Ms. Carla Tanella v. Chirospa
Claim Number: FA1105001389990
Complainant is Ms. Carla Tanella (“Complainant”), represented by Kerrin H. Parris, Texas, USA. Respondent is Chirospa (“Respondent”), represented by Christine Friestad of Friestad Law Firm, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chirospa.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on June 6, 2011.
On May 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chirospa.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 June 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@chirospa.com. Also on June 10, 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 June 27, 2011.
On June 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
(i) Respondent’s use of the <chirospa.com> domain name is in connection with a bona fide offering of goods or services which conflict with the use of the “Chiro Spa” trademark; and
(ii) Respondent has been known by the domain name chirospa.com and has not acquired corresponding trademark or service mark rights; and
(iii) Respondent is making a commercial use of the domain name with an intent to misleadingly divert consumers or to tarnish the trademark or service mark at issue; and
(iv) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site at <chirospa.com> creating a likelihood of confusion with the Complaint’s mark, “Chiro Spa” as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
B. Respondent
(i) There is no proof provided nor is it logical to just assume that Respondent’s intent in using <chirospa.com> is in any way intended or targeted to confuse would be customers from Texas to be lured to a sole business in California.
(ii) Respondent secured and paid for the <chirospa.com> domain name on October 7, 2000. Complainant did not secure their trademark until (7) seven years later.
(iii) For over a decade, Respondent’s business has been known as CHIROSPA and has used a logo that is substantially different than that of the Claimant’s. Furthermore, the business services offered by Respondent are very different than those of the Complainant.
(iv) In the absence of any objective proof in support of Complainant’s allegations of intent to misleadingly divert customers or tarnish the trademark, such allegations are meritless. (Rule 3(b)(ix)(2); UDRP ¶4(a)(ii)).
(v) There is only legitimate and objective evidence submitted by Respondent that this domain name has been used in good faith and for a legitimate legal purpose (Rule 3(b)(ix)(3); UDRP ¶ 4(a)(iii)).
Although <chirospa.com> is identical or confusingly similar to Complainant’s CHIRO SPA mark, Complainant has failed to establish that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
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.
Preliminary Issue: Deficient Response
Respondent submitted its Response without the Annexes separated from the Response. Therefore, the National Arbitration Forum does not consider the Response to be in compliance with UDRP Rule 5(a) and/or the Annex to the Supplemental Rules. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
In this matter, the Panel has decided to consider the Response as filed.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant submits evidence of its service mark registration for the CHIRO SPA with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,338,151 filed December 6, 2006; issued November 20, 2007). Complainant asserts that it uses the mark in connection with chiropractic services, massage, nutrition counseling, physical rehabilitation, physical therapy, and the provision of laser therapy for treating medical conditions. The Panel finds that Complainant has rights in the CHIRO SPA mark dating back to the filing date of December 6, 2006. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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 asserts that it has used the mark since February 2001. The Panel notes that Complainant’s service mark registration certificate lists a date of first use in commerce of February 3, 2001. The Panel also notes that Complainant does not provide any additional information or evidence that relates to its use of the CHIRO SPA mark prior to the filing date of December 6, 2006. The Panel finds that Complainant has common law rights under Policy ¶ 4(a)(i) dating back to February 3, 2001, as evidenced by its claim of first use on the USPTO service mark registration certificate. See Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Although Complainant does not specifically argue it, the Panel finds that Respondent’s <chirospa.com> domain name is identical to Complainant’s CHIRO SPA mark under Policy ¶ 4(a)(i), as the domain name merely eliminates the space between the terms of the mark and appends the generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
While Respondent argues that its registration of the <chirospa.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds 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).”).
The Panel finds that <chirospa.com> is identical or confusingly similar to Complainant’s CHIRO SPA mark.
Respondent asserts that it is located in San Diego, California and uses the <chirospa.com> domain name to provide, “Directional Nonforce Chiropractic Therapy, Psychosomatic Healing and Meditation Services.” Respondent argues that Complainant offers traditional (manipulation) “chiropractic care,” “spinal rejuvenation,” and wellness programs. Respondent further argues that traditional chiropractic services using force and manipulation are not a part of Respondent’s practice. Respondent submits evidence of its legitimate business including its business license with the City of Temecula, CA dating back to April 11, 2001, and proof of payment of business taxes to the City of San Diego, CA under the Chirospa name dating back to June 1, 2008. Respondent also submits a copy of its business card featuring the Chirospa name as well as a screenshot of its website featuring the Chirospa name and information on Respondent’s services. The Panel finds that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name); see also Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name).
Respondent also argues that absent any objective proof submitted by Complainant in support of Complainant’s allegations that Respondent lacks rights and legitimate interests in the disputed domain name, such allegations are meritless. The Panel finds that Complainant has not upheld its burden under Policy ¶ 4(a)(ii) in proving that Respondent lacks rights and legitimate interests in the disputed domain name. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name); see also Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
As the Panel concluded that Respondent has rights or legitimate interests in the <chirospa.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chirospa.com> domain name REMAIN WITH RESPONDENT.
John J. Upchurch, Panelist
Dated: July 11, 2011
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