Wickless Scentsations, Inc. v. TimG Niche Marketing / Timothy Gorman
Claim Number: FA1012001365753
Complainant is Wickless Scentsations, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is TimG Niche Marketing / Timothy Gorman (“Respondent”), represented by Brian Kindsvater, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wicklessscentsations.com> (“the Domain Name”), registered with eNOM, Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2010; the National Arbitration Forum received payment on December 31, 2010.
On January 20, 2011, eNOM, Inc., confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with eNOM, Inc. and that Respondent is the current registrant of the name. eNOM, Inc. has verified that Respondent is bound by the eNOM, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2011, the Forum served the Complaint and all Complaint Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 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@wicklessscentsations.com. Also on January 28, 2011, 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 February 18, 2011.
On February 25, 2011, Complainant filed an Additional Submission, which was determined to be out of time but which the Panel had chosen to take into account.
On February 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
On March 10, 2011, the Panel extended the time within which to render its decision until March 15, 2011.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims common law rights in the WICKLESS SCENTSATIONS mark that date back to October, 2005 when one of its founders, Dorothy Thurman, joined Scentsy Inc. as its 166th Independent Scentsy Consultant, selling SCENTSY branded wickless candles and other fragrant and odor eliminating products pursuant to a multi-level marketing scheme operated by Scentsy Inc.
In 2006, Dorothy Thurman and her husband, Rick Thurman, formed Wickless Scentsations, as a team with Scentsy Inc., for the purpose of creating an expansive “downline” in the Scentsy multi-level marketing organization. On December 1, 2008, they incorporated Complainant in the state of Utah.
In support of its claim to common law trademark rights, Complainant says it grosses more than $30 million in annual sales; that from 2005 through 2010 more than 9,900 individuals joined its Wickless Scentsations sales team; that it spent more than $100,000 in pay-per-click advertising in 2010; that its Wickless Scentsations sales team has been nominated by Scentsy Inc. for annual awards and that at Scentsy’s annual convention on July 28, 2010, Complainant was honored by Scentsy in a video tribute played before 6,000 attendees, including Respondent’s wife, who became a Scentsy sales consultant in January 2010.
As further evidence of common law trademark rights the Complaint Annexes a screenshot of Scentsy Inc.’s secure Director Resources page, showing Wickless Scentsations’ newsletter as a Director’s Share Circle; a copy of a VISA card issued by Scentsy Inc. to Dorothy Thurman in the name Wickless Scentsations Inc.; Complainant’s Articles of Incorporation with the Utah Secretary of State; editions of a monthly Wickless Scentsations Newsletter sent to all of Complainant’s consultants ; and a newsletter published by a downline team member (Complaint Annexes F, G, H, I and M).
A few days after the Scentsy 2010 annual convention, on August 2, 2010, Respondent registered the Domain Name which, before receiving a cease and desist letter, he used for a website for his wife’s sales of Scentsy products.
Complainant says the Domain Name is identical to its WICKLESS SCENTSATIONS mark and that Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant says Respondent is not commonly known by and has not acquired trademark or service mark rights in the Domain Name nor in Complainant’s WICKLESS SCENTSATIONS mark; Respondent used the Domain Name as a personal Scentsy sales consultant website for his wife, in direct competition with Complainant’s offering of Scentsy products; upon receiving Complainant’s cease and desist letter, Respondent changed the website content to market electric cigarettes, products not related to Complainant; and in email correspondence, Respondent attempted to sell the Domain Name to Complainant for $10,000.
As to bad faith registration and use, Complainant relies on Respondent’s attempts to sell the Domain Name to Complainant for $10,000; screen shots to show that Respondent registered and used the Domain Name to set up a competing Scentsy independent consultant website for his wife, thereby diverting Internet users who were seeking Complainant’s business to Respondent’s competing business website for Respondent’s commercial gain and disrupting Complainant’s own Scentsy business; and Respondent’s current use of the Domain Name to redirect Internet users to unrelated goods, namely electric cigarettes.
Complainant says Respondent is a chronic cybersquatter who sells a book entitled Flipping Websites for Profit, in which Respondent recommends that
readers register domain names of legitimate companies, then try and sell the domain names to legitimate companies under threat of using the domain names to create initial interest confusion while generating cost-per-click revenue on them from Google AdSense. The book informs readers that if they limit their extortion demands to between $300 and $2,000, it is likely the companies will pay those amounts rather than face the increased costs of legal fees in connection with judicial resolution of the disputes. Complaint Annex O is a screenshot of Respondent’s website and book.
B. Respondent
Respondent says the evidence before the Panel does not establish Complainant’s claim to common law trademark rights in WICKLESS SCENTSATIONS, saying there is no evidence presented that Complainant even uses that mark in commerce, because Complainant publicly uses the mark SCENT YOUR WAY; Complainant’s corporate name is not used for anything more than a corporate name; the evidence presented by Complainant does not show that the WICKLESS SCENTSATIONS mark is widely used or even known by anyone other than the Thurmans; that Scentsy sales consultants working as authorized sellers of Complainant’s products have not even heard of the WICKLESS SCENTSATIONS mark, thereby precluding a finding of secondary meaning; that while Complainant contends that it has spent $100,000 in pay-per-click advertising for the WICKLESS SCENTSATIONS mark, there is no accompanying proof of such advertising nor its results; and Respondent could not locate any such advertising through searches on Google, Bing, and Yahoo for the term ‘wickless scentsations.’
Respondent says he used the Domain Name for a legitimate purpose, with the approval of Scentsy’s Compliance Department. As a Scentsy consultant, Respondent’s wife is authorized to market and sell Scentsy products, which are also sold by Complainant. Complainant chose not to register the Domain Name, instead using the <wicklessscentsations.us> domain name that immediately redirects Internet users to <scentyourway.com>. Before registering the Domain Name Respondent conducted a trademark search through the USPTO and found nothing for the WICKLESS SCENTSATIONS mark. He promptly requested approval from Scentsy and received such approval. He spent a lot of time and money marketing and developing the website through the Domain Name and in no way meant to harm Complainant.
Respondent denies making an offer of sale, saying the email correspondence shows that Respondent was asked by Complainant to provide numbers for a potential buyout of the Domain Name. Respondent simply estimated all of his costs of setting up the website and optimizing the website with search engines.
Respondent denies registration and use in bad faith, saying Complainant chose not to register the Domain Name itself, approved of Respondent’s registration and use of it and, through acquiescence, approved the website content. Further, Respondent contends that he was using the Domain Name for a legitimate purpose, namely as a sales and marketing website for his wife, being a sales consultant for Scentsy Inc. Having conducted a trademark search at the USPTO before registering the Domain Name and upon seeing no such registration for the WICKLESS SCENTSATIONS mark and having no direct knowledge that a mark existed in that name, he registered the Domain Name in good faith.
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute, saying Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of his right to use it; that Complainant intentionally decided to not register the Domain Name, thus opening up the option for others to do so; that Scentsy’s Compliance Office reviewed and approved of both the Domain Name registration and use before Respondent posted any content on the website; that Complainant attempted to have a non-attorney, representing himself as “Legal Counsel”, demand that Respondent transfer the Domain Name to Complainant, even after Complainant approved of Respondent’s use of it.
C. Additional Submission
Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into account unsolicited submissions received outside those time limits. See Darice, Inc. v. Texas International Property Associates - NA NA, FA1082320, (Nat. Arb. Forum 16 November, 2007).
In this instance, the Panel has had regard to Complainant’s Additional Submission.
Complainant says the Response tries to depict Respondent as a victim of Complainant rather than the victimizer, including the allegation that Respondent should be entitled to the Domain Name because someone from Plaintiff’s organization referred to himself as “Legal Counsel.”
Complainant says its business name WICKLESS SCENTSATIONS, INC., registered with the Utah Secretary of State, is Complainant’s primary identifier; a Google search for “wickless scentsations” returns results exclusively associated with Complainant; since only Complainant can legitimize use of its mark, Respondent’s attempt to show that his use of Complainant’s mark was somehow legitimized by Scentsy is further evidence of Respondent’s bad faith use and absence of legitimacy; and emailed statements made by Respondent to Complainant contradict allegations of intended use made in the Response and support the assertions that Respondent is “a cybersquatter and thief” who has attempted to extort the Domain Name from Complainant.
Complainant says Respondent and his wife joined Scentsy in January of 2010, before the Domain Name was registered, and registered the Domain Name days after Wickless Scentsations and its founders were honored in the banquet that Respondent’s wife attended; Respondent’s upline directors are intimately acquainted with Complainant, as evidenced by a photograph showing them all together at a training session for Scentsy that they jointly conducted; and all of Respondent’s allegations in the Response contradict Respondent’s earlier emails, the truth, and assertions made to Complainant’s counsel.
Complainant says Respondent is really the worst type of cybersquatter - one who not only actively seeks to register and destroy other parties in an attempt to extort them, but who encourages others to do so, and who intentionally lies and makes misrepresentations to Courts, counsel and other judicial authorities, including this Panel.
Complainant has failed to establish that it is entitled to the relief which it seeks.
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.
The Domain Name is clearly identical to the name WICKLESS SCENTSATIONS, the gTLD “.com” being inconsequential and to be ignored. Does Complainant have common law trademark rights in that name?
It appears that, within the Scentsy Inc. multi-level marketing organization, the words “wickless” and “scentsations” are frequently used separately. The team names of two of the finalists for the 2010 Shining Star Awards are “Wickless SCENTastics” and “Scented Scentsations”. Dorothy Thurman is listed as a finalist thus: “Dorothy Thurman, SuperStar Director, Wickless Scentsations – Scent Your Way”. The use by others within the organization of the words “wickless” and “scentsations” may be explained by the fact that the candles and other scented products in relation to which they are used do not have a wick. Accordingly, in the context of the Scentsy multi-level marketing scheme, those words in combination have a descriptive character. To establish common law trademark rights, Complainant must show that the name "Wickless Scentsations" has achieved in the public mind, as distinct from the minds of those within the sales organization, secondary meaning or association with Complainant:
“To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent”: British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957) (emphasis added).
“Secondary meaning is the consumers’ association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use. See Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987); see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (emphasis added).
Here there is no evidence provided by Complainant to show sales made under the claimed trademark. Nor is there one example of the content of its claimed advertising. The mere assertions in the Complaint and the Joint Declaration of Rick and Dorothy Thurman that those assertions are correct do not amount to evidence establishing the truth of the assertions.
The list of Scentsy Team Names (Complaint Annex C) shows the claimed trademark as the team name of Dorothy Thurman. The VISA card (Complaint Annex G) and the Articles of Incorporation (Complaint Annex H) are in Complainant’s corporate name. Complainant’s Newsletters (Complaint Annex I) contain no example of the claimed trademark and are headed by a logo that appears to belong to Scentsy Inc., “Authentic Scentsy™ wickless product”. The “secure” Scentsy website (Complaint Annex F) does mention the Wickless Scentsations newsletter as a Director’s Share Circle, with the implication that it is not available to the public. The 6-page team member’s Newsletter (Complaint Annex M) mentions Wickless Scentsations at the foot of page 5, as follows: “Wickless Scentsations – Scents Your Way http://www.scents-your-way.com”. The video played at the 2010 Scentsy Annual Convention, a link to which was contained in the Complaint, features Dorothy and Rick Thurman but makes no mention, aurally or visually, of the claimed trademark, nor of Complainant’s corporate name. Quite apart from the limited nature of the association these materials might be thought to make between the claimed mark and Complainant, all of these materials appear directed not at the public but within the organization.
The Panel concludes that, within the Scentsy multi-level marketing organization, Dorothy Thurman has risen to the level of SuperStar Director and that the name of her team, run since late 2008 through the corporate entity, Complainant, is Wickless Scentsations. That name is known to Scentsy Inc., to the team members themselves, who are responsible for selling Scentsy products and, to a lesser extent, to other Scentsy Sales Consultants insofar as they have come across it at Scentsy events or through Scentsy communications. On the other hand, there is no evidence that consumers have come to know of that name nor that it has come to denote, in the minds of consumers within the State of Utah or elsewhere, an association with Complainant.
Accordingly, the Panel concludes that the evidence is insufficient to establish Complainant’s claimed common law rights in the name WICKLESS SCENTSATIONS.
Complainant has failed to establish this element. The Complaint must therefore be dismissed. However, since Respondent has alleged Reverse Domain Name Hijacking, it is appropriate to discuss, albeit briefly, the other two elements.
The fact that Respondent registered the Domain Name on August 2, 2010, only a few days after his wife attended the Scentsy Annual Convention on July 28, 2010 is amenable to both a guilty and an innocent explanation. Since this was her first annual convention since becoming a Scentsy Sales Consultant earlier in the year, it is entirely possible that, enthused by her experience at the convention, she asked her husband, who has considerable expertise in the field, to find her a suitable domain name for a website. That he chose the Domain Name is explicable by the use, within the Scentsy organization, of those words separately and descriptively. That they are apt for use in connection with the Scentsy business is demonstrated by Complainant’s own choice of those words.
In light of this possible innocent explanation, the Panel is not prepared to infer, from the evidence provided, that Respondent’s wife and hence Respondent were aware, prior to the registration of the Domain Name, of Complainant’s use of the Wickless Scentsations name (even assuming for this purpose that, contrary to the finding above, that name is Complainant’s common law trademark). Accordingly the Panel finds that Respondent’s use, prior to notice of this dispute, of the Domain Name for his wife’s website as a Scentsy Sales Consultant was bona fide use, demonstrating Respondent’s rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy.
The Panel is satisfied that Respondent registered the Domain Name primarily for the purpose of providing a website for his wife, a Scentsy sales consultant. After Complainant objected, he switched her website to another domain name and, in reply to an invitation to put a price on the Domain Name, said he would not sell it for less than $10,000, having regard, in particular, to the number of hours he had spent optimizing it. Sale was not his primary purpose upon registration, however, so the Panel concludes that the Domain Name was not registered in bad faith. See paragraph 4(b)(i) of the Policy.
Because it has not been shown that the public are aware of Complainant’s claimed WICKLESS SCENTSATIONS mark, the Panel is not disposed to find, for the purposes of paragraph 4(b)(iv) of the Policy, that Internet users search for Complainant by reference to it. Hence Respondent’s use of the Domain Name to lead to his wife’s website was not use in bad faith.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000‑1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000‑1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000‑0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002‑00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002‑0754.
Apart from several mis-statements and exaggerations in the Complaint, such as the assertion that Complainant has used the mark WICKLESS SCENTSATIONS since 2005, whereas Complainant was not incorporated until December, 2008, there are certain features of this case that have caused this Panel considerable disquiet:
· Complainant’s cease and desist letter was written by a non-lawyer calling himself “Legal Counsel”.
· Following Respondent’s reply to the cease and desist letter, Mr. Rinehart offered his services to Respondent. Respondent sought Mr. Rinehart’s opinion of Respondent’s reply to the cease and desist letter. Mr. Rinehart expressed the opinion that the reply was “good”. Having so advised Respondent, Mr. Rinehart acts in this Administrative Proceeding for Complainant.
· Complaint Annex O does not support the claim that Respondent’s book recommends that readers register domain names of legitimate companies, then try and sell the domain names to legitimate companies under threat of using them to create initial interest confusion while generating cost-per-click revenue on them. The book itself, Response Annex Z, contains no such statements.
· There is no evidence to support Complainant’s claim that Respondent is a chronic cybersquatter, nor that he lies and makes misrepresentations to Courts, counsel and other judicial authorities, including this Panel.
Despite this disquiet, the Panel is not satisfied that Complainant knew it had no common law trademark. The timing of Respondent’s registration of the Domain Name, only days after the 2010 Scentsy Annual Convention, no doubt gave rise to suspicion on the part of Complainant (unfounded as it has turned out) that Respondent had no legitimate interest in the Domain Name and had registered it with intent to divert Internet users from Complainant to Respondent’s website.
Under these circumstances the Panel declines to make a finding of reverse domain name hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: March 15, 2011.
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