential web surfer when they are searching the Internet for a site on which to post negative consumer experiences.  Respondent argues that his disputed domain name contains the word “the” which was chosen to single out the individual user and to make him or her feel that they are “the” pissed off consumer, a singular person and not part of a group or collective.

 

The Panel is not swayed by Respondent’s arguments and finds a confusing similarity with Complainant’s mark.

 

Rights or Legitimate Interests

 

Complainant carries the burden of making a prima facie case 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) (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); 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.”).

 

Complainant has carried the burden of proof. Complainant contends that Respondent is not commonly known by the disputed domain name.  Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities.  The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.” 

 

The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).

 

Complainant submits evidence, in the form of screenshots, showing that Respondent’s disputed domain name resolves to a website for consumers to post complaints.  Complainant alleges that Respondent’s resolving website offers services nearly identical to those offered by Complainant under its PISSED CONSUMER mark. 

 

The Panel finds that Respondent’s use of the disputed domain name to offer services that compete with those of Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding 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).

 

Respondent states that it uses the disputed domain name to resolve to a site where Internet users can post online consumer complaints.  Respondent argues that the Internet is a public forum and that there are over 133 million blogs on the Internet.  Respondent states that individuals who have more than one place on the Internet to post their complainants will likely do so, which explains the identical or similar content on both Respondent’s resolving website as well as Complainant’s official <pissedconsumer.com> website. 

 

The Panel does not find that Respondent’s use of the disputed domain name to host an online consumer complaint forum is a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). A visit to Respondent’s website reveals that there are advertising activities which disproves Respondent’s assertion that the site is conducted in a noncommercial manner.  

 

Complainant asserts that Respondent copied the look, feel, and even content of Complainant’s website resolving from its <pissedconsumer.com> domain name.  Complainant argues that Respondent’s website is nearly identical to Complainant’s own website where similar services are offered.

 

Respondent rebuts that he did not copy the “look and feel” of Complainant’s <pissedconsumer.com> website.  Respondent states that when choosing to build a website that has a “community” aspect to it, the registrar, GoDaddy.com, Inc., gave essentially two choices of content management software (“joomla” or “drupal”).  Respondent indicates that he chose Joomla and then was required to choose a “template” for its website, which is what Respondent contends gives the website its “look and feel.”  Respondent argues that the template for the disputed <thepissedoffconsumer.com> domain name is a stock joomla template called “JA Barite Red,” and that no changes were made by Respondent to the website’s template.  Respondent indicates that he chose the color red because it is a common color associated with anger or being “pissed off.”  Respondent contends that there was never any attempt on Respondent’s part to duplicate the “look and feel” of Complainant’s official website.  Respondent notes that the two websites may appear similar because Complainant also uses GoDaddy.com, Inc. to host its <pissedconsumer.com> website.

 

The Panel agrees with Complainant that by Respondent’s own admission, he selected a template most closely resembling the Complainant’s template even duplicating the color scheme.     

 

Accordingly, and in light of the circumstances, the Panel therefore finds that Respondent  lacks rights and legitimate interests in the disputed domain name.  See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s disputed domain name resolves to a website featuring an online consumer complaint forum nearly identical to the services Complainant offers under its PISSED CONSUMER mark. 

 

Respondent denies any bad faith use and registration nor sees any similarity in the two web sites. Respondent points to the fact that the logos are dissimilar in design in that Respondent’s has the entire name of the web site in it, with a finely detailed character wincing, while Complainant’s logo, before the change to a circle with an angry face, was simply a circle with a frowning face inside it.

 

The Panel visited the two websites and does find similarity in the look, feel and content. Further, the Panel does appreciate that Respondent’s web site provides advertising opportunities which allows the conclusion that the site is operated for commercial purpose.

 

The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith 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).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). 

 

The Panel finds that Respondent is attempting to commercially benefit from its use of the disputed domain name through Internet user confusion as to Complainant’s sponsorship of the <thepissedoffconsumer.com> domain name, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

Respondent previously argued that the similarities between the disputed domain name’s resolving website and Complainant’s own website are merely the result of similar templates chosen by the two parties and is not indicative of an intent by Respondent to pass itself off as Complainant. 

 

The Panel is not convinced. The Panel starts from the premise that a good faith effort at due diligence would have discovered the existence of the Complainant’s property interests. Further, that the Respondent could have chosen a different template to that of Complainant’s. Respondent did not do so rather it chose a template that results in confusing similarity with that of Complainant’s.

 

Therefore, considering the totality of the circumstances, this Panel finds that Respondent did engage in bad faith conduct in registering and developing the domain name in use.

 

Respondent states that it registered the <thepissedoffconsumer.com> domain name on July 28th, 2008.  Respondent argues that at that time, Complainant, Consumer Opinion Corp., did not exist and in fact did not file for formation until November 5, 2008. Respondent insists that the PISSED CONSUMER mark did not exist as it was not filed                     until February 24, 2009.

 

The Panel finds that Claimant does have a common law right in the mark which minimum due diligence would have disclosed. The Panel visited the <pissedconsumer.com> website which immediately revealed that the domain name was registered in 2006.

 

Therefore the Panel is not convinced by the extent of the good faith efforts of the Respondent and does find bad faith in the Respondent’s registration and use of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thepissedoffconsumer.com> domain name be TRANSFERRED from Respondent to Claimant.

 

 

Calvin A. Hamilton, Esq., Arbitrator

Dated:  January 21, 2011

 

 

 

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