BMF Enterprises LLC d/b/a BIONIC FAMILY v. Ronnie Marks
Claim Number: FA1211001471353
Complainant is BMF Enterprises LLC d/b/a BIONIC FAMILY (“Complainant”), represented by Eugene M. Pak of Wendel, Rosen, Black & Dean, LLP, California, USA. Respondent is Ronnie Marks (“Respondent”), Arizona, USA.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <bionicbandcenter.com>, <bionicbands.com>, <bionicfamilys.com>, <bionicrelief.com>, <mybionicbands.com>, <bionicbanddistributor.com>, <bionicbandsales.com>, <mybionicbands.net>, and <mybionicfamilys.com>, registered with GODADDY.COM, LLC, and <bionicbands.net>, registered with Wild West Domains.
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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 16, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <bionicfamilys.com>, <bionicrelief.com>, <mybionicbands.com>, <bionicbanddistributor.com>, <bionicbandsales.com>, <mybionicbands.net>, and <mybionicfamilys.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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”). It is noted that the <bionicbands.net> domain name was registered with Wild West Domains and that Wild West Domains’ is owned by GoDaddy.com, LLC. It is also noted that GoDaddy.com, LLC verified that the <bionicbands.net> domain name was registered to Respondent.
On November 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@bionicbandcenter.com, postmaster@bionicbands.com, postmaster@bionicbands.net, postmaster@bionicfamilys.com, postmaster@bionicrelief.com, postmaster@mybionicbands.com, postmaster@bionicbanddistributor.com, postmaster@bionicbandsales.com, postmaster@mybionicbands.net, and postmaster@mybionicfamilys.com. Also on November 16, 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.
On December 4, 2012, Respondent submitted a Request for Extension of Time to Respond to Complaint without Complainant’s Consent, requesting an extension of 20 days. On December 4, 2012, Complainant submitted an Objection to Granting of Respondent’s Request for Extension. Also on December 4, 2012, the Order approving an extension for Respondent to file a Response was given in the amount of 11 days.
A timely Response was received and determined to be complete on December 17, 2012.
A timely Additional Submission was received from Complainant on December 22, 2012, and was deemed to be in compliance with Supplemental Rule 7.
A timely Additional Submission was received from Respondent on December 27, 2012, and was deemed to be in compliance with Supplemental Rule 7.
On January 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran 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 names be transferred from Respondent to Complainant.
A. Complainant
i. BIONIC BAND (Reg. No. 3,588,743 filed Apr. 9, 2008; registered Mar. 10, 2009);
ii. BIONICBAND & Design (Reg. No. 4,000,074 filed June 1, 2010; registered July 26, 2011);
iii. BIONICEDGE (Reg. No. 4,094,608 filed Jan. 3, 2011; registered Jan. 31, 2012);
iv. BIONIC FUSION (Reg. No. 4,178,712 filed Nov. 22, 2011; registered July 24, 2012);
v. BIONIC RELIEF (Reg. No. 4,165,731 filed May 26, 2011; June 26, 2012);
vi. BIONICSIL (Reg. No. 3,932,293 filed Dec. 21, 2009; registered Mar. 15, 2011); and
vii. BIONIC SPORT (Reg. No. 4,094,620 filed Jan. 7, 2011; registered Jan. 31, 2012).
i. Respondent’s <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <mybionicbands.net>, <bionicbanddistributor.com>, and <bionicbandsales.com> domain names are confusingly similar to Complainant’s BIONIC BAND mark.
ii. Respondent’s <bionicrelief.com> domain name is confusingly similar to the BIONIC RELIEF mark.
iii. Respondent’s <bionicfamilys.com> and <mybionicfamilys.com> domain names are confusingly similar to the BIONIC FAMILY trademark and trademark.
i. Respondent is a former distributor of Complainant’s products who was removed from this position after it was found that he registered the <bionicbands.com> domain name, which violated the terms of his agreement with Complainant. Respondent registered additional infringing domain names after being warned by Complainant.
ii. Although Respondent was an authorized distributor of Complainant’s products, Respondent was not authorized to use the BIONIC family of marks as part of a domain name.
iii. Until just before the Complaint was filed, Respondent’s website located at the <bionicbands.com> domain name actively sold Complainant’s goods without authorization to do so. Respondent’s other domain names resolved to similar websites selling Complainant’s goods without authorization to do so.
iv. Respondent currently uses the disputed domain names to resolve to a website entitled “FRIGGIN BAND,” which appears to sell competing products being developed or sold by Respondent.
i. Respondent registered the BIONIC domain names to prevent Complainant from doing so, and has engaged in a pattern of such bad faith registrations. Respondent has not only registered the ten disputed domain names here, but also 39 other domain names that include or incorporate Complainant’s marks. See Pak Decl., Exhibit B.
ii. Respondent registered and is using the disputed domain names to disrupt the business of Complainant by using them to sell Complainant’s goods without authorization, and now competing goods.
iii. Respondent registered and is using the disputed domain names in bad faith by attempting to attract Internet users to his websites for his own commercial gain by creating a likelihood of confusion with Complainant’s BIONIC marks.
i. Respondent has produced false and misleading statements. Respondent did not register the <bionicrelief.com> domain name on October 17, 2010, and thus prior to Complainant’s trademark registrations, but another individual had originally registered that domain name. The prior registrant sold the domain name back to GoDaddy.com in or about November 2011, several months after Complainant began using the BIONIC RELIEF mark.
ii. Respondent registered the disputed domain name after Complainant filed its trademark application with the USPTO.
iii. Respondent’s claims that he registered and is intending to create a website for autism is dishonest and was made in bad faith.
i. Complainant expressly and repeatedly objected to Respondent’s use of the <bionicbands.com> domain name, and never consented to such use.
ii. The fact remains that Complainant is the owner of the USPTO trademark registration for BIONIC BAND, not Respondent.
Complainants has established rights in many marks of which the word “bionic” forms a part, but sufficient evidence does not exist to indicate that a “family of marks” has been established that would enable Complainant to extend its rights beyond those marks that are confusingly similar to those bionic marks in which it has rights. In this regard, the Panel takes administrative notice of the fact that the records of the U.S. Patent and Trademark Office show that there are 139 live registrations and pending applications of which the word “bionic” forms at least a part and that they include earlier rights of third parties including usage for goods in the same classification.
Complainant’s Policies and Procedures precludes its distributors from using its bionic band mark without even a general preclusion as to any other marks in which it has or might acquire, and such silence in a document prepared by Complainant as to use of other marks could be construed as tacit permission to obtain domains that do not include the bionic band mark even if Complainant might have related rights.
Complainant sought to terminate Respondent’s use of the <bionicbands.com> URL, but took no action as to other domains prior to this dispute despite knowledge of Respondent’s activities for a substantial period of time.
Respondent contends that it at least indirectly obtained permission to obtain and use the domains at issue as evidenced by the period of its use of the URL’s of Complainant’s, but evidence provided by Complainant of its continuing attempts to have Respondent’s use terminated followed by termination of Respondent as a distributor and filing of this Complaint is found to sufficiently rebut Respondent’s contention.
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.
Complainant, BMF Enterprises LLC d/b/a Bionic Family, claims that it owns the trademark BIONIC BAND, and other marks containing the term “bionic.” Complainant argues that it is the leading provider of bracelets, bands, jewelry, and medicinal products that it has marketed and sold within the United States since 2008. Complainant asserts that it owns the following trademark registrations with the USPTO, among others:
BIONIC BAND (Reg. No. 3,588,743 filed Apr. 9, 2008; registered Mar. 10, 2009);
BIONICBAND & Design (Reg. No. 4,000,074 filed June 1, 2010; registered July 26, 2011);
BIONICEDGE (Reg. No. 4,094,608 filed Jan. 3, 2011; registered Jan. 31, 2012);
BIONIC FUSION (Reg. No. 4,178,712 filed Nov. 22, 2011; registered July 24, 2012);
BIONIC RELIEF (Reg. No. 4,165,731 filed May 26, 2011; June 26, 2012);
BIONICSIL (Reg. No. 3,932,293 filed Dec. 21, 2009; registered Mar. 15, 2011); and
BIONIC SPORT (Reg. No. 4,094,620 filed Jan. 7, 2011; registered Jan. 31, 2012).
The Panel finds that through such trademark holdings with the USPTO, Complainant has established rights in the marks presented under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Further, the Panel finds that Complainant’s rights in the marks begin with the filing date of Complainant’s trademarks with the USPTO. See 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”).
Further, Complainant also uses other BIONIC marks or trade names including: BIONIC FAMILY, BIONICSLEEP, BIONICJEWELRY, and BIONICKIDS, but the Panel notes that Complainant does not appear to have provided evidence of the extensive use of such trade names and marks sufficient to have obtained common law rights therein. Specifically, the Panel notes that Complainant’s arguments about the existence of “BIONIC FAMILY” of marks within its Complaint is not supported by the evidence submitted by Complainant and appears to be inconsistent with the findings of third party marks notice of which has been taken in the findings above. Therefore, the Panel declines to find that Complainant has established trademark rights in the BIONIC FAMILY, BIONICSLEEP, BIONICJEWELRY, and BIONICKIDS marks See G. Bellentani 1821 S.p.A. v. Filoramo, D2003-0783 (WIPO Nov. 21, 2003) ("[T]he Policy does not extend to trade names.”) or that it has established a “family” of marks entitled to an expanded range of enfocement.
Complainant argues that Respondent’s <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <mybionicbands.net>, <bionicbanddistributor.com>, and <bionicbandsales.com> domain names are confusingly similar to Complainant’s BIONIC BAND mark. The Panel notes that the disputed domain names above, all include the BIONIC BAND mark, excluding the space between the terms, while adding the letter “s” in some domain names, and/or adding the generic terms “center,” “my,” distributor,” or “sales.” Further, the Panel finds that all of the disputed domain names add the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel agrees with Complainant and finds that Respondent’s <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <mybionicbands.net>, <bionicbanddistributor.com>, and <bionicbandsales.com> domain names are confusingly similar to Complainant’s BIONIC BAND 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).
Further, Complainant contends that Respondent’s <bionicrelief.com> domain name is confusingly similar to the BIONIC RELIEF mark. The Panel notes that the disputed domain name contains the entire BIONIC RELIEF mark, while omitting the space and adding the gTLD “.com.” The Panel therefore finds that the <bionicrelief.com> domain name is identical to the BIONIC RELIEF mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant also argues that Respondent’s <bionicfamilys.com> and <mybionicfamilys.com> domain names are confusingly similar to the BIONIC FAMILY trademark and trademark. However, as noted above the Panel does not find that Complainant has rights in the BIONIC FAMILY mark, and the Panel finds that the <bionicfamilys.com> and <mybionicfamilys.com> domain names are not confusingly similar to Complainant’s BIONIC BAND mark or any of its other registered trademarks.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
Complainant contends that Respondent is a former distributor of Complainant’s products who was removed from this position after it was found that he registered the <bionicbands.com> domain name, which violated the terms of his agreement with Complainant. Complainant notes that Respondent registered additional infringing domain names after being warned by Complainant. Complainant argues that although Respondent was an authorized distributor of Complainant’s products, Respondent was not authorized to use the BIONIC family of marks as part of a domain name. The Panel notes that the WHOIS information for the disputed domain names identify “Ronnie Marks” as the registrant of the domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See 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).
Further, Complainant argues, both within its Complaint and Additional Submission, that until just before the Complaint was filed, Respondent’s website located at the <bionicbands.com> domain name actively sold Complainant’s goods without authorization to do so. Complainant notes that Respondent’s other domain names resolved to similar websites selling Complainant’s goods without authorization to do so. See Complainant’s Annex 6, Exhibit C. The Panel finds that such use of the disputed domain names, without current authorization to do so, 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 Gen. Ecology, Inc. v. Metcalf, FA 146569 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent lacked rights and legitimate interests in the <seagull-4.com> domain name based in part on the “evidence on record that Respondent was terminated as a distributor of Complainant's SEAGULL products”); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant’s evidence only shows Respondent’s use of the <bionicbands.com> domain name, but appears to argue that all of the domain names resolve to similar or identical pages. However, the Panel holds that arguments are not a substitute for evidence so that the Panel finds that such use of the disputed domain names 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) only with respect to those domain names which incorporate the words “bionic bands”, especially given the finding that the Complainant’s Policies and Procedures only prohibited use of its BIONIC BANDS mark, and that the 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) as to those domain names which do not include the words “bionic bands.” Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <mybionicbands.net>, <bionicbanddistributor.com>, and <bionicbandsales.com> domain names 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).
The Panel further finds that Respondent does have rights and legitimate interests in the <bionicfamilys.com>, <bionicrelief.com> and <mybionicfamilys.com> domain names under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered the BIONIC domain names to prevent Complainant from doing so, and has engaged in a pattern of such bad faith registrations. Complainant argues that Respondent has not only registered the ten disputed domain names here, but also 39 other domain names that include or incorporate Complainant’s marks. See Pak Decl., Exhibit B. Prior UDRP panels have determined that the registration of several trademark infringing domain names is evidence of a respondents bad faith under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). Furthermore, Respondent adopted the domains containing the words “bionic bands” in contravention with its agreement with Complainant and despite repeated demands to cease such violations. Thus, the Panel finds that Respondent registered and is using the <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <bionicbanddistributor.com>, <bionicbandsales.com>, and <mybionicbands.net>, domain names in bad faith under Policy ¶ 4(b)(ii).
As to the domains which do not include the words “bionic band”, i.e., <bionicfamilys.com>, <bionicrelief.com> and <mybionicfamilys.com> 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).
Reverse Domain Name Hijacking
The Panel notes that Complainant, within its Additional Submission, contends that Respondent itself did not obtain the <bionicrelief.com> domain name until after Complainant had filed for its trademark for the BIONIC RELIEF mark. Even if the Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. In this case, Respondent has failed to demonstrate that Complainant knew or should have that it could not establish all elements required in accordance with Policy ¶ 4(a). See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent). Therefore, the Panel finds that Complainant has not committed reverse domain name Hijacking.
Having established all three elements required under the ICANN Policy with respect to some of the domains, but not as to others, the Panel concludes that relief shall be GRANTED IN PART and DENIED IN PART.
Accordingly, it is Ordered that the <bionicbandcenter.com>, <bionicbands.com>, <bionicbands.net>, <mybionicbands.com>, <bionicbanddistributor.com>, <bionicbandsales.com> and <mybionicbands.net> domain names be TRANSFERRED from Respondent to Complainant, but that <bionicfamilys.com>, <bionicrelief.com> and <mybionicfamilys.com> domain names REMAIN WITH Respondent.
David S. Safran, Panelist
Dated: January 18, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page