Claudette Y. Lobbins v. Vangaurd Design
Claim Number: FA0302000146601
PARTIES
Complainant is Claudette Y. Lobbins, Castaic, CA
(“Complainant”). Respondent is Vangaurd Design, Towson, MD
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <prettyears.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace,
Q.C., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 24, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On February 25,
2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to
the Forum that the domain name <prettyears.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.Com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2003,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 26, 2003 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@prettyears.com by e-mail.
A timely Response
was received and determined to be complete on March 25, 2003.
Complainant’s
additional submission was timely received on March 31, 2003. Complainant’s
additional submission includes material in response to specific allegations
made by Respondent and is therefore proper and relevant, and the Panel has
considered this submission in coming to this decision.
On April 7, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
purchased the disputed domain name <prettyears.com> on July 22, 2000. Originally the disputed domain name was
registered with Register.com and technical contact was with Concentric Network
Corporation. When Concentric Network Corporation
changed its business structure, Complainant decided to move her domain name and
website to a company named Hostway.com in January 2001. On January 21, 2001, Complainant received
confirmation from Register.com that her domain name server had been changed. She followed all of the directions from
Hostway.com for transfer of the Disputed Domain Name to Hostway.com and the
website was up and running within two days.
Hostway.com confirmed the web hosting on January 21, 2001. On February 20, 2001, Complainant
established her website as an e-commerce site through a company called Iongate,
which is a subsidiary of Costco.
Complainant began
the business involving the mark PRETTYEARS in early 2000 and has been using the
name PRETTYEARS since February 2000.
The product to which the name PRETTYEARS is attached is an ear cap. It is a small beauty product which is used
by women who style their hair using heated cosmetology tools. Complainant filed evidence with respect to
her use of the mark PRETTYEARS in relation to the ear cap, including corporate
registration, a sample product, a video of a thirty second television
commercial, magazine advertisements, postcards and bank account
information. This evidence, together
with the evidence of registration of <prettyears.com> in July of 2000,
demonstrate that Complainant was using the mark PRETTYEARS in her business from
February 2000 to date. In January 2001,
Complainant established a bank account for the e-commerce portion of her
business and for offering Visa and MasterCard sales.
Complainant
searched the United States Patent and Trademark Office (“USPTO”) on July 19,
2000 and was advised that while there had been a registration at one time, the
name was “dead” as of November 9, 1989.
She was advised by USPTO that she should use the trademark for a period
of two years and then apply for registration of same. Complainant made application for the trademark PRETTYEARS on
November 29, 2002.
The expiry date
for the hosting of the disputed domain name with Hostway.com was to be January
9, 2003. Through some confusion, with
respect to which the Panel has little evidence, Respondent somehow purchased
the disputed domain name on August 29, 2002.
When Complainant discovered that Respondent was using the disputed
domain name, she began sending e-mails to Respondent requesting that the domain
name be returned to her. In January
2003, Respondent installed a pornographic website at <prettyears.com> .
Complainant
contends that she has common law trademark rights in PRETTYEARS and <prettyears.com> and that the
domain name is identical to or confusingly similar to her trademark.
Complainant further contends that Respondent has no rights or legitimate
interest in the dispute domain name and that by Respondent’s use of the domain
name to link to a pornographic website, Complainant has been forced to pull all
sales of her products because she would lose goodwill with her customers and
the existence of the pornographic website will injure her company’s good name.
Lastly,
Complainant submits that Respondent is using the domain name in bad faith
because Respondent was aware that the domain name was released in error from
Complainant’s control; because Respondent’s use of the domain name which
resolved to a pornographic website tarnishes the goodwill and marketability of
the Complainant’s feminine product; and because Complainant has repeatedly
attempted to contact Respondent by certified mail but that the messages have
been returned. Complainant asserts that
by using her domain name, Respondent has disrupted her business, which suggests
Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent’s
position is that Complainant had no trademark rights in PRETTYEARS when
Respondent registered <prettyears.com>.
Respondent is in
the business of buying and selling domain names as well as promoting various
affiliate programs on the Internet. Respondent buys domain names that appear to
them to have some intrinsic value and then promotes various affiliate programs
on them or sells them at a later date.
Respondent says that in this case a check of the USPTO revealed no
trademark at the time the domain was purchased on August 29, 2002. There was only an expired trademark for
1983. Complainant’s trademark registration was not until November 11, 2002,
which is after Respondent had registered the disputed domain name.
Respondent states
that because there was no registered trademark on the domain name, Complainant
would have to prove common law trademark rights and that she has failed to do
so because the mark is not famous, the mark is not distinctive and the domain
name contains two very generic terms “pretty” and “ears.”
C. Additional
Submissions
Complainant’s
additional submission deals with the question of whether Complainant has common
law rights in PRETTYEARS and <prettyears.com>. Complainant points out that almost every
exhibit which was submitted in her original package has a date of either 2000,
2001 or 2002. These dates, Complainant
submits, especially the original purchase of the domain name in July 2000, are
conclusive evidence that she used PRETTYEARS and <prettyears.com> long
before Respondent registered the disputed domain name on August 29, 2002.
Complainant
submits that she has common law rights in the marks because she was the first
to use them and she has continued to use them in her business. Complainant further submitted evidence
showing that her business began in June 1999 and that she had registered the
business names PRETTYEARS and <prettyears.com> with the San Diego County
Office on February 1, 2001. She also
provided evidence of public notice of the names in the San Diego Commerce
Newspapers on February 28, 2001.
Complainant submits therefore that she is the legal and rightful owner
of the trademark PRETTYEARS and <prettyears.com>. Complainant submits that she has used the
PRETTYEARS mark on her product since February 2000 while Respondent has used <prettyears.com> since January 2003 for a pornography website.
FINDINGS
The
Panel finds as follows:
1.
The domain
name <prettyears.com> is identical to Complainant’s
marks PRETTYEARS and prettyears.com.
2.
Respondent
does not have rights or legitimate interests in the domain name.
3.
Respondent
registered and is using the domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
Complainant
has continuously conducted operations, advertised and offered its product under
the PRETTYEARS mark since February 2000.
Complainant is the original registrant of <prettyears.com>,
initially registered on July 22, 2000.
On the evidence before us, the Panel is satisfied that Complainant has
sufficiently demonstrated rights in the PRETTYEARS mark for the purpose of
Policy 4(a)(i). See McCarthy on
Trademarks and Unfair Competition, Section 25:74.2, Volume 4 (2000) (the ACANN
Dispute Resolution Policy is “broad in scope” in that “the reference to a
trademark or service mark” “in which the Complainant has rights” means that
“ownership of a registered mark is not required - unregistered or common law
trademark rights will suffice” to support a domain name complaint under the
policy). On the evidence before us, Complainant has common law rights in the
trademark and the trademark is sufficiently distinctive to permit the
acquisition of those rights.
There
is no question that the disputed domain name <prettyears.com> is
identical to Complainant’s PRETTYEARS mark. Complainant has established the
first element.
Complainant
essentially argues that Respondent has opportunistically registered the domain
name after Complainant’s domain name registration accidentally lapsed. Complainant contends that it was the
original registrant of <prettyears.com> and that its registration expired because of
alleged procedural irregularities over which it had no control. Complainant provided documentation which was
not contradicted, that shows that the subject domain registrations’ renewal was
not due until January 2003.
Under
Policy 4(c)(i), Respondent can show rights to and legitimate interests in the
domain name by demonstrating that before any notice of the dispute, Respondent
has used or made demonstrable preparations to use the domain name or a name
corresponding to the domain name in connection with the bona fide
offering of goods or services. In this
case, Respondent has provided no evidence whatsoever of any use of or
demonstrable preparations to use the domain name in connection with the bona
fide offering of goods or services.
Under
Policy 4(c)(ii), there is no evidence that Respondent has been commonly known
by the domain name or that Respondent has required any trademark or service
mark rights in the name.
Lastly,
there is no evidence that Respondent is making any legitimate non-commercial or
fair use of the domain name without its intent for commercial gain.
Respondent
states that it is in the business of buying domain name registrations that
appear to hold intrinsic value and then using the domain names to promote
various affiliate programs or selling the registrations at a later date. In this case, the inference to be drawn from
all of the evidence, however, is that Respondent opportunistically registered
the disputed domain name when it discovered that Complainant’s domain name had
accidentally lapsed. The registration
by Respondent took place virtually immediately following the lapse of
Complainant’s domain registration.
Respondent
has failed to show that it has a right to or legitimate interest in the
disputed domain name. Complainant has established the second element.
Policy
4(b)(i) states there will be bad faith where there are circumstances indicating
respondent registered or has acquired the domain name primarily for the purpose
of selling, renting or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of
respondent’s out-of-pocket costs directly related to the domain name.
Complainant
asserts that Respondent registered and used the domain name in bad faith in
this sense because Respondent was aware that the domain name was “released in
error” from Complainant’s control. In this case, where the domain name was
previously used by Complainant, the Panel is entitled to infer bad faith in the
absence of any evidence to the contrary.
See InTest Corp. v. Servicepoint FA95291 (Nat. Arb. Forum
Aug 30, 2000). Here, Respondent registered the disputed domain name immediately
after the name was “released.” Other than a general explanation that Respondent
is in the business of buying and selling domain names and promoting various
affiliate programs on the Internet, Respondent has not provided any explanation
for why Respondent chose the name <prettyears.com>
and why Respondent chose that name when it did. On all the evidence before
us, the logical inference to be drawn is that Respondent took advantage of the
error in lapse of the disputed domain name registration and Complainant’s
failure to renew it. The Panel is of the view that these circumstances amount
to bad faith within the meaning of Policy 4(b)(i), and therefore Complainant
has established the third element.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <prettyears.com> domain name be TRANSFERRED
from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: April 21, 2003
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