LML Investments LLC v. Authentic Country Girl
Claim Number: FA1301001482111
Complainant is LML Investments LLC (“Complainant”), represented by Jeremiah A. Pastrick of Continental Enterprises, Indiana, USA. Respondent is Authentic Country Girl (“Respondent”), represented by Ali F. Weinberg, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <authenticcountrybrand.com> and <authenticcountrybrands.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2013; the National Arbitration Forum received payment on January 25, 2013.
On January 28, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <authenticcountrybrand.com> and <authenticcountrybrands.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”).
On January 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@authenticcountrybrand.com, postmaster@authenticcountrybrands.com. Also on January 30, 2013, 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 February 19, 2013.
A timely Additional Submission from Complainant was received on February 26, 2013, and a timely Additional Submission from Respondent was received on March 4, 2013.
On March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
Complainant was founded in 2005, and operates in the field of clothing and accessories using the COUNTRY GIRL and COUNTRY BOY marks. Complainant has sold its line of clothing since 2007 under the monikers COUNTRY BRAND and COUNTRY BRAND CLOTHING. Complainant sells its products via in-person sales, catalog sales, and its website at the <countrybrandclothing.com> domain name. Complainant sells its products throughout the United States, as well as in Europe, South America, Australia, and numerous countries throughout the world. Complainant has advertised its products under the COUNTRY BRAND mark and established co-branding agreements using its mark with organizations including the Professional Bull Riding Association and Ford Motor Company. Complainant’s COUNTRY BRAND mark has established a secondary meaning through its extensive use of the name in the commercial market.
Respondent registered the <authenticcountrybrand.com> and <authenticcountrybrands.com> domain names following a failed business partnership discussion between the parties in June of 2012. The disputed domain names are confusingly similar to Complainant’s marks. Respondent was not commonly known by the disputed domain names until immediately prior to registering the domains, and does not use the <authenticcountrybrand.com> and <authenticcountrybrands.com> domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered the disputed domain names in bad faith because Respondent intentionally attempts to attract Internet traffic by using Complainant’s trademark in order to make a commercial gain. Respondent harassed and attempted to slander Complainant, which further demonstrates bad faith.
B. Respondent
Respondent has been involved in the apparel industry for more than two decades, having launched intimate apparel on behalf of Ralph Lauren, Tommy Hilfiger, Nicole Miller, and Avon Products. Respondent began designing a line of country-themed lingerie in 2008, and launched her line in July of 2011. Respondent was unaware of Complainant’s COUNTRY GIRL trademark at the time she filed a trademark application for the COUNTRY GIRL LINGERIE mark. Respondent’s application was refused due to a likelihood of confusion with Complainant’s mark, at which time Respondent immediately changed her lingerie line to AUTHENTIC COUNTRY BRAND, and filed for trademark registration with the USPTO for the mark. (Serial No. 85,642,208 filed June 4, 2012). .
Respondent denies that the <authenticcountrybrand.com> and <authenticcountrybrands.com> domain names are confusingly similar to Complainant’s COUNTRY BRAND and COUNTRY BRAND CLOTHING marks. Respondent challenges Complainant’s claim that these marks are entitled to common law protection, and argues that the terms “country,” “brand,” and “clothing” are descriptive, non-distinctive terms. Respondent asserts rights and legitimate interests in the <authenticcountrybrand.com> and <authenticcountrybrands.com> domain names, because Respondent has made preparations to sell her lingerie products at the resolving websites. Respondent denies that she registered the disputed domain names in bad faith, citing Complainant’s lack of evidence. Respondent contends that the products offered at the disputed domain names differ substantially from Complainant’s.
C. Additional Submissions
Complainant. Respondent’s 20 years working in the apparel industry has certainly exposed her to intellectual property and trademark rights on a regular basis, discrediting Respondent’s claim that she conducted a search on her chosen name for her business venture. Respondent was aware of Complainant when the USPTO refused to register the COUNTRY GIRL LINGERIE mark due to potential for confusion. Respondent’s investment in her business does not negate her infringement upon Complainant’s COUNTRY GIRL mark. Respondent’s claim that she mistakenly believed Complainant only disputed the AUTHENTIC COUNTRY GIRL mark and corresponding <authenticcountrygirl.com> domain name and not the AUTHENTIC COUNTRY BRAND and the two domain names at issue is false, as Complainant filed a temporary restraining order against Respondent two months after the disputed domain names were registered, asserting rights in its COUNTRY BRAND mark and protesting Respondent’s use of the <authenticcountrybrand.com> domain name. (Complainant was unaware of the <authenticcountrybrands.com> domain name at the time). Respondent admitted her awareness of Complainant’s brand in a telephone call with Complainant prior to the restraining order being filed. Respondent had a number of other synonymous, alternative names available to her to identify her lingerie line, including RELIABLE BACKWOODS WOMAN, VALID UNSOPHISITCATED FEMALE, IRREFUTABLE PROBINICAL ADOLESCENT, and VERTIABLE PURITANICAL DAUGHTER, none of which Complainant would consider infringing on the AUTHENTIC COUNTRY GIRL mark.
Respondent asserts that her preparation to sell her products at the resolving websites should allow her to maintain ownership of the domain names is improper as Respondent was clearly aware of Complainant’s COUNTRY BRAND and AUTHENTIC COUNTRY GIRL marks at the time she registered the <authenticcountrybrand.com> and <authenticcountrybrands.com> domain names. Respondent received warnings from Complainant as to Complainant’s rights in the marks, and cannot claim that she had no notice or knowledge of the marks at the time of registration.
Respondent. Respondent denies she is engaged in copyright infringement. Respondent restates that she did not understand Complainant was disputing her AUTHENTIC COUNTRY BRAND mark; that is why she expressly abandoned her trademark applications for COUNTRY GIRL LINGERIE and AUTHENTIC COUNTRY GIRL.
Respondent states that Complainant’s unregistered marks are comprised of descriptive or dictionary words. Respondent contends that Complainant has not satisfied its burden of proving the elements required by the UDRP.
The parties are engaged in a business dispute which is outside the scope of the UDRP.
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.
Preliminary Issue: Business Dispute Outside the Scope of the UDRP
This dispute is one essentially about alleged trademark infringement. Complainant filed a trademark infringement suit against Respondent in Ohio which was dismissed on jurisdictional grounds. Complainant acknowledges that the trademark dispute is ongoing. If Respondent is successfully ultimately in registering its mark for AUTHENTIC COUNTRY BRAND and defending the claim for trademark infringement, it would seem the Respondent could properly register the disputed domain names. Because this case is in reality a trademark dispute it is outside the scope of the UDRP.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
Based on the foregoing, the appropriate course of action for the Panel is to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Finding that the matters raised in the Complaint and Response concern a business dispute between the parties, it is Ordered that the Complaint be dismissed.
Bruce E. Meyerson, Panelist
Dated: March 15, 2013
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