Victoria Kann, Inc. v. K. Smith
Claim Number: FA1106001392522
Complainant is Victoria Kann, Inc. (“Complainant”), represented by Edmund J. Ferdinand, III of Jeffers Cowherd P.C., Connecticut, USA. Respondent is K. Smith (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinkalicious.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 7, 2011.
On June 9, 2011, Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <pinkalicious.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@pinkalicious.com. Also on June 9, 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 21, 2011.
On June 09, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant affirms that it is the owner of the trademark “PINKALICIOUS”, name for the main character of the series of children books entitled Pinkalicious, all written by Victoria Kann. The Complainant informs that the book has sold over 7 (seven) million copies since the year of 2006, and due to its great success the series of books was adapted to a musical and worldwide licensing and merchandising of products in twenty different categories.
The Complainant assures that Respondent has no rights over their trademarks, alleging the absence of good faith regarding the use of the domain name in dispute, adducing that Respondent has been unfairly profiting with unauthorized use of Complainant’s trademark PINKALICIOUS.
Further, the Complainant summarizes the plot of each book of the series published by Victoria Kann for the character Pinkalicious, and informs afterwards that the Author wrote at least ten other books with the mark PINKALICIOUS, in categories that vary from early readers to activity books.
Moreover, the Complainant exposes in details all the merchandising, licensing, marketing and promotion of the trademark PINKALICIOUS, extolling the off-Broadway musical entitled “Pinkalicious the Musical”, the clothing bearing the PINKALICIOUS trademark, commercialized since March of 2007 and, according to the Complainant, sold in large quantities over the United States of America, the license conceded by the Author Victoria Kann for major american toys companies that created dolls and other toys under the “PINKALICIOUS” trademark that are currently available on mass market retailers.
Complainant also mentions the relation of the Author Victoria Kann with the company JLG., that has brought licenses for “PINKALICIOUS” brand products in several categories, i. e., apparel, bicycles, games, costumes, bedding, bags and backpacks, bracelets, furniture, videogames, sleepwear and party goods among others, all promoted on the website www.thinkpinkalicious.com, and also through social network, including Twitter and Facebook.
Regarding trademark rights, Complainant reinforces that it is a rights-holding company ran by Victoria Kann, that is the owner of the U.S. Trademark Registration No. 3,955,841, for the trademark “PINKALICIOUS” for use in connection with sound and musical recordings in Int‘l Class 09, books and printed materials in Int‘l Class 16, clothing in Int‘l Class 25, hair accessories in Int‘l Class 26, toys and games in Int‘l Class 28 and entertainment services in Int‘l Class 41; and U.S. Trademark Registration No. 3,899,056 for the trademark PINKALICIOUS for use in connection with bakery goods in Int‘l Class 30. Moreover, the Complainant affirms that has been using “PINKALICIOUS” trademark in connection to goods or services since at least January of 2007, establishing a strong and enforceable rights toward the trademark PINKALICIOUS in relation to third-parties.
Complainant reinforces several times that the holder of the domain name in dispute has no legitimate interest in the domain name, concluding that it is not possible to consider pinkalicious a generic term, thus it is impossible to allege “fair use” of the domain name in dispute.
Furthermore, Complainant accuses Respondent for identically reproducing their trademark to maintain an e-commerce website that profits with no authorization.
In addition, Complainant grounds the allegation of bad faith adducing that Respondent makes use of the “PINKALICIOUS” mark with the attempt to attract, for commercial gain, Internet users of the Respondent‘s website by creating, presumably, a likelihood of confusion with the Complainant‘s mark as to the source, sponsorship, affiliation, or endorsement of Respondent‘s web site.
Moreover, Complainant demonstrates concern towards the possibility of confusion of the consumers, since the idea of commercial relation, or even sponsorship may be created due to the identical reproduction of the PINKALICIOUS mark on the disputed domain name, alleging that the domain name in dispute divert consumers from the Complainant’s legitimate ecommerce website, mentioned above.
B. Respondent
Respondent provides a timely response, by email, where it at first exposes astonishment before Complainant’s plea. Afterwards, Respondent affirms that it has owned the website since 2002, and has declined all purchase offers from several buyers.
Further, Respondent sustains that the term pinkalicious has various different interpretations, with at least one thousand different uses, according to searches on Google.
Moreover, Respondent attacks Complainant’s trademark, affirming that for such cases the Panel should opt for common sense to overcome “frivolous trademarks”, and reinforces that the domain name was registered before the filing of Complainant’s trademark before the USPTO, hence, affirms that is impossible to find bad faith in this case.
Complainant claims that it has established its rights in the PINKALICIOUS mark by registering that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,955,841; filed April 17, 2009; issued May 3, 2011). The Panel finds that registering a mark with the USPTO provides rights in said mark under Policy ¶ 4(a)(i), dating back to the filing date of April 17, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
Complainant also claims that it has established its rights in the PINKALICIOUS mark through the continuous use of the mark in association with its children’s books business since August 25, 2004, when Complainant entered into a contract with a publisher to publish the Pinkalicious book series. Complainant asserts that it has sold over 7.7 million copies of its children’s books since 2006. Complainant claims that it has advertised its PINKALICIOUS mark in connection with the book series online, in stores, and with a national book tour. The Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) dating back to August 25, 2004 as a secondary meaning was created in the PINKALICIOUS mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
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 contends that Respondent’s disputed domain name is identical to its own PINKALICIOUS mark. Complainant claims that the disputed domain name includes the entire mark while only adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD does not change the mark sufficiently as to mitigate a finding that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
While Respondent argues that its registration of the <pinkalicious.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 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).”).
While Respondent contends that the <pinkalicious.com> domain name is comprised of a descriptive term and as such cannot be found to be identical to Complainant’s 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 to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make 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 argues that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Kevin Smith.” Complainant argues further that the WHOIS information, as well as. the lack of evidence on the record preclude the Panel from finding that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant also argues that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s disputed domain name resolves to a site offering links to children’s books and children’s books publishing; which, Complainant contends are competing with its own goods. The Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(a)(i) and Policy ¶ 4(a)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent asserts that its rights in the disputed domain name predate Complainant’s rights in the PINKALICIOUS mark, making it impossible to have registered it in bad faith. Respondent’s assertion extends from the WHOIS information which allegedly states that Respondent registered the disputed domain name on November 20, 2002. Complainant itself alleges that it began using the PINKALICIOUS mark in relation to its business as early as, August 25, 2004. The Panel notes that Complainant did not bring any argument to support a finding of bad faith registration. Therefore, the Panel finds that Respondent’s rights in the disputed domain name predate Complainant’s rights in the PINKALICIOUS mark precluding a finding of bad faith under Policy ¶ 4(a)(iii). See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”); see also Lydian Capital Advisors, LLC v. Aquino, D2005-0260 (WIPO Apr. 24, 2005) (finding that the respondent did not register the disputed domain name in bad faith where there was no evidence that it “was aware of the Complainant at the time it registered the domain name,” “[had no] intention to resell it,” and “ha[d] not prevented the Complainant from securing the more obvious choice of domain names”).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pinkalicious.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: July 12, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page