Volk Enterprises, Inc. v. Leo LI
Claim Number: FA1205001445845
Complainant is Volk Enterprises, Inc. (“Complainant”), represented by W. Scott Creasman of Taylor English Duma LLP, Georgia, USA. Respondent is Leo LI (“Respondent”), China, acting Pro Se.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <popuptimers.com>, registered with GoDaddy.com, LLC.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2012; the National Arbitration Forum received payment on May 25, 2012.
On May 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <popuptimers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@popuptimers.com. Also on June 1, 2012, 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.
A timely Response was received and determined to be complete on June 15, 2012.
On June 20, 2012, Complainant Submitted an Additional Submission in compliance with the Forum’s Supplemental Rule 7.
On June 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Volk Enterprises, Inc., is a Delaware, USA corporation that manufactures, markets, and sells cooking thermometers and poultry trussing devices and began using the POP UP trademark for its disposable cooking thermometers in 1982.
Complainant owns trademark registrations for its POP UP mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,848,392 issued August 2, 1994); United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2482106 registered October 16, 2009); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA711715 registered April 11, 2008); and with the French National Institute of Industrial Property (“NIIP”) (Reg. No. 3572111 registered April 25, 2008).
Respondent’s <popuptimers.com> domain name, which was registered on July 21, 2011, resolves to a website that advertises and offers to sell disposable thermometers that directly compete with Complainant’s offerings of the same products.
The <popuptimers.com> domain name is confusingly similar or identical to Complainant’s POP UP mark, merely adding the generic term “timers” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name where it is selling directly competing and inferior goods.
In 2008, Dan Volk, Complainant’s Vice President and Director of Corporate Development was contacted by the Respondent, Leo LI, who wanted to be a manufacturer of Volk’s POP UP ® disposable thermometers. Respondent’s request was refused and Respondent was not given permission to use the POP UP mark and is not commonly known by the <popuptimers.com> domain name.
Respondent registered and is using the disputed domain name in bad faith, since it had actual knowledge of Complainant’s rights in the POP UP mark prior to registering the domain name and has sought commercial gain from using Complainant’s mark within the domain name.
B. Respondent
Respondent knows that the POP UP brand belongs to Complainant and has never held itself out to be Complainant.
Respondent’s products are visibly different from those of Complainant.
POP UP TIMER has become a generic or popular name for a disposable cooking thermometer.
Respondent’s customers buy from Respondent because of the products’ high performance to price ratio, not because of an association with Complainant’s mark.
(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.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s trademark registrations with several national trademark authorities establishes Complainant’s rights in the POP UP mark under Policy ¶ 4(a)(i), regardless of the fact that Respondent resides in China. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001). The Panel notes that the disputed domain name also removes the space between the terms of Complainant’s mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to the POP UP mark 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)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005).
The Panel notes that 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).
Complainant contends that the WHOIS information identifies Respondent as “Leo Li,” which is dissimilar to the <popuptimers.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).
The Panel notes that Respondent has copied and used content from Complainant’s website in order to market and sell its products and that such directly competing use is not 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010).
The Panel finds that Respondent is using the POP UP mark in order to confuse Internet users into visiting Respondent’s website where competing goods that look substantially similar to Complainant’s goods are sold, and Respondent clearly benefits from such use of the POP UP mark through its sales of disposable thermometers. Respondent has copied material from Complainant’s website in order to further the confusion caused to Internet users as to the source of the resolving website. Therefore the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <popuptimers.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: June 27, 2012
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