D1 Sports Holdings, LLC v. Dimension One Spas
Claim Number: FA1305001502653
Complainant is D1 Sports Holdings, LLC (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Dimension One Spas (“Respondent”), represented by Eric A. Handler of Donahue Gallagher Woods LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <d1.com>, registered with Network Solutions, LLC.
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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received payment on May 31, 2013.
On May 31, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <d1.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@d1.com. Also on May 31, 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 June 27, 2013.
Complainant submitted an Additional Submission on July 2, 2013, which was received by the Forum and determined to be compliant that same day.
Respondent has also submitted an additional Submission on July 8, 2013, which was received by the Forum and determined to be compliant that same day.
On July 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Machado 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 alleges:
1. Complainant began using the D1 mark as early as March 1, 2003 for sports training services.
2. Complainant has rights in the D1 mark under Policy ¶ 4(a)(i).
a. Complainant owns registrations for its D1 mark with the United States Patent and Trademark Office (“USPTO”)
i. Reg. No. 2,877,559 registered August 24, 2004 (filed on August 18, 2003)
ii. Reg. No. 4051176 registered November 8, 2011
b. Complainant’s D1 mark is well known in the United States due to its advertising, promotions and sales over ten years of use.
c. Respondent registered the <d1.com> domain name on August 7, 1995.
d. Respondent’s resolving website was not active until March 1, 2003.
e. Respondent’s resolving website did not feature any content until May 29, 2003.
3.Respondent’s <d1.com> domain name is identical to Complainant’s registered D1 mark.
a.Respondent’s <d1.com> domain name contains Complainant’s D1 mark in its entirety.
4.Respondent has no rights or legitimate interests in the <d1.com> domain name.
a. Complainant’s first use of the D1 mark was well before Respondent’s first active use of the <d1.com> domain name.
b. Respondent’s <d1.com> domain name resolves to a parked page.
c. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policies ¶¶ 4(c)(i) or (iii).
5.Respondent registered and is using the <d1.com> domain name in bad faith.
a. Respondent is using the disputed domain name to resolve to a website featuring links that compete with Complainant.
b. Respondent is attempting to create confusion with Complainant’s D1 mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
c. Respondent fails to use the website resolving from the <d1.com> domain name.
d. Respondent had actual notice of Complainant’s rights in the D1 mark.
B. Respondent
Respondent alleges:
1. Respondent is a California corporation by the name of New Dimension One Spas, Inc.
2. On February 3, 2013, Respondent acquired the assets of a former California corporation, Dimension One Spas, Inc. (“D1”).
3. D1 acquired rights in the <d1.com> domain name on August 7, 1995.
4. Respondent’s assignment includes the rights the D1 trademark.
5. D1 was founded in 1977 and conducted business under the trade names “Dimension One Spas,” and “D1” from the mid 1980’s through February 4, 2013.
6. D1 was commonly known in the hot tub and spa manufacturing and distribution fields as “D1.”
7. D1 used the “D1” name because “D” stands for “Dimension” and “1” stands for “one.”
8. D1 commercially used the “D1” mark around the world and in forty different countries to sell and distribute hot tubs and spas.
9. D1 sold and distributed approximately 175,000 hot tubs and spas and hundreds of thousands of parts and accessories for the hot tubs and spas in connection with the D1 mark since the beginning of Respondent’s existence.
10. Respondent has continued the business of D1 by selling and distributing hot tubs, spas, and related products and accessories.
11. Since acquiring Dimension One’s assets, Respondent has regularly referred to itself as “D1” in marketing materials.
12. Respondent has rights in the D1 mark through various trademark registrations:
a. Respondent is the owner of the USPTO registration for the D1 mark (Reg. No. 2,827,281 registered March 30, 2004).
b. Respondent owns international registrations for the D1 mark
i.World Intellectual Property Organization (WIPO) (Reg. No. 886,634 registered July 18, 2005.)
c.Respondent owns common law rights in the D1 mark.
i.Respondent’s and its predecessor have continuously used the been known by the D1 mark since the mid 1980’s.
ii.Respondent uses the D1 trademark regularly in marketing for the sale of hot tubs, spas and accessories.
iii.Respondent has established a secondary meaning in the D1 trademark.
d. Respondent purchased the <d1spas.com> domain name in 1996.
e. Complainant did not exist until 2002.
13. Neither D1 nor Respondent had knowledge of Complainant’s existence until the present UDRP proceeding.
14. Respondent has rights and legitimate interests in the <d1.com> domain name.
a. Respondent is commonly known by the <d1.com> domain name.
b. Respondent is making a bona fide offering of goods or services.
c. Respondent is making a legitimate noncommercial fair use of the <d1.com> domain name.
15. Complainant has not proven that the <d1.com> domain name was registered or used in bad faith.
16. Complainant has engaged in reverse domain name hijacking.
C. Additional Submission
a. Complainant
i. Passive holding of a domain name for a certain period of time will prevent a well-known trademark holder such as Complainant to be unable to reflect its mark in a domain name. Respondent’s use of <d1spas.com> does not impute upon Respondent an unlimited right to use <d1.com>.
ii. Complainant provided a set of facts that call for the determination of the Panel, and were not merely an act of deception or reverse domain name high jacking
b. Respondent
i. On the other hand, in its additional submission, Respondent stated that by not contesting a single fact in the record adduced by Respondent nor citing to even a single authority, Complainant with its Additional Submission has conceded the following:
ii. Respondent’s registered and common law rights in the D1 trademark (the “Mark”) are senior in every respect to any purported Mark rights of Complainant.
iii. Because the disputed domain name is nothing more than the Mark plus the .com gTLD, Respondent’s rights in the Domain are also senior to any right Complainant can plausibly claim in the Domain. Therefore Complainant cannot prove it has any rights in the Domain as required by UDRP ¶ 4(a)(i).
iv. Respondent and its predecessor (“D1”) had never heard of Complainant prior to the Complaint being filed on May 31, 2013. Moreover, since acquiring D1’s assets on February 4, 2013, and with the exception of only a few days at the end of May 2013 when Respondent experienced temporary issues with its web hosting company, Respondent has consistently used the Domain to redirect Internet users to its official website accessible through its d1spas.com domain name. Because that redirection has been and remains a bona fide offering of goods, and because it began before Respondent had notice of this dispute, Respondent has an absolute defense to the Complaint under UDRP ¶¶ 4(a)(ii) and 4(c)(i). That absolute defense is strongly fortified by the exact same redirection done by D1 from 2011 through February 4, 2013 and by D1’s use of the Domain as the direct portal to its official website from 2003 to 2005.
v. Respondent is widely known as “D1,” and D1 was known as “D1” decades before Complainant even existed. That gives Respondent another absolute defense to the Complaint under UDRP ¶ 4(a)(ii) and ¶ 4(c)(ii).
vi. Complainant did not exist until 2002, and its alleged Mark rights did not arise until March 1, 2003 at the earliest. Respondent’s predecessor D1, by sharp contrast, registered the Domain in 1995. Consequently, Respondent has yet another absolute defense to the Complaint under UDRP ¶ 4(a)(iii) as it is impossible for Complainant to prove that D1 somehow registered the Domain in bad faith vis-à-vis a then-non-existent complainant.
vii. Respondent’s use of the Domain, just like D1’s use of the Domain long before it, exactly conforms with Respondent’s senior registered and common law rights in the Mark. That conclusively demonstrates Respondent’s use in good faith of the Domain, particularly since neither Respondent nor D1 had any knowledge of Complainant prior to this dispute. Complainant thus cannot satisfy the use-in-bad-faith element of UDRP ¶ 4(a)(iii).
viii. Respondent and D1 have at all relevant times – i.e. consistently from at least seven years before Complainant’s alleged rights in the Mark accrued through the present – used the d1spas.com domain name to advertise their products. That website usage has conformed exactly with the senior registered and common law Mark rights of Respondent and D1. By not addressing the issue, Complainant agrees that such use of the d1spas.com domain name by Respondent and D1 has been in good faith. Since the dominant element of the d1spas.com domain name is also the Mark, the use by Respondent and D1 of the Domain (whether that be for the same purpose as they have used the d1spas.com domain name, or for no purpose during periods of inactivity) has necessarily been in good faith as well.
ix. Respondent also argued on its addition submission that Complainant’s Additional Submission is inherently contradictory considering it first argues that Respondent’s use of the Domain should be characterized as “passive holding,” while it then goes on to admit that “Complainant’s use of its mark preceded respondent’s active use of the subject domain name.”
x. Respondent’s evidence proves that since 2011 there has been no “passive holding” of the Domain by either Respondent or D1. During those years the Domain has consistently pointed Internet users to the official website of first D1 and then of Respondent through automatic redirection to their d1spas.com domain name.
xi. Yet to Complainant, since there was a single day during these years when Respondent’s website was inaccessible because of an issue Respondent had with its web hosting company, Respondent’s Domain ownership should for some reason be classified as “passive.”
xii. Respondent stated that D1 actively used the Domain from 2003 to 2005 as the direct portal to its website where it advertised its products in exact conformity with its senior registered and common law rights in the Mark.
xiii. Considering Respondent is the senior registered and common law owner of rights in the Mark, with a Domain registration date that vastly predates Complainant’s existence by many years, with longstanding use of the Domain and the very similar d1spas.com domain name that exactly comports with those senior registered and common law rights, and with no knowledge of Complainant or its alleged Mark rights until Complainant initiated this proceeding, Respondent stated that Complainant’s conclusion regarding the totality of the circumstances test is pure fantasy.
xiv. Respondent alleged that what is critical under all three subsections of UDRP ¶ 4(a) is not when Respondent began using the Domain but rather when Respondent’s rights in the Mark accrued.
xv. Respondent reiterated that Complainant has engaged in reverse domain name hijacking
The Panel verified that the disputed domain name redirects internet users to Respondent’s official website, <www.d1spas.com>.
Respondent is the owner of a valid United States Federal registration for the D1 mark, i.e.: United States Registration No. 2,827,281, registered on March 30, 2004.
The Panel also verified that Respondent was the first to use the Mark in commerce, the first to apply for a trademark registration from the USPTO, the first to be granted a registration by the USPTO, and began using the Mark in commerce at least nineteen months before Complainant submitted its earliest registration application to the USPTO.
The Panel found that Complainant admitted that Respondent is, in fact, a prior owner of the D1 mark.
The Panel decided to analyze the case under the elements 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.
The Panel finds that Complainant uses the D1 trademark in connection with its promotions and advertisements for its sports training, wellness center and physical therapy services. Complainant claims rights in the D1 trademark through its registrations with the USPTO. (Reg. No. 2,877,559 registered August 24, 2004 (filed August 18, 2003)) (Reg. No. 4051176 registered November 8, 2011)
The Panels verifies that Complainant claims it also is the owner of the <d1sportstraining.com> domain name, which has been registered and used by Complainant since February 21, 2003. Complainant asserts that it has used the D1 mark since as early as March 1, 2003.
However, the Panel also finds that Respondent has proven to have prior rights over the D1 trademark under Policy ¶ 4(a)(i), through its registration with the USPTO.
The Panel finds that even Complainant has admitted Respondent’s rights over the D1 trademark.
Therefore, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i). The Panel decided to analyze the other two elements of the Policy.
Respondent claims that it has rights and legitimate interests in the disputed domain name because it is commonly known by the <d1.com> domain name. Respondent claims that it has always been widely known by the D1 mark for decades prior to Complainant’s use and registration. Respondent also shows that it has had rights in the D1 mark for a longer period of time than Complainant ever has.
The Panel finds that Respondent has rights and legitimate interests in the domain name as it is commonly known by that name under Policy ¶ 4(c)(ii). David Pearlstein a/k/a Show Business Inc. v. Soft Image Sys., FA 1053372 (Nat. Arb. Forum Sept. 18, 2007) (“The Respondent has trademark rights in the string SHOW BUSINESS. These trademark rights confer rights in the disputed domain name to the Respondent pursuant to Policy ¶ 4(c)(ii).”)
Respondent asserts that it began using the disputed domain name in connection with a bona fide offering of goods and services before any notice of this dispute brought by Complainant. Respondent claims that the disputed domain name intentionally redirects Internet users to Respondent’s official website. Respondent claims that it advertises its hot tub and spa related products and accessories on the resolving website. Respondent claims that its period of non-use was a result of an issue with the company that hosts all of Respondent’s websites. Previous panels have found a bona fide use of a respondent’s disputed domain name where the domain name was in use for a period of time before being addressed by a complainant. See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).
Therefore, the Panel concludes that 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). 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 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).
The Panel concludes that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); see Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent claims that Complainant cannot satisfy its burden under Policy ¶ 4(a)(iii). Respondent alleges that its predecessor registered the disputed domain name at least seven years prior to when Complainant was even created.
Respondent also alleges that Complainant’s Complaint is deficient and should be
denied if Complainant’s interest in the mark does not predate the registration
of the disputed domain name.
Respondent further makes the allegation that neither Respondent nor its predecessor had any knowledge of Complainant at any time prior to Complainant’s filing of this UDRP proceeding. Previous panels have found that a respondent did not act in bad faith where the respondent operated a website not intending to cause confusion with a complainant’s website or business. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Respondent claims it registered the domain name in good faith based on its continuous use and unawareness of Complainant or its identical mark.
Respondent argues that Respondent’s predecessor, as well as Respondent, continually used the disputed domain name since 1996. Respondent also alleges that the good faith registration of the similar <d1spas.com> domain name, as well as the disputed domain, indicates good faith registration.
In light of the above, the Panel finds that Respondent registered the <d1.com> domain name in good faith for the purposes of Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
The Panel finds that even though Complainant has failed to satisfy its burden under the Policy, this does not render a finding of reverse domain name hijacking on behalf of Complainant. 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).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <d1.com> domain name REMAIN WITH Respondent.
Eduardo Machado, Panelist
Dated: July 23, 2013
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