Clean Control Corporation v. TS Products Online / Terry Simpson
Claim Number: FA1111001415108
Complainant is Clean Control Corporation (“Complainant”), represented by Paul W. Kruse of Bone McAllester Norton PLLC, Tennessee, USA. Respondent is TS Products Online / Terry Simpson (“Respondent”), represented by David M. Carter of Carter & Schnedler, P.A., North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lethalhunt.com>, which is registered with ENOM, INC (“ENOM”).
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 10, 2011; the Forum received payment on November 10, 2011.
On November 11, 2011, ENOM confirmed by e-mail to the Forum that the disputed domain name <lethalhunt.com> domain name is registered with it. and that Respondent is the current registrant of the name. ENOM has also verified that Respondent is bound by its 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”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
On November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2011 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@lethalhunt.com. Also on November 14, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 November 22, 2011.
On November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the disputed domain name <lethalhunt.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the trademark LETHAL for which it has a US trademark registration dated May 10, 2011.
Complainant contends that its trademark LETHAL is confusingly similar to the disputed domain name <lethalhunt.com> because the additional word ‘hunt’ in the latter is inconsequential, and Complainant refers to a number of cases decided under the Policy in which the addition of a merely descriptive word to a domain name is no bar to a finding of confusing similarity.
Complainant further contends that Respondent:
· Is not related to itself in any way;
· Is not authorized to use its trademark;
· Is not commonly known as LETHAL HUNT;
· Cannot be found in any local telephone directories;
· Is not known by anything other than his listed name;
· Has chosen Complainant’s distinctive trademark, which supports a finding of lack of rights or legitimate interests, and Complainant refers to a number of relevant cases on this point which have been decided under the Policy;
· Must therefore rebut Complainant’s contentions;
· Intends to confuse internet users for commercial gain by diverting them to a website that lacks any affiliation with Complainant’s business;
· Is offering products on his website which include, among other things, scent elimination products, bug spray, attractants, and cleaners which are identical or similar to products which Complainant also offers as it too sells products that are, among other things, associated with hunting and outdoor recreation;
· Has adopted a logo which is similar to its own logo and that this is calculated to attract users for commercial gain by creating a likelihood of confusion;
· Has, in summary, registered and is using the disputed domain in bad faith.
B. Respondent
Respondent asserts that its domain name <lethalhunt.com> is neither identical nor confusingly similar to Complainant’s trademark. Also, although Complainant may have a US trademark registration for the word LETHAL dated February 22, 2011, Respondent has a pending US trademark application for LETHAL HUNT which was filed on July 7, 2011. Respondent annexed to the Response a copy of a letter from an Examiner at the USPTO stating that he had not found any registered or pending marks which conflicted with Respondent’s application, and Respondent concludes from this that his trademark LETHAL HUNT is not identical or confusingly similar to Complainant’s registered trademark LETHAL.
Respondent claims that he does have rights and a legitimate interest in the disputed domain name because he is selling products through his website at the disputed domain name under the trademark LETHAL HUNT. Furthermore, Respondent annexed to the Response a copy of a page showing that the site was active as early as February 2, 2011 which, he claims, was prior to the date of Complainant’s trademark registration.
Respondent denies that he registered the disputed domain name in bad faith and denies that that it was either registered in order to disrupt Complainant’s business or to misappropriate Complainant’s goodwill.
Respondent claims that Complainant’s trademark LETHAL is not an arbitrary word, as Complainant has claimed, and furthermore he claims it is not entitled to a broad scope of protection. In support thereof, there were annexed to the response a list of ninety seven active or inactive US trademark applications or registrations which include the word LETHAL. Respondent draws attention in particular to registrations for LETHAL FLIGHT, LETHAL WEAPON, and ALWAYS LETHAL, all of which include goods relating to hunting, fishing or outdoor sports. Respondent concludes from this, firstly, that Complainant’s trademark registration for LETHAL is weak and should be accorded only a narrow scope of protection and, secondly, that the addition of the word HUNT is sufficient to distinguish it from Complainant’s trademark LETHAL.
Respondent notes Complainant’s claim that the disputed domain name was registered “well after” Complainant’s first use of its trademark LETHAL, but points out that its registration on July 19, 2010 was hardly “well after” Complainant’s filing of its trademark application on February 2, 2010.
Respondent contends that its name and trademark LETHAL HUNT is a composite mark and that the absence of HUNT from Complainant’s mark is not inconsequential. Furthermore, the cases cited by Complainant all involved famous marks i.e. NOKIA, STATE FARM and KINKO, whereas LETHAL is not famous. A true comparison of marks involves them being viewed as a whole and viewed thus, LETHAL and LETHAL HUNT are not similar. Respondent asks the Panel not to ignore HUNT when comparing the two names. Respondent cites a large number of cases heard in the US Courts in support of its contentions in this regard.
Finally, Respondent contends that it was using the disputed domain name in connection with a bona fide offering of goods in April 2011 which is prior to the filing of the Complaint in June 2011.
Complainant and Respondent are both involved in the sale of goods for use in hunting, fishing, and outdoor recreation. They are both based in the USA, Complainant in Tennessee and Respondent in the neighbouring state of North Carolina.
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 a Complainant must prove each of the following three elements in order 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 has a registration at the USPTO for the trademark LETHAL. This is No. 3,956,561 dated May 10, 2011 and covers “Chemical products for use in the hunting/fishing industry, namely scent eliminating laundry detergent, shampoo and soap for use associated with hunting and outdoor recreation in Class 3; Chemical products for use in the hunting/fishing industry, namely insect repellents” in Class 5, and “Chemical products for use in the hunting/fishing industry, namely scent lures for fishing and scent eliminating powder, sprays ands wipes for use associated with hunting and outdoor recreation” in Class 28. The mark claims first use from December 14, 2009.
Respondent has a pending US trademark application for LETHAL HUNT filed on July 7, 2011 under Serial Number 85365353 in respect of “Online retail store services featuring a wide variety of outdoor related products; and online retail store services featuring hunting, fishing, and camping related products” in Class 35 claiming first use from April 2011. Respondent filed a copy of a letter from the USPTO dated November 1, 2011 stating that no conflicting registered or pending marks had been found that would bar the registration of this mark, but requesting that the word HUNT be disclaimed.
Firstly it is common practice, when comparing a domain name with a trade mark, to disregard any gTLD suffix such as, in this case, ‘.com’. Thus the comparison here is between LETHAL and LETHAL HUNT.
Complainant has cited several Decisions under the Policy in which Panels had found similarity between an earlier trademark and a disputed domain name when the latter had added a merely descriptive term to the former. Respondent dismisses this argument saying the marks must be considered as a whole, that there are many other marks on the US Register that include the word LETHAL, and that Complainant’s mark is consequently weak and not entitled to a broad scope of protection
Clearly the two names are not identical – even though, with the disclaimer of the word ‘HUNT’ which has been requested by the USPTO, the parties two trademarks could be said to be virtually identical – but are they confusingly similar according to the Policy?
The Second WIPO Overview of Panel Views on Selected UDRP Questions states that “the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself … and to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold internet user confusion”.
In V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum Sept. 7, 2004) the Panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET; also in Allianz of America Corporation v. Lane Bond ,FA 680624 (Nat. Arb. Forum June 2, 2006) it was found that the addition of the generic term ‘finance’, which described the Complainant’s business, did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark; also in The Gillette Co. v. RFK Associates FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL; and in Fireman’s Fund Insurance Company v. John Horvitz, FA 1320687 (Nat. Arb. Forum June 11, 2010), this Panel found that the domain names <firemansfundclaims.com> and <firemansfundinsuranceclaims.com> were confusingly similar to the trademark FIREMAN’S FUND.
On the strength of these clear precedents, plus those cited by Complainant, the Panel finds that the disputed domain name <lethalhunt.com> is confusingly similar to the trademark LETHAL, and so paragraph 4(a)(i) of the Policy is therefore proved in this case.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that a Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (NAF September 25, 2006).
In this case, the Panel believes that Complainant has made out a prima facie case and so Respondent has the burden of proving that he does have rights and a legitimate interest in the disputed domain name. This, the Panel believes, he has done.
According to paragraph 4(c) the Policy, a Respondent can demonstrate that he has legitimate rights or interest in a disputed domain name in one of three ways:
(i) That before any notice of the dispute, he has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(ii) That he has been commonly known by the trademark even if he has acquired no trademark or service mark rights in it;
(iii) That he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Complainant has described Respondent’s actions as being “well after” its own but according to the following time line, there is a considerable overlap between the application, registration and use of: Complainant’s trademark LETHAL, the domain name <lethalhunt.com>, and Respondent’s trademark LETHAL HUNT –
2009
December 14 First claimed use of Complainant’s trademark LETHAL.
2010
February 2 Complainant’s trademark LETHAL filed at USPTO.
July 19 Respondent’s domain name <lethalhunt.com> registered.
2011
February 2 First provable use of Respondent’s domain name <lethalhunt.com>.
April First claimed use of Respondent’s trademark LETHAL HUNT.
May 20 Complainant’s trademark LETHAL registered.
July 7 Respondent’s trademark LETHAL HUNT filed.
November 11 Complaint filed.
From the evidence filed by both parties, it is clear that Respondent can quite legitimately claim that he was using the name LETHAL HUNT for a range of products since at least February 2, 2010, whereas the Complaint was not filed until some nine months later on November 10, 2011.
Thus, paragraph 4(c)(i) of the Policy applies and as a consequence the Panel finds that paragraph 4(a)(ii) has not been proved.
In view of the above, it is not necessary for the Panel to make any finding on the question of bad faith but, for the record, the Panel does not believe that Respondent has, by his adoption of a logo that is very similar to that of Complainant, he has come very close to act in bad faith. However the word ‘lethal’ is somewhat descriptive of some of the products sold by both parties i.e. instruments, equipment and clothing for the hunting and destruction of wild animals and birds.
Having not established all three of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lethalhunt.com> domain name should REMAIN WITH Respondent.
David H Tatham, Panelist
Dated: December 6, 2011
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