Phyljohn Distributors, Inc. d/b/a Gillette Creamery v. tom driscoll
Claim Number: FA1110001412918
Complainant is Phyljohn Distributors, Inc. d/b/a Gillette Creamery (“Complainant”), represented by Karin Segall of Leason Ellis LLP, New York, USA. Respondent is tom driscoll (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tricountyicecream.com>, registered with Tucows, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2011; the National Arbitration Forum received payment on October 25, 2011.
On October 25, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <tricountyicecream.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@tricountyicecream.com. Also on October 26, 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 November 14, 2011.
Complainant filed an Additional Submission on November 18, 2011. The Submission was timely filed in accordance with Supplemental Rule 7.
On November 18, 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.
The Panel filed consecutive Orders for Additional Submissions and Extending Time for Rendering a Decision on November 30, 2011, December 8, 2011, and December 9, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant fulfills the conditions of paragraph 4(a) of the UDRP Policy. Specifically, by virtue of its long period of continuous prior use, Complainant has rights in the mark TRI-COUNTY ICE CREAM.
Respondent has wholly co-opted Complainant’s name and mark into its own confusingly similar and essentially identical domain name <tricountyicecream.com>. Moreover, Complainant is aware of at least one instance of actual confusion.
Complainant concludes that in light of the above, it is irrefutable that the domain name <tricountyicecream.com> is identical to, or confusingly similar with, Complainant’s well-known name and mark TRI-COUNTY ICE CREAM and that the Panel should so find.
Claimant alleges that the Respondent is using the domain name <tricountyicecream.com> to intentionally attract customers of Complainant’s products and thereby divert them away from Complainant. Specifically, Respondent is using the domain name <tricountyicecream.com> to resolve to a website that offers the same ice cream products in the same geographic region serviced by Complainant.
Respondent’s use of the disputed domain name does not constitute a bona fide use of the domain name under Policy ¶4(c)(i) or (ii). Nor does the use constitute a legitimate business interest under Policy ¶ 4(c)(iii) as Respondent is using the domain name in connection with an ostensible for-profit business to divert Internet users attempting to reach Complainant’s website to its own website.
Complainant concludes that Respondent has no right or legitimate interest in the disputed domain name and that the Panel should so find.
Complainant alleges that the Policy ¶ 4(b) sets out 4 circumstances for demonstrating bad faith 2 of which are present in the matter before us; that Respondent registered tricountyicecream.com with the primary intention of disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii) and, that tricountyicecream.com has been used to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s trademark in violation of Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent’s dealings during the course of the dispute with Complainant further suggests its bad faith.
B. Respondent
Respondent legally obtained the trade name TRI-COUNTY ICE CREAM from the State of New York, Department Of State on 9th August 2007 and legally obtained the domain name on 8th November 2008. The domain name is in direct connection to Respondent’s trade name TRI-COUNTY ICE CREAM LLC. Respondent claims that the Division of Corporations conducted a search and determined that no other business entity or person was legally using that name TRI-COUNTY ICE CREAM or anything resembling that trade name.
Respondent has owned and maintained the disputed domain name since 8th November 2008. The Respondent is known by its trade name, TRI-COUNTY ICE CREAM and by the domain name <tricountyicecream.com>. Respondent claims that it has the right to the domain name as it is in direct connection to the trade name and that it did everything legal to obtain the domain name. Respondent asserts that it has been conducting business transactions with the domain name ever since purchasing it.
Respondent also alleges that Complainant’s acts constitute reverse domain name hijacking.
C. Additional Submissions
Complainant reiterated and expanded its arguments raised in the Complaint. Particularly, Complainant rejects Respondent’s contention that no other business was legally using the trade name or anything resembling the trade name is as unsupported and untrue.
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.
Under Policy ¶ 4(a)(i), Complainant must prove that it has rights in the TRI-COUNTY ICE CREAM mark. Complainant states that it does not have a trademark registration for the mark and that a registration is unnecessary to establish rights under the mark because it has done so under the common law.
Previous panels have determined that registering a mark is not required to establish rights in said mark under the Policy. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The Panel finds that lacking a registration for the TRI-COUNTY ICE CREAM mark does not preclude a finding that Complainant has rights in the mark under Policy ¶ 4(a)(i), where Complainant is able to prove its rights under the common law.
Complainant claims that the TRI-COUNTY ICE CREAM mark has become so identifiable with its business that it has established its rights in the mark under the common law. Complainant submits multiple examples of its use of the mark in conjunction with its business including the incorporation documents indicating that Complainant assumed the name “Tri County Ice Cream” in 1992. See Complainant’s Exhibit A. Complainant also submits photographs depicting the mark’s use on the side of its delivery trucks and in conjunction with promotional campaigns. Complainant claims that it has been using the mark to support, promote, and operate its business since it assumed the “Tri County Ice Cream” name in 1992 and that this use has created a secondary meaning for the mark as associated with its business.
The Panel finds that Complainant’s continuous use of the mark for nearly 20 years in conjunction with its business has established Complainant’s rights in the TRI-COUNTY ICE CREAM mark under the common law and as a result, under Policy ¶ 4(a)(i). See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name).
Complainant also claims that Respondent’s <tricountyicecream.com> domain name is confusingly similar to its TRI-COUNTY ICE CREAM mark. According to Complainant, the disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and removing the spaces between terms, along with the removal of a hyphen.
The Panel finds that these changes fail to remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “tom driscoll.” Complainant also states that there is no evidence to indicate that Respondent is commonly known by the disputed domain name.
The burden now shifts to Respondent to show that it does have rights and legitimate interests in the disputed domain name.
Respondent has not made a showing that it is commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. According to Complainant, the disputed domain name resolves to a website offering competing ice cream products for sale. Complainant submits a print out ostensibly verifying its assertions. See Complainant’s Exhibit C.
Previous panels have determined that using a disputed domain name for competitive purposes does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also 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.”).
Respondent claims that it is commonly known by the disputed domain name because it has been using it for over three years and people have come to associate the domain name with its business. However, Respondent has failed to submit the evidence to which it cites in its Response. The Panel may only find that Respondent is commonly known by the disputed domain name where it submitted conclusive documentary evidence to support this position. Respondent has failed to do so.
Respondent also claims that it is engaging in a bona fide offering of goods. Respondent states that it is merely offering legitimate ice cream products and related services from its website. Respondent states that the disputed domain name reflects its business name, and that the business has been rightfully conducted under that name and domain name. Respondent asserts that a search conducted by the New York Secretary of State’s office concluded that no other business was legally using the TRI-COUNTY ICE CREAM trade name or anything resembling that trade name. However, the Panel is not swayed.
The TRI COUNTY ICE CREAM brand name and mark has been in use ever since 1946. It has become notorious in Eastern New York State. Complainant acquired the mark in 1985 and since then has become the largest supplier of ice cream products in Eastern New York State. It is inconceivable that Respondent did not know of the TRI COUNTY ICE CREAM name and mark when it registered its domain name in 2008, particularly in light of the fact that Respondent operates in the same region as Complainant and offers goods that are similar to the Complainant’s. Under these circumstances, the New York Secretary of State could not reasonably determine that no one is using the TRI-COUNTY ICE CREAM trade name. Accordingly, Respondent’s acts cannot constitute a bona fide offering of goods and related services.
The Panel finds that Respondent offering of goods is not a bona fide offering of goods and related services, or a legitimate noncommercial or fair use of the disputed domain name in accordance with Paragraph 4(c)(i) of the ICANN Policy.
Complainant alleges that Respondent’s disputed domain name disrupts its business supporting a finding of bad faith registration and use. According to Complainant, Respondent’s disputed domain name resolves to a website offering competing products for sale. Complainant posits that Internet users will arrive at Respondent’s website and then purchase goods from Respondent instead of Complainant.
The Panel, in an attempt to verify Complainant’s assertions, did indeed arrive at Respondent’s website. There was no indication on Respondent’s website which distinguished it from Claimant.
Complainant also alleges that Respondent utilizes the disputed domain name for its own commercial gain constituting bad faith registration and use. Complainant claims that Respondent’s disputed domain names resolves to a site that offers competing products for sale. Respondent presumably generates revenue through the sale of these competing products.
Respondent alleges that at no point did it intend to divert customers from Complainant’s business. Respondent states that its intentions with regard to the disputed domain name and the resolving website were merely to operate its own legitimate business and sell ice cream. Respondent claims that at no point was it aware of Complainant’s rights nor did it intend to capitalize on the rights Complainant had in any alleged mark.
The Panel does not find this position to be credible. As stated in the discussion related to rights or legitimate interests, the Panel believes that Respondent knew or should have known of the existence of the Complainant’s trademark. It is inconceivable that given the circumstances, that Respondent could not have known of the existence of the TRI COUNTY ICE CREAM trademark and name, particularly in light of the fact that Respondent operates in the same region as Complainant and offers goods that are similar to the Complainant’s. Respondent must have been aware of the TRI COUNTY ICE CREAM mark at the time it registered the domain name.
Accordingly, the Panel finds that Respondent’s use does disrupt Complainant’s business and provides affirmative evidence of 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).”); 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)).
Additionally, the Panel finds that Respondent registered and used the disputed domain name for its own commercial gain constituting bad faith registration and use under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also 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).
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a) and therefore finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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 <tricountyicecream.com> domain name be TRANSFERRED from Respondent to Complainant
Calvin A. Hamilton, Panelist
Dated: December 30, 2011
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