DC Labs Inc. v. Stephen Gilfus
Claim Number: FA1309001517659
Complainant is DC Labs Inc. (“Complainant”), represented by Katherine Bond of Sheldon Mak & Anderson, California, USA. Respondent is Stephen Gilfus (“Respondent”), represented by John A. Bonello of David, Brody & Dondershine, LLP, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ovation.com>, registered with Register.com.
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 September 3, 2013; the National Arbitration Forum received payment on September 3, 2013.
On September 9, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <ovation.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 September 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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 firstname.lastname@example.org. Also on September 10, 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 October 10, 2013.
Complainant submitted an Additional Submission on October 14, 2013, which was found to be compliant.
On October 16, 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.
Complainant DC Labs Inc. is engaged in producing, selling, and distributing hair care products. Complainant has been in business since 2007 and operates the website at the <ovationhair.com> domain name. Complainant owns several U.S. and international trademarks for its OVATION marks, including OVATION. Complainant provides evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered May 15, 2012). Complainant uses the OVATION mark at its website to advertise its goods and to indicate to the public that the goods are provided by Complainant. As a consequence of Complainant’s prolific use of the mark, the OVATION name has attained considerable value and goodwill.
Respondent purchased the <ovation.com> domain name on December 24, 2008, and uses the resolving website to allow an Internet entity to operate a “parked domain monetization”. Respondent has yet to establish a legitimate website at the domain name, yet Respondent wallpapers the website with the registered OVATION marks. The monetized links allow a visitor to click on the headings at the top of the site, which results in advertisements appearing as additional pages, none of which have any affiliation with Complainant’s business. Respondent’s activities unlawfully encroach upon Complainant’s rights by generating advertising revenue off of the goodwill created by Complainant’s marks. Respondent intentionally attracts Internet traffic to the website by creating a likelihood of confusion with Complainant’s mark, in order to increase its revenue. Further, Respondent had full knowledge of Complainant’s rights in the OVATION mark, and deliberately chose the mark in order to deceive members of the relevant public.
Respondent urges the Panel to decide against transferring the <ovation.com> domain name, claiming that Complainant cannot prove that the domain name is either identical or confusingly similar to a mark in which Complainant has rights; nor can it prove that Respondent lacks rights or legitimate interests; nor can it prove that the domain name is being used in bad faith.
Respondent alleges that Complainant’s OVATION mark is weak, as it consists of a commonly-used term There exist over 140 registered marks that include the term “ovation” with a composite mark, and at least 13 domain names that include the word “ovation.” Further, the domain name is different in sound appearance, meaning, and commercial impression from Complainant’s OVATION mark, as the domain name is unrelated to any of Complainant’s dealings in the hair and cell therapy field.
Respondent has rights and legitimate interests in the domain name, as Respondent purchased the domain name for a considerable sum in 2007, with the intention of advancing the interests of Event Innovation, a company of which Respondent is the founder and majority shareholder. Respondent planned to establish two websites as part of its business strategy—one at <eventinnovation.com>, for the corporate business, and one at <ovation.com> for the consumer. The purpose of the <ovation.com> domain name was to allow members who registered on the website to manage season and subscription-based tickets, transfer tickets, share tickets, and to use a single member card to make purchases, receive e-mails, and share moments from events. Respondent has invested considerable resources to develop the brand assets for its member network, including marketing literature, event booth design, presentations, product prototypes, and logos. Members of Respondent’s business utilized the <ovation.com> website until 2009, when it was shut down as a result of a lack of funding due to the unfavorable economic environment. Respondent has developed a new business plan that will once again utilize the website as an education space, and is scheduled to be operational within the next year.
Respondent did not use the domain name in bad faith, as it had previously used the resolving website in connection with a bona fide offering of services. Complainant’s assertion that the domain name is used as a “parked domain monetization operation” is based on a screen shot of the homepage that contains references to Complainant’s hair care products; however, Respondent has no part in the operation, rather the registrar unilaterally placed advertisements and links relating to Complainant’s products during the time the webpage was inactive. A disclaimer at the website indicating that a content-filled website is soon to come establishes that Respondent is not responsible for the current substance of the website. In fact, Respondent was unaware that the domain name was used as a parked webpage until Complainant filed the current dispute. As such, Complainant should address its concerns as to the content of the resolving website with the entity that controls it.
C. Additional Submissions
Complainant reiterates, generally, that it satisfies all three elements established by the Policy, and argues that the strength of its mark has no bearing on the proceeding. However, Complainant’s mark has achieved fame through substantial advertising and sales, and enjoys broad protection for its hair care product line. Furthermore, Complainant’s federal trademark registrations constitute evidence of the OVATION mark’s validity, of Complainant’s ownership of the mark, and of Complainant’s exclusive right to use the mark in connection with the goods specified in the registration. The number of third parties that own registrations for an OVATION-centric mark does not demonstrate the mark’s actual use by others in commerce, as it is use, not registrations, that determine the strength of the mark in the context of confusing similarity. Ultimately, Complainant argues, the issue of whether the <ovation.com> domain name is identical to Complainant’s mark is settled, as the domain name includes the term OVATION.
As of May of 2008, the <ovation.com> domain name belonged to Ovation Software Testing. In February of 2009, the website no longer displayed the content posted by Respondent. Even if Respondent had an initial intention to use the site, five years have passed since any legitimate content has been posted, and during the last five years, the website has been unmonitored, by Respondent’s own admission. Respondent’s claim that it purchased the domain name for a “significant amount” in 2007 is unsubstantiated, and a “significant amount” is subjective.
Respondent owns at least 107 domain names aside from the <ovation.com> domain name, which indicates a pattern of Respondent’s history of purchasing domain names and failing to use them for a legitimate business purpose. Respondent’s failure to associate an active website with the <ovation.com> domain name violates the Policy and constitutes bad faith. Contrary to Respondent’s claim, Respondent is ultimately responsible for the monetizing operation at the resolving website, and Complainant points out a provision from the registrar’s domain registration service agreement specifying so.
As a result of the foregoing, Complainant contends that the facts are sufficient to demonstrate that the <ovation.com> domain name should be transferred.
B. Respondent’s Additional Submission:
Respondent reiterates that the disputed domain name should not be transferred to Complainant because Complainant has not proved that it meets any of the elements required for the Panel to order a transfer of the disputed domain name to Complainant.
The services offered by Respondent bear no relation to the products offered by the Complainant.
Respondent initially used the disputed domain name to sell services related to “social ticketing” and, in a near future, he plans to use the disputed domain name as part of an offering of a new consolidated learning platform for educational institutions.
As a result of their different nature and purposes, Respondent alleges that Complainant’s products do no compete with its services.
Respondent argues that purchased the disputed domain name in 2007, before this dispute began, and, in fact, promptly began using it to offer bona fide social ticketing services to customers.
Respondent alleges that in order to prevail on the third required element for a complaint in a UDRP proceeding, the Complainant must show both that the Respondent registered the disputed domain name in bad faith and is using it in bad faith and Complainant has failed to make either showing.
The Complainant’s reference to the ticketing services offered under the trademark OVATIONTIX is irrelevant to the question of Respondent’s legitimate interested in the disputed domain name.
The use of the privacy service is not an indicator of bad faith and Complainant uses a similar privacy service offered by the domain registrar for its <ovationhair.com> domain.
Respondent is not responsible for, nor had any control over, the content that included the Complainant’s own advertisements because the content was posted at the disputed domain name by Register.com pursuant to its policy with respect to “Coming Soon” or otherwise inactive websites.
Respondent, therefore, argues that the disputed domain name was registered for a legitimate and good faith purpose.
Complainant is a United States corporation that is engaged in the production, sale, and distribution of hair care products and has been in business in that field since 2007.
Complainant is the owner of the OVATION HAIR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered on May 15, 2012).
According to Complainant’s information it commenced using the OVATION marks in commerce in the United States at least as early as September 2007 in connection with the sale and offer for sale of hair care products.
Complainant is the owner the domain name <ovationhair.com>.
Complainant has established common law trademark rights in OVATION HAIR.
Respondent registered the disputed domain name on December 24, 2008.
On the time this decision was issued the disputed domain name was resolving to a web site that disclosed Complainant’s mark. The site is monetized by pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
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 is the owner of the OVATION HAIR mark through its trademark registrations with the USPTO (Reg. No. 4,142,800 filed November 10, 2011 registered on May 15, 2012). Complainant further claims to own several other well-known U.S. and International trademarks, such as OVATION CELL THERARY and OVATION (“the OVATION marks”). Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i) if it can establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has been using the OVATION marks in connection with the sale and offer for sale of hair care products since 2007. Complainant further claims to have exerted significant effort and resources to advertise and promote its goods and Complainant’s advertising expenditures have totaled well over 100 million dollars.
The Panel accepts those evidence and the conclusions drawn from it and considers that previous panels have found that complainants can establish common law trademark rights through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
The Panel finds that on this basis Complainant has established common law rights in the OVATION marks including the OVATION HAIR mark for the purposes of Policy ¶ 4(a)(i).
Another point that must be considered is the fact that the <ovation.com> domain name is identical to the OVATION mark. Therefore, the Panel finds that by including Complainant’s entire mark, with no other additions aside from a gTLD, the <ovation.com> domain name is identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has therefore made out the first of the three elements that it must establish.
It is well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent is using Complainant’s trademark.
(b) Respondent has not monitored the disputed domain name since it was taken down in 2009.
(c) Respondent has since then used the disputed domain name to resolve to a website that is monetized by pay per click advertisements. The resolving page displays advertisements or links for competing hair care companies and products.
(d) Complainant has no affiliation with Respondent. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant’s registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
(e) Further, the advertisements or links displayed in the disputed domain name lead consumers to competing hair care companies and products. The Panel finds that Respondent’s use of the domain to provide advertisements and links to site competing for Complainant’s business does not constitute 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Given that Respondent owns numerous domain names it is unlikely that it is not aware of how to control the content of the disputed domain name.
The Panel finds that despite Respondent’s claims that it at one time used the disputed domain name in connection with its business, the disputed domain name has been used to park a website containing monetized links.
The Panel notes that Respondent has not offered any proof in the form of evidence of his legitimate intent to use the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
Complainant has thus made out the second of the three elements that it must establish.
Although not a conclusive argument, the fact that Respondent owns 107 domain names, according to a reverse WHOIS lookup, might be considered a pattern of Respondent’s history of purchasing domain names and not using them for legitimate business purposes.
However, despite the fact that the Panel has visited some of these domain names and verified that many are currently being used to park websites containing monetized links, it is not well clear whether Respondent’s indeed using the appointed domain names for illegitimate business purposes.
Nevertheless, the Panel finds that Respondent has not monitored the disputed domain name since 2009 and has allowed it to be “parked”.
The Panel also finds that the provision in the registration agreement between Respondent and the domain name’s registrar indicates that the registrant is indeed responsible to determine whether the domain name registration or use infringes on another’s rights, and the registrant is responsible for maintaining the website and the content within it. Previous panels have established that maintaining a parked webpage at a disputed domain name is sufficient to make a finding of the respondent’s bad faith registration and use, regardless of the entity that initiates the parked content. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Therefore, in view of Respondent’s negligence in monitoring the disputed domain name as well as the above evidences, the Panel finds that Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ovation.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Dated: November 13, 2013
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