Evan D. Townsley v. Direct Garden Supplies / Ian Collins
Claim Number: FA1112001421353
Complainant is Evan D. Townsley (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Direct Garden Supplies / Ian Collins (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phatfilters.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 27, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <phatfilters.com> 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 December 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2012 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@phatfilters.com. Also on December 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <phatfilters.com> domain name is confusingly similar to Complainant’s PHAT FILTER mark.
2. Respondent does not have any rights or legitimate interests in the <phatfilters.com> domain name.
3. Respondent registered and used the <phatfilters.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Evan D. Townsley, claims common law rights in the PHAT FILTER mark. Complainant operates in the hydroponics industry. Specifically, Complainant uses the PHAT FILTER mark to distribute charcoal carbon air filtration systems used in greenhouse and hobby greenhouse applications.
Respondent, Direct Garden Supplies / Ian Collins, registered the disputed domain name on June 9, 2011. The disputed domain name is being used to resolve to a website selling competing carbon filters.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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), a complainant is not required to register a mark with a trademark authority in order to establish rights in that mark. 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). A complainant can establish rights in a mark through a sufficient demonstration of common law rights in the mark. See 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). Complainant does not present a trademark registration with a national trademark authority for its PHAT FILTER mark. Therefore, the Panel will determine if Complainant owns common law rights in its PHAT FILTER mark under Policy ¶ 4(a)(i).
Complainant introduced its PHAT FILTER-branded product in 2005 and, since that time, has earned over a million dollars in revenues from its sale. Complainant also provides evidence of its continuous and extensive marketing of the PHAT FILTER product, including its registration of the <phatfilter.com> domain name in October 2003. This evidence leads the Panel to conclude that Complainant’s use of the PHAT FILTER mark has created secondary meaning in the mark sufficient to confer common law rights under Policy ¶ 4(a)(i), dating back to at least 2005. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant urges that the Panel find the <phatfilters.com> domain name to be confusingly similar to its PHAT FILTER mark pursuant to Policy ¶ 4(a)(i). The disputed domain name wholly includes the PHAT FILTER mark, adding an “s” and the generic top-level domain (“gTLD”) “.com,” while deleting the space between the words in Complainant’s mark. The addition of the single letter “s” to a mark does not distinguish a disputed domain name from the mark for the purposes of Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Moreover, the omission of the space between words in a mark and the affixation of a gTLD can never distinguish a disputed domain name under Policy ¶ 4(a)(i). See 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)). Based on these findings, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
The Panel holds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). In the immediate case, Complainant has satisfied its burden, while Respondent has not. This as an admission that a respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel, however, will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has not authorized Respondent’s use of the PHAT FILTER mark as a trade name or domain name. The WHOIS information identifies the domain name registrant as “Direct Garden Supplies / Ian Collins,” which the Panel finds to bear no resemblance to the <phatfilters.com> domain name. There is no evidence in the record to demonstrate that Respondent is commonly known by the disputed domain name, given Respondent’s failure to submit a Response. In light of the foregoing, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of 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 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 alleges that Respondent’s use of the disputed domain name can be considered neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name is being used to resolve to a website selling competing carbon filters. The use of a disputed domain name to market and sell competing products or services violates both Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel holds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s use of a confusingly similar domain name increases the chance that visitors to Respondent’s site will have originally intended to view information about Complainant’s PHAT FILTER-branded products. Visitors to the resolving website are offered products which directly compete with Complainant’s PHAT FILTER products, and inevitably some visitors will purchase these competing products rather than seek out Complainant’s products. The Panel finds Respondent’s registration and use to demonstrate bad faith disruption of Complainant’s business 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 EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s registration and use of the disputed domain name also suggests bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s selection of a confusingly similar domain name evidences Respondent’s attempt to associate itself with Complainant. Respondent seeks to attract visitors to its site by wrongfully benefitting from the notoriety and goodwill that Complainant’s PHAT FILTER mark has achieved. In this way, Respondent generates a commercial gain through the sale of its products by creating confusion as to the source of its website. The Panel finds this to demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel holds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phatfilters.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 30, 2012
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