national arbitration forum
Water Resources Group, LLC, a New York Limited Liability Company v. LeeAnn Powers
Claim Number: FA1206001446834
Complainant is Water Resources Group, LLC, a New York Limited Liability Company (“Complainant”), represented by Randy M. Friedberg of White and Williams LLP, New York, USA. Respondent is LeeAnn Powers (“Respondent”), represented by Jessica S. Rutherford of Grimes & Battersby, LLC, Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iceboxwater.com>, registered with GoDaddy.com, Inc.
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.
JAIME DELGADO as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2012; the National Arbitration Forum received payment on June 1, 2012.
On June 5, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <iceboxwater.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@iceboxwater.com. Also on June 6, 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 27, 2012.
On July 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed JAIME DELGADO 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 makes the following contentions:
a) Complainant has common law rights in the ICEBOX WATER mark;
b) The ICEBOX WATER mark is used in connection with the sale of glacier-fed Norwegian spring water contained in an eco-friendly container;
c) The <iceboxwater.com> domain name is identical to the ICEBOX WATER mark;
d) Respondent is not commonly known by the <iceboxwater.com> domain name;
e) Respondent is a former employee of Complainant’s who registered, without authorization, the <iceboxwater.com> domain name in Respondent’s name rather than in Complainant’s name as instructed;
f) At all times Complainant was the sole operator of the <iceboxwater.com> domain name and was led to believe Complainant had exclusive control and ownership of the <iceboxwater.com> domain name;
g) The <iceboxwater.com> domain name previously resolved to Complainant’s website as run by Complainant;
h) The <iceboxwater.com> domain name is inactive;
i) Respondent refuses to transfer the <iceboxwater.com> domain name but is willing to sell the disputed domain name, which evidences bad faith;
j) Respondent was fully aware, at the time of registration of the <iceboxwater.com> domain name, of Complainant’s rights in the ICEBOX WATER mark.
B. Respondent
Respondent makes the following contentions:
a) Complainant does not have rights in the ICEBOX WATER mark;
b) Respondent has rights in the ICEBOX WATER mark;
c) Respondent has been using the ICEBOX WATER mark in connection with the sale of Arctic spring water in biodegradable boxes since as early as 2006;
d) Respondent is commonly known by the <iceboxwater.com> domain name;
e) Respondent registered and began using the <iceboxwater.com> domain name on its own behalf and never transferred or assigned rights in the <iceboxwater.com> domain name or the ICEBOX WATER mark to Complainant;
f) Respondent was not an employee of Complainant’s at the time of the registration of the <iceboxwater.com> domain name, and Respondent’s registration of the <iceboxwater.com> domain name predates its employment with Complainant by almost two years;
g) Respondent has been using the <iceboxwater.com> domain name in connection with a bona fide offering of goods or services for more than three years prior to the initiation of the present dispute;
h) Respondent has been using the <iceboxwater.com> domain name continuously for the promotion, marketing, and sale of the ICEBOX branded products;
i) The <iceboxwater.com> domain name was not registered and is not being used in bad faith;
j) The <iceboxwater.com> domain name was not registered and used with an intent to sell the disputed domain name;
k) The <iceboxwater.com> domain name’s registration predates any acquisition of rights Complainant may have had by more than two years.
The Panel notes that Respondent registered the <iceboxwater.com> domain name on April 6, 2009.
FINDINGS
The Panel finds that while Respondent registered the <iceboxwater.com> domain name on April 6, 2009, Complainant filed an application (now allowed) to Register the mark ICEBOX WATER on 26 October 2011 but in the application as filed, Complainant neither claimed a date of first use nor a date of first use in commerce. The data on the trademark application indicated the following.
“International Class: 032
Class Status: Active
Drinking water
Basis: 1(b)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)
International Class: 039
Class Status: Active
bottling of water for distribution by others
Basis: 1(b)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)”
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 or Confusingly Similar: Policy ¶ 4(a)(i).
Respondent argues that Complainant does not have rights in the ICEBOX WATER mark. Rather, Respondent argues that it has rights in the ICEBOX WATER mark. Respondent argues that Complainant has not presented any evidence of its use of the ICEBOX WATER mark other than content on the <iceboxwater.com> domain name, that Respondent developed and implemented. Respondent argues that Complainant did not have any connection to the ICEBOX WATER mark up until the point that it began working with Respondent who had been using the ICEBOX WATER mark previously for years. Respondent provides the Panel with evidence of its use of the ICEBOX WATER mark dating back to 2007 in connection with the sale of the ICEBOX WATER products. The Panel notes that Complainant’s evidence of use of the mark dating back to 2007 is simply a reference on an informational page stating that the ICEBOX WATER products were introduced in the United States at that time by a company called “Water Partners.” Finally, Respondent asserts that a mere application for a USPTO trademark registration filed years after Respondent’s use of the mark is insufficient for an establishment of rights. Furthermore, in said application, Complainant neither claimed a date of first use nor a date of first use in commerce in either one of international classes 032 corresponding to United States classes 045, 046, and 048 for drinking water and 039 corresponding to United Sates classes 100 and 105 for water for distribution by others. Therefore, the Panel finds that Complainant does not have rights in the ICEBOX WATER mark pursuant to Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
Complainant has not satisfied Policy ¶ 4(a)(i) because Complainant does not have rights in the ICEBOX WATER mark, this is evident from the fact that Complainant did not claim first use or first use in commerce prior to the filing date of the trademark application. Surely, if Complainant had had prior use Complainant would have so claimed in his trademark application which was rather filed on intent to use and not based on use prior to the filing date of the trademark application. That is, before the date when the domain name was registered. The Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established the first of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED
Accordingly, it is Ordered that the <iceboxwater.com> domain name REMAIN with Respondent.
JAIME DELGADO, Panelist
Dated: July 11, 2012
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