Monsterops, LLC v. John Kiefer
Claim Number: FA1305001497692
Complainant is Monsterops, LLC (“Complainant”), represented by Thomas J. Overton of The Overton Law Firm, Colorado, USA. Respondent is John Kiefer (“Respondent”), represented by James Given, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dangerouslyhardcore.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.
Hon Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dangerouslyhardcore.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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@dangerouslyhardcore.com. Also on May 3, 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 May 22, 2013.
Complainant submitted an Additional Submission on May 29, 2013, which was determined to be deficient under UDRP Supplemental Rule 7 due to the fact that the payment for this submission was received on May 30, 2013—after the Forum’s deadline had passed.
Respondent submitted an Additional Submission, which was received on May 31, 2013, and found to be compliant on June 3, 2012.
On June 5, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon Sir Ian Barker QC 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.
The Panel has decided in the exercise of its discretion and in the interests of justice to receive and consider the Complainant’s Additional Submission. It was filed only one day late and it had been received by the Forum before the Panel had been appointed.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, Monsterops, LLC (“Monsterops”) and its sister companies, T Nation LLC and Biotest LLC, are wholly owned by the Testosterone Company LLC (“Testosterone”). Testosterone is in the business of selling nutritional supplements and clothing accessories through subsidiaries on the Internet. Monsterops owns the intellectual property for the group, T Nation operates the website, and Biotest manufactures the nutritional supplements. Exclusive IP licensing arrangements are in place to allow T Nation and Biotest to use Monsterops’ intellectual property. Since all the companies are under the same ownership, they will be referred to collectively as the “Complainant”.
Since May 15, 1998, the Complainant has used the trademark DANGEROUSLY HARD CORE! in marketing goods and services for the four companies. Prior to 1998, it used the mark in its printed materials. A trademark had been registered in the United States Patent and Trademark Office (“USPTO”) by Testosterone LLC (now T Nation LLC) on January 2, 2001 for the mark DANGEROUSLY HARD CORE! When that trademark registration lapsed in 2007 Monsterops reapplied for registration of the mark in 2010 which was re-registered on January 3, 2012.
The Complainant currently uses the registered trademark in connection with its marketing and advertising of its goods and services. It claims to have used the mark in its website since 1998.
The Complainant learned of the Respondent’s use of the disputed domain name when the Respondent filed a trademark registration for the term ‘DANGEROUSLY HARD CORE’ on February 23, 2013. The Complainant has filed an opposition to the Respondent’s trademark application which opposition has not yet been determined by the USPTO.
The Respondent’s website has an image of “Testosterone” Magazine - the hard copy predecessor of the T Nation’s website on the publications page.
The disputed domain name is confusingly similar to the Complainant’s registered trademark.
The Respondent is selling clothing through the disputed domain name and thus infringes the Complainant’s trademark.
The website operated under the disputed domain name has the same “look and feel” as the website operated by T Nation. The Complainant’s mark is used in articles about nutrition, fitness and body building.
The Respondent uses the disputed domain name to divert business from the Complainant and to redirect business to himself, particularly in the area of clothing and nutritional products.
The Complainant’s attorney contacted the Respondent on April 17, 2013. A Response dated April 23, 2013 from the Respondent’s attorney stated that the Respondent would stop using the word “hardcore” and the Complainant was welcome to bid for the right to purchase the disputed domain name. The Respondent’s attorney did not mention the application for a trademark by the Respondent for the terms DANGEROUSLY HARDCORE. He did state that the Respondent was rebranding his business and that was the reason for his being prepared to sell the domain name. He stated that the Respondent would cease sales of clothing through the website.
The Respondent has no rights of legitimate interests in respect of the disputed domain name and none of the exceptions in paragraph 4(c) of the Policy apply.
The disputed domain name was registered and is being used in bad faith. The Respondent created the disputed domain name long after the Complainant had first used its mark. The Respondent registered the Domain Name for the purpose of obstructing the business of a competitor. The Respondent is well aware that he is diverting consumers of the Complainant by selling goods that compete with the Complainant’s goods. The website includes magazines published by the Complainant. The Respondent has no license or right to use the Complainant’s trademark. His website is used primarily for the purpose of destroying the Complainant’s business.
B. Respondent
The Respondent, who is a physicist and teacher, claims to be a recognized expert in the field of health, nutrition and human performance. He uses the website accessed by the disputed domain name to offer fitness and nutrition advice and run an affiliated business.
The disputed domain name was registered on May 12, 2008. At the time of that registration, no trademark registration existed for the name. The Complainant uses the disputed domain name for the purpose of selling clothing whereas the Respondent offers books on nutrition. The Respondent’s sale of the clothing ceased immediately on receipt of the letter from the Complainant’s attorney.
The Respondent’s domain name does not attempt pass off or otherwise embody the Complainant’s color scheme. The “steel and red” look of the website’s color scheme is a trend in the nutrition and exercise industry as is exhibited by many different websites.
The content of the Respondent’s website, accessed by the disputed domain name, has been a personal web log of the Respondent until late 2012, when guest writers began contributing comments. There is a monthly audience of about 1,000,000 visitors. 76% of the traffic comes from direct referral which demonstrates the social presence of and random dependence of the disputed domain name. Only 4% of visitors come from search efforts. The website provides complimentary information on nutrition, training, health and wellness.
The Respondent applied for a registered trademark in February 2013 in the services category of “providing information views and commentary in the field of nutrition, health and wellness”. There were no conflicting trademarks in that category at the time.
The Respondent has never offered the disputed domain name for sale but, when the Complainant demanded it for free and without compelling justification, the Respondent encouraged the Complainant to purchase it at a price to help defray the Respondent’s costs of rebranding. The Respondent operates a very different business from the Complainant’s.
The Complainant has only shown limited usage of the mark back to 1998. The disputed domain name is not confusingly similar to the Complainant’s trademark.
The Respondent is not using the disputed domain name to divert business from the Complainant to himself. The incidental clothing sales stopped almost immediately upon a complaint from the Complainant’s attorney.
As far as the Respondent’s trademark filing is concerned, this was not mentioned by his counsel when dealing with the Complainant’s counsel because it “did not appear germane”.
The Respondent then states “For clarity, Kiefer currently has no current interest in pursuing this trademark filing (as it will be inconsistent with the rebranding)”.
The Respondent should be able to maintain the disputed domain name as long as his offerings do not include men’s clothing. It is the Complainant’s assertion that it is commonly known by its T Nation website and the use of the phrase “dangerously hardcore” in association with its products, goods and services. The Respondent can only assume that the Complainant is referring to the registered trademark which covers only the men’s clothing line.
The Complainant’s products and services are used extensively by consumers of nutrition, fitness and body building products whereas the primary business of the Respondent is to deal with the authoring and producing and selling of information on diet and nutrition in the form of printed books and electronic books. The Respondent does not use paid advertisement placement as a source of income.
The disputed domain name is unlikely to cause confusion with the Complainant’s registered trademark amongst ordinary purchasers. The Respondent is not aware of actual confusion and finds Google web search analyses inconsistent.
As to bad faith, the Respondent registered the disputed domain name on May 18, 2008 at a time when the Complainant’s former registered trademark had lapsed.
The Respondent did not register the domain name to divert customers from the Complainant that but states that the Complainant has not presented a continuous and compelling picture of how the Complainant has used its registered or other trademarks. The Respondent denies that he registered the disputed domain name for the purpose of disrupting the business of a competitor.
The Respondent was obviously aware of some of the Complainant and its affiliates and even referred some of the Respondent’s customers to the Complainant to purchase its supplementation products. However, the Respondent’s primary products are books on dieting and athletics. The Complainant does not have any competitive offering of such books. The Respondent has lawfully and obviously created a unique brand identity on the site.
In an unduly long and repetitive document, the Respondent summarises that none of the situations named in paragraph 4(b) of the Policy apply to him. The Respondent seeks a declaration of reverse domain name hijacking.
C. Complainant’s Additional Submissions
The Respondent admits that he sold competing goods using the disputed domain name.
The Respondent’s argument is that the exclamation mark in the trademark is a meaningful variation but does not otherwise indicate how his use of the mark gives him any rights or legitimate interests. The Respondent admits he was aware of the Complainant’s print publications and the Complainant has evidence that the Respondent bought goods from the Complainant and was provided fees for writing articles for the Complainant.
D. Respondent’s Additional Submission
The bulk of the submission involves further discussion over the scope, validity and basis of the existence of the Complainant’s registered mark. The Complainant has failed to show how a mark registered for use in the solicitation of men’s clothing can foreclose the Respondent’s use of the disputed domain name. The Respondent has made continued use of the disputed domain name for his legitimate blogging and bookselling business since April 2010.
(a.) The disputed domain name is confusingly similar to a registered trademark in which the Complainant has rights.
(b.) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(c.) The disputed 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:
(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: Multiple Complainants
In the instant proceedings, there references in the Complaint to different entities as Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are four entities. Three of them, including the named Complainant, are owned by the fourth – The Testosterone Company LLC.
Previous panels have held that multiple parties can proceed as one where sufficient links can be shown. Here, there is no question that sufficient links exist and the Respondent has made no issue based on multiple complaints.
The Panel allows the Complainant to proceed under Supplemental Rule 1(e).
Preliminary Issue: Dispute Outside Policy
Normally, in a situation, as here, where the Respondent has applied to the USPTO for a trademark for an almost identical form as an existing trademark, the Panel should decline to rule on the Complaint. The basis for so declining to rule is that the Policy establishes an inexpensive administrative dispute resolution procedure, intended only for relatively narrow cases of abuse of registrations. In other words, the Policy should only be used to repel cybersquatters and, where there are legitimate trademark disputes, a Panel should decline to make a decision and allow the parties to have the matter disposed of under trademark law by the USPTO.
However, in this case the Respondent has stated that he does not wish to pursue his trademark application. On this basis, the Panel proceeds to continue with the analysis of the case. Presumably, the Respondent will notify the USPTO of this decision.
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark. The existence of the exclamation mark in the trademark does not decrease the confusing similarity. Otherwise the two are identical.
The fact that the disputed domain name was registered at a time when the Complainant’s previous trademark had lapsed is irrelevant for the purposes of this criterion. It could be relevant under the criterion relating to bad faith.
Accordingly, the Complainant has proved paragraph 4(a)(i) of the Policy.
The Complainant gave the Respondent no rights in respect of the disputed domain name to reflect its trademark in any way. Consequently, the burden shifts to the Respondent to show that he comes within one or other of the limbs of paragraph 4(c) of the Policy.
The Respondent is operating a website similar to the Complainant’s website and has admitted to selling competing clothing products using the marketing phrase “dangerously hardcore”. In addition, the Respondent provides commentaries and blog postings from different authors concerning health and fitness topics.
In the Panel’s view, the Respondent’s activities compete with the Complainant’s own nutritional supplement business. There cannot be a bona fide offering of goods and services nor a legitimate non-commercial or fair use. The Respondent is not using the disputed domain name for a bona fide offering of goods and services under paragraph 4(c)(i) of the policy not for a legitimate non-commercial or fair use under paragraph 4(c)(iii). The Respondent used the disputed domain name to divert Internet users to a website that offers services that compete with those offered by the Complainant under its registered mark.
The Panel does not make much out of the alleged color similarity of the two websites. However, it is important to note that the Respondent did sell clothing in competition with the Complainant until he ceased so doing after the Complainant’s attorney wrote to him. The Respondent claims that he wishes to “rebrand” because of a marketing perception that potential female customers are turned away by the use of the term “hardcore” in conjunction with the term “dangerously” which denotes an “adult” content.
The Panel cannot agree that the Respondent has any legitimate interests because the terms in the mark are generic terms. The terms in the mark may be generic. That could have been a factor when registration was granted for the trademark but this Panel cannot go behind the grant of registration by the USPTO.
Registration and Use in Bad Faith
Both registration and continuing use in bad faith have to be proved separately. A difficulty here is that at the date of registration of the disputed domain name in 2008, the previous trademark owned by or on behalf of the Complainant had lapsed or been allowed to lapse and the Complainant owned no registered mark at that date.
It seems clear from the information provided by the Complainant that it had been producing marketing and advertising its wares under the “dangerously hardcore” brand since 1998. It has demonstrated sufficient common law trademark rights.
The Respondent was well aware of the Complainant at least in 2008 when he registered the disputed domain name. He received fees for writing articles for the Complainant and in fact purchased clothing from the Complainant.
Other factors which indicate bad faith registration and use are as follows:
(a) The fact that both parties were selling similar items, namely nutritional supplements and clothing using the expression “seriously hardcore”.
(b) With the Respondent’s website remaining as it is, there must inevitably be confusion amongst internet users. Those seeking to find out about the Complainant may end up on the Respondent’s website. Clearly this possibility must have the effect of impeding the business of a competitor.
(c) The Respondent’s willingness to sell the Domain Name to the Complainant indicates bad faith. The statement that the Respondent was endeavoring to recover “costs of rebranding” (unspecified) shows that he wanted far more than just reimbursement of the cost of registration of the Domain Name.
(d) The Respondent is in the same nutritional supplement market as the Complainant. Customers must therefore be diverted. The Respondent’s side bar listing of the Respondent’s nutritional advice books could make it easier for the Internet user to confuse the Respondent for the Complainant. The Respondent explicitly includes magazines published by the Complainant on the disputed domain name website.
(e) The Respondent has admitted he was aware of the Complainant’s printed publications. There is therefore a likelihood that the Respondent had actual knowledge of the Complainant’s mark, albeit in an unregistered state, when he registered his disputed domain name
Accordingly, the Complainant has proved paragraph 4(a)(iii) of the Policy and is entitled to have the disputed domain name transferred to it.
Since the Respondent has failed to succeed, there is no point in considering the Respondent’s claim for a declaration of reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dangerouslyhardcore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Sir Ian Barker QC, Panelist
Dated: June 18, 2013
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