Ansell Limited v. - / Kevin Kovar
Claim Number: FA1112001421538
Complainant is Ansell Limited (“Complainant”), represented by Raymond R. Moser of Moser Taboada LLC, New Jersey, USA. Respondent is - / Kevin Kovar (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skyn.com>, registered with Go Daddy.
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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2011; the National Arbitration Forum received payment on January 3, 2012.
On December 28, 2011, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <skyn.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@skyn.com. Also on January 6, 2012, 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 January 25, 2012.
A timely Additional Submission from Complainant was received on January 27, 2012.
A timely Additional Submission from Respondent was received on January 31, 2012.
All submissions were considered by the Panel.
On January 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Respondent’s <skyn.com> domain name is identical to Complainant’s SKYN mark.
2. Respondent does not have any rights or legitimate interests in the <skyn.com> domain name.
3. Respondent registered and used the <skyn.com> domain name in bad faith.
B. Respondent makes the following contentions:
1. Complainant only has trademark control of ‘SKYN’ in relation to its use with Condom products.
2. There are seven live trademarks with ‘SKYN’ that are registered by parties other than Complainant, and whose registration preceded Complainant’s registration.
3. The use of the term ‘SKYN’ is commonly used and intended as the same as the English word ‘skin’.
4. The Respondent registered the domain for his clothing business primarily because of its identical phonation to ‘skin’.
5. Respondent purchased the domain <skyn.com> from domain broker <buydomains.com> on June 26th, 2011 after multiple negotiations in years 2009 and 2011. Respondent paid a substantial price of $5,000.00.
6. Before receiving a complaint letter from Ansell Limited on November 28th, 2011, Respondent had already conducted a variety of tasks toward the development of <skyn.com>.
7. Respondent has a history of acquiring a domain name for the sole intention of developing the site into a bona fide business.
8. Respondent is not a domain squatter, nor does he buy domains for the purpose of profiting from them or driving traffic.
9. Respondent never intended for his website to compete with Complainant, or to divert or confuse people seeking any product or service.
C. Complainant’s Additional Submission
1. Respondent provides no evidence that the marks are not confusingly similar.
2. Respondent failed to establish that he has rights or legitimate interests in the domain name.
3. Even if respondent had rights or legitimate interests in <skyn.com>, evidence of bad faith registration and use mandate the transfer of <skyn.com> to Complainant.
D. Respondent’s Additional Submission
Respondent has provided sufficient evidence of legitimate business interests in the domain since acquiring it.
Complainant owns the trademark SKYN registered with the United States Patent & Trademark Office on April 20, 2008.
For the reasons set forth below, the Panel finds that Complainant is not entitled to relief.
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.
Identical and/or Confusingly Similar
Complainant presents evidence that it owns a trademark registration for the SKYN mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,525,372 filed October 3, 2007; registered October 28, 2008). The Panel finds that Complainant possesses rights in the SKYN mark under Policy ¶ 4(a)(i) by virtue of its trademark registration with the USPTO and that those rights date back to the original filing date with the USPTO of October 3, 2007. 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 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 claims that the <skyn.com> domain name is identical to the SKYN mark. The Panel notes that the disputed domain name contains Complainant’s mark entirely while adding only the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD has been found irrelevant to a Policy ¶ 4(a)(i) analysis by previous UDRP panels. 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 Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”). The Panel therefore finds that the <skyn.com> domain name is confusingly similar to Complainant’s SKYN mark.
Complainant has proven this element.
Rights and 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.”).
Respondent states, and supplies a sales receipt to show, that he purchased the domain name for $5,000 on June 26, 2011 from <buydomains.com> in preparation for setting up an online clothing company. Respondent argues that it purchased this domain name because “of its identical phonetics to the word ‘skin’…” Since that time Respondent asserts that it has been working with a web developer to get its clothing store website up and running. Respondent submits emails from a web developer with screenshots of the developing website and discussions of how to proceed within his exhibits. Respondent argues that his “extensive preparations to use the domain in connection with a bona fide offering of goods and services prior to any notice of this dispute, knowledge of the existence of Complainant, or any contact from Complainant…” proves that he has rights and legitimate interests in the domain name. Further, Respondent argues that Complainant’s trademark registration is limited to use for condoms and that many third parties also use the term “skyn” in their business names and as trademarks for goods outside of Complainant’s international class. The Panel agrees and finds that Respondent has made sufficient preparations to use the disputed domain for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations); see also Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001) (holding that the respondent’s submission of an extensive and elaborate business plan demonstrating the respondent's preparation to use the domain name in connection with a bona fide offering of goods or services was sufficient to establish a legitimate interest in the disputed domain name).
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).
Complainant has not proven this element.
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concluded that Respondent has rights or legitimate interests in the <skyn.com> domain name pursuant to Policy ¶ 4(a)(ii), and, therefore, the Panel 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.”).
The Panel further finds that Respondent has not registered or used the <skyn.com> domain name in bad faith since it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that it did not register the domain name to sell it to anyone, much less to Complainant, and that considering offers to buy a domain name during development is not evidence that Respondent’s primary intent was to sell the domain name. The Panel finds that Respondent did not register the domain name primarily to sell it to Complainant or its competitors, and therefore did not register the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”).
Further, Respondent argues that his registration and use of the <skyn.com> domain name does not deprive Complainant of the opportunity to reflect its mark in a domain name. Respondent notes that Complainant offers its products through the <skyncondoms.com> and <anselllimited.com> websites. Respondent asserts that his registration for the domain name at issue does not prevent Complainant from reflecting its mark, and that Respondent does not have a pattern of bad faith registrations. Therefore, the Panel finds that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Minn. Mining and Mfg. Co. v. Overbey, D2001-0727 (WIPO Oct. 15, 2001) (finding that Policy ¶ 4(b)(ii) was inapplicable because the complainant already had registered and used a domain name containing its mark and thus, “the Panel does not find that [the complainant] has been deprived of its ability to register or use the mark as a domain name”).
Respondent argues that it has not profited or intended to profit from any of the links on its resolving website. Respondent contends that it parked the domain name with <sedo.com> because it was a free service while Respondent was working with its web developer to create a website for the domain name. Respondent asserts that it has never been paid for any such links upon its website and that it has subsequently changed some available settings from <sedo.com> in order to remove any links involving Complainant’s business. Respondent reiterates that it is not a competitor of Complainant and has not attempted to profit from any goodwill that is associated with Complainant’s business. Further, Respondent asserts that many companies and businesses use the term “skyn” as either a trademark or business name, and that Respondent did not know of Complainant until it received its letter in November of 2011. The Panel finds that Respondent has not registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where the complainant failed to submit any evidence that the domain name was registered in bad faith); see also Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum Apr. 20, 2007) (finding the respondent’s parking of the <archivers.com> domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant” prevents the panel from drawing the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links.).
Complainant has not proven this element.
Complainant 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 <skyn.com> domain name REMAIN WITH Respondent.
Karl V. Fink (Ret.), Panelist
Dated: February 1, 2012
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