national arbitration forum

 

DECISION

 

Jim Blackmon v. Mary Alvarez / Innovative Promotions

Claim Number: FA1310001526715

 

PARTIES

Complainant is Jim Blackmon (“Complainant”), Florida, USA.  Respondent is Mary Alvarez / Innovative Promotions (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greenlogoshop.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

Bruce E. O'Connor as Panelist.

 

PROCEDURAL HISTORY

This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.

 

On October 28, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <greenlogoshop.com> domain name (the "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 the Policy.

 

On October 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@greenlogoshop.com.  Also on October 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 November 18, 2013.

 

On November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.

 

On November 25, 2013 an Additional Submission by Complainant was received by the National Arbitration Forum and determined to be timely.

 

On December 2, 2013 an Additional Submission by Respondent was received by the National Arbitration Forum and determined to be timely.

 

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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Likelihood of confusion

Complainant uses the service mark THE GREENLOGO (the "Trademark") in conjunction with the promotion of environmentally friendly products of others.  The Trademark has been and is being used at Complainant's website using the domain name <thegreenlogo.com> that was registered on September 8, 2007.

 

Trademark law specifies “a domain name will function as a trademark only if it is used in connection with the sale of goods or services and consumers associate the name with the Internet business".  A search on the Wayback Machine shows that Complainant's domain name had a fully operational Internet business as early as May 31, 2008, so that Complainant's domain name has enjoyed unregistered trademark rights since May 31, 2008.

 

U.S. Registration No. 3,579,930, registered February 24, 2009 on an application filed on July 15, 2008, protects the Trademark in a design form that includes a stylized lettering for and arrangement of the words "The Green Logo" and a design element characterized by the USPTO as a "Notation Symbol" and as "Plant Life".

 

The Domain Name was registered on June 24, 2008.

 

Respondent using the Domain Name, is hosting a shopping facility on the Internet selling the same exact goods and services as Complainant does at his website.

 

Consequently, Internet users are likely to identify the Domain Name as belonging to or having some commercial relationship with Complainant

 

When performing a Google search for "greenlogo", the confusion between Complainant's domain name <thegreenlogo.com> and the Domain Name becomes even more relevant since the Domain Name appears underneath Complainant's domain name on the search results page.

 

Respondent uses the predominant unique language of Complainant's domain name <thegreenlogo.com> and of the Trademark as part of her keywords to directly compete with Complainant's website.   When opening the HTML source of Respondent's website using the Domain Name, "green logo items" is one of the keywords.

 

Internet users will mistakenly believe that the Domain Name is actually the shop belonging to Complainant, and they are likely to visit the website using the Domain Name in order to purchase their eco-friendly promotional supplies. Furthermore, since the principal goal of registering a mark is to differentiate a business, and its goods and services, from another, the addition of the suffix "shop" causes likelihood of confusion in the market place and so infringes trademark law.

 

The disputed website does not sell a specific product or any product by the name "Green Logo".  Also, that website does not sell a product manufactured by a company named "Green Logo".  Therefore, Respondent uses the Trademark only for the apparent purpose of triggering Internet search engines into displaying the Domain Name on the search results page which creates initial confusion and can trick Web users into visiting Respondent's website.

 

The Trademark is incorporated in its entirety in the Domain Name and is used as the main distinctive word component of that Domain Name.  When contacting Respondent by phone about the similarities between the Domain Name and Complainant's domain name, she declared that her domain name was different and that there is no likelihood of confusion because she uses the word "shop."  However, the mere addition of the generic word "shop" while wholly using the Trademark does not lessen the likelihood of confusion, but on the contrary increases the similarity due to the fact that the Trademark was registered in connection with a website used in commerce.

 

Lack of rights and legitimate interest

Respondent does not have legitimate interest in the Domain Name since she is not personally known by the name "greenlogo".  Also, the website does not sell products known by a brand called "greenlogo" or offer any products produced by a manufacturer by the name of "greenlogo".  Since the Trademark does not describe the goods or services of the website using the Domain Name, the Trademark is used beyond fair use.

 

The use of the Trademark in its entirety proves that Respondent does not show legitimate practice. The Trademark is subjective and does not describe the goods and services for which it was registered i.e. environmentally friendly promotional products.

 

It should be noted that Respondent is a "for profit" company.

 

The use of the Trademark by Respondent for commercial gain without the consent of the trademark owner takes unfair advantage of the goodwill created by the Trademark.  This goodwill was obtained at great expense.  Complainant's website was developed utilizing considerable resources of time, money, and marketing strategies. The Domain Name involves a commercial intent since the word "shop" indicates retail activity and so exploits the trademark beyond fair use.

 

The owner of the Domain Name merely added the suffix "shop" to the Trademark which creates false association with Complainant's website and diverts clients, sales and profits to Respondent's commercial website.  Respondent sells products in the field of environmentally/ ecofriendly promotional products, which is exactly the same sphere in which the Trademark has been registered.

 

Complainant's domain name has been promoted since its registration via online advertising, social media presence, tradeshows, and promotional printed goods. All of these marketing outlets displayed the Trademark when applicable. Customers and prospective clients commonly refer to Complainant's website by the Trademark, and they are likely to type "greenlogo" when looking for goods and services sold online by Complainant.  The search engine results include Respondent's website using the Domain Name.  This likely causes confusion for the reasons previously explained and drives potential clients and profits away.

 

Respondent has not been commonly known by the Domain Name or been doing business as such before Complainant's domain name was registered on or was recognized as an active Internet business website.  Also, Respondent has not been doing business as the Domain Name before the application for registration of the Trademark was filed on July 15, 2008.  In a follow-up email, Respondent stated she believed that she had prior use rights since the Domain Name was registered on June 24, 2008.  Evidence shows that Wayback Machine did not detect an active e-commerce website under the Domain Name until August 24, 2011. The different snapshots taken before that period show a page with the words "I'm sorry. That store is currently inactive".  Therefore, there is no discovery of Respondent's offering of goods or services using the Domain Name prior to August 24, 2011, which is approximately one year and six months after the Trademark obtained USPTO registered rights.

 

Respondent was never authorized to use the Trademark; therefore, it is clear she has no actual bona fide or legitimate use of the Domain Name.

 

Bad faith registration and use

When registering a domain name or renewing a domain name registration, the registrant must read and sign the Policy which specifically states in paragraph 2 that it is their responsibility to ensure that their domain registration does not infringe or violate the rights of any third party.  Consequently, Respondent knew or should have known the existence of Complainant's website using its domain name through a simple Google search at the time of registration on June 24, 2008.  Any further minimal Internet based research would have also shown Complainant's predated domain name registration on September 8, 2007.

 

According to these facts, it appears to be impossible that the Domain Name was registered in good faith in respect to the Policy.

 

Respondent merely added the common descriptive dictionary word "shop" to the Trademark.  The noun "shop" is defined in the English (North America) Encarta Dictionary as such "a retail business that sells consumer merchandise and sometimes services."  The suffix "shop" causes Web users to believe that the Domain Name has a mercantile or other related affiliation with the website represented by the Trademark.  Respondent does not own a trademark registration for the Trademark.  She is not licensed by the mark owner to prolifically exploit the usage of the Trademark.

 

Respondent has been operating in the field of promotional products through Innovative Promotions.  Therefore, she must have known, by registering the Domain Name that wholly incorporates the Trademark, the profit the Domain Name would enjoy by creating confusion in the online market place.  Respondent consciously chose to purchase the Domain Name.  This demonstrates her willingness and interest in creating confusion in order to divert Internet users and profits from Complainant's website.

 

Respondent's use of the keyword "green logo items" tricks Internet search engines and can consequently cause Web users to believe that Respondent's website using the Domain Name provides items that are originally supplied by Complainant at its website.  Respondent uses the Trademark without any ownership of a license or any other authorization from the mark owner.

 

The website using the Domain Name also uses the keyword "green items 4 imprint".  The domain name <4imprint.com> is the leading retailer of promotional products online, and the arrangement of the number and word "4 IMPRINT" is trademarked. Evidently, Respondent tries to divert clients from the website at <4imprint.com> by using the 4 IMPRINT mark in the keyword "green items 4 imprint".  Therefore, the use of the Trademark in the keyword "green logo items" shows an attempt to divert customers from Complainant's website as well.  Respondent shows a pattern of bad faith by using the name of successful competitors in her keywords.

 

Respondent not only claims to have ownership in the Trademark, but also includes recycling symbols in her logo as well.  A recycling symbol is the prominent distinctive design element of Complainant’s U.S. Trademark Registration No. 3,579,930.  Respondent at her website using the Domain Name does not solely sell recycled products; therefore, the use of two distinctive components of the mark - the word GREENLOGO and the recycling symbol- indicates that the Domain Name was likely created with Complainant's website in mind.

 

B. Respondent

 

Objection to jurisdiction and denial

Respondent[1] objects to and challenges the jurisdiction of this tribunal to decide anything other than ownership rights going forward to the Domain Name.  Respondent is not in privity of contract with the Complainant, nor with this tribunal and have never entered into any agreements with either the Complainant nor with this tribunal.  To the extent jurisdiction is claimed via Respondent's domain name registration agreement, Respondent objects on the grounds that such agreement with a third party is insufficient to confer jurisdiction to this tribunal or to confer any standing to the Complainant to hail Respondent before this tribunal.  Respondent further objects on the grounds that such agreement’s dispute resolution terms are vague, ambiguous and do not sufficiently clarify the applicability or scope of this dispute resolution procedure such that there was no meeting of the minds as to its terms.

 

Respondent generally denies the allegations set forth in the Complaint, denies that any infringement or consumer confusion relating to the marks at issue has occurred or will occur, denies any bad faith on their party, and denies any wrongdoing whatsoever.

 

Factual background

Respondent is in the business of specialty advertising and the sale of promotional items, which items are typically imprinted, silk screened, embossed or otherwise carry the names, logos or other desired promotional slogan, text and/or graphics desired by her clients.  Respondent has been in such business for nearly 30 years.

 

Over the past decade in particular, more and more of Respondent's clients have become interested in “green” or environmentally conscious items for use in promoting and advertizing their businesses, logos, promotional slogans, etc.  As a result, Respondent conceived of a “green” division of her business dedicated to the use of environmentally conscious products for use in specialty advertising.  In early 2008, Respondent conceived of naming such division “Green Logo Shop” and/or “Green Logo Store.”  Respondent was unaware of any other person or entity operating under any such names.

 

On June 24, 2008, Respondent registered both the Domain Name and <greenlogostore.com> as domain names.  Ultimately, Respondent favored the Domain Name and has been operating her “green” division under that name and using the website at the Domain Name continuously ever since 2008 and up to the commencement of this proceeding.

 

On or about March 25, 2013, Respondent was contacted for the first time by Complainant or Complainant's representative who informed her of Complainant’s business named “The Green Logo,” which he claimed was a federally registered trademark.  Complainant also alleged that Respondent's Green Logo Shop name and mark infringed on his mark and demanded that Respondents cease her use and turn over her website domain name to him.

 

Respondent had no knowledge of the existence or use of the Trademark or domain name prior to this March 2013 contact.

 

No likelihood of confusion

After reviewing the respective marks and investigating the matter, Respondent concluded that there is no likelihood of confusion because the respective names and logos are substantially different. 

 

Respondent maintains this position on several grounds:

 

1.    The fonts and colors use are very different.

2.    Complainant's mark includes a tree; while Respondent's mark does not.

3.    Respondent's mark includes distinctive Blue arrows; while Complainant's mark does not.

4.    Respondent's mark clearly indicates it is “a division of Innovative Promotions.”

5.    Respondent's mark includes the word “Shop,” while Complainant's mark does not.

6.    Complainant's mark uses the word “The,” while Respondent's mark does not.

 

 

Prior use defense

Complainant did not file for federal trademark protection on its Green Logo mark until July 15, 2008 (after Respondent had already been using the Green Logo Shop name and had registered it as a domain name on June 24, 2008). Therefore, Respondent determined that she possessed prior use rights as a matter of law.  A position she maintains.  On March 27, 2013, Respondent sent Complainant an email explaining her conclusions.

 

Descriptive fair use defense

Respondent also rejects the Complaint on the ground that the words “Green” and “Logo”, individually or in combination, are not original or fanciful terms; they are plain, ordinary and merely descriptive.  As such, they are subject to the descriptive fair use or classic use defense under common law and the federal Lanham Act.

 

Respondent's use of “Green Logo Shop” merely uses plain and ordinary language in a way that describes her business—she is selling environmentally friendly goods, upon which clients can have their logos imprinted.  

In fact, these terms are so ordinary and common that a quick search of the USPTO records indicates that other trademarks have been issued to others using similar terms. 

 

For instance, a third party filed for the mark “LOGO GREEN” on February 16, 2008 (before claimant filed for his mark).  Notably, its use is in the very same industry as Complainant and Respondent.  According to the USPTO, this third party domain name is used in connection with

 

silk screening, namely, printing and painting, air brushing, imprinting or embossing by means of silk screening, screen printing, lithography printing, and embroidery onto clothing, sportswear, t-shirts, jackets, caps, towels, luggage, bags, note cards, decals, magnets, educational materials, notebooks, beverage containers, balloons, writing instruments, office supplies, holiday decorations, apparel, clothing, paper products, specialty goods, novelty goods, advertising goods, and promotional materials.  

 

The words “MORE THAN OUR LOGO IS GREEN” are also registered as a federal trademark, filed in September 2007 by Enterprise Rent-A-Car.

 

C. Additional Submissions

 

1.  Complainant

Respondent sells the same exact products as Complainant which are eco-friendly promotional products decorated with the same methods - hot stamp, pad-printing, silk-screen, embossing, engraving and embroidery among others - with a logo, slogan, or message to promote a company, organization, brand or event.

 

These promotional products are sourced from the same pool of suppliers and are available to all competitors in the same advertising specialty industry.  These products are offered to thousands of distributors including Respondent.  Respondent is offering the same products using the same imprinting methods and selling to the same customers as Complainant through an obviously similar domain name.

 

Complainant disagrees with Respondent's interpretation of the Lanham Act and maintains that the Trademark is undoubtedly suggestive, as it does not describe the goods and services.  The mark is open for interpretation.  For instance, through attending various trade shows and events as exhibitors, potential clients do not just assume that the Trademark supplies eco-friendly promotional products as it is always necessary to explain in detail as to what exact type of goods and services the mark provides or what Complainant's website does.  Additionally, marks that are arbitrary, fanciful and suggestive are considered inherently distinctive.

 

Complainant affirms that the use of the Trademark by Respondent with the addition of the word "shop" does not fall under fair use and so infringes on Complainant's rights and causes confusion in the market place.

 

As stated in Complainant's initial filing on October 30, 2013, there was no discovery of Respondent's website being activated before August 24, 2011.  Respondent only had an active website for a period of one year and seven months prior to being notified by Complainant on March 25, 2013.

 

Complainant proved first use in commerce whereas Respondent admitted in her response to purchasing the Domain Name and the domain name <greenlogostore.com> and to debating for a while as to which domain name she would keep and ultimately use.  Respondent claims to have "prior use rights" since June 15, 2008; however, the mere registration or reservation of a domain name does not constitute "prior use" therefore bona fide use or legitimate interest.

 

From the time of receiving the Complaint to the filing of this Additional Submission, Respondent has hidden evidence of exhibits presented in the Complaint.  The snapshots captured by the Wayback Machine showing the pages of Respondent's inactive website prior to August 24, 2011 have since been blocked by Respondent with the "robots.txt" file.  Therefore, there is no longer proof of the Domain Name being shown as inactive and not in use prior to August 24, 2011.  The practice of blocking the access of relevant evidence from a panel is a strong indication of bad faith.

 

2.  Respondent

Complainant insists that the words “green” and “logo” are fanciful terms, not ordinary words, and not descriptive of Respondents’ business--which is to offer environmentally friendly products to promote and advertize customers’ logos, names, mottos or other identifying marks.  However, reference to any dictionary proves Complainant wrong.  For instance, the Miriam-Webster dictionary defines “green” to include being “concerned with or supporting environmentalism” and “tending to preserve environmental quality (as by being recyclable, biodegradable, or nonpolluting).”  And “logo” is defined as “a symbol that is used to identify a company and that appears on its products,” and/or “an identifying statement:  motto.”

 

Thus, Respondents use of “Green Logo Shop” quite plainly and accurately describes its business:  the sale of products “concerned with or supporting environmentalism” and “tending to preserve environmental quality” upon which are imprinted logos or “symbol[s] that [are] used to identify a company and that appears on its products,” and/or “an identifying statement [or] motto.”  These terms could not be more plainly descriptive of the business.  They are not original, fanciful or arbitrary by any stretch.

 

Tellingly, Complainant's additional submission is silent in regards to the other businesses concurrently using the identical descriptive terms “green” and “logo” in their marks, businesses and websites.  In particular, the “Logo Green,” which, unsurprisingly, is in the very same promotional advertising business as Claimant’s The Green Logo and Respondent's Green Logo Shop.  Indeed, use of the term “green” has become ubiquitous in the present business environment, as companies and consumers have grown quite sensitive to environmental concerns.  A simple Google search of the term “green business” yields nearly 1 billion results, revealing that countless users are presently using the term in one for or another.

 

As set forth in the Response, Respondent had already been using the Green Logo Shop name in commerce and had registered it as a domain name on June 24, 2008.  Therefore, Respondent determined that she possessed prior use rights as a matter of law when she first learned of the Trademark in March 2013.

 

Complainant now argues that there is no evidence that Respondent was using the Domain Name prior to 2011.  Complainant is wrong.  Respondent began operating the website almost immediately after registering it in June of 2008.  As evidence of this, Respondent has included a sampling of its Google Campaign Activity records for the Green Logo Shop website showing click activity as early as July 22, 2008, as well as for other periods through 2011.   In addition, Respondent submits a screenshot from the Wayback Machine that shows Respondent's Innovative Promotions website advertising The Green Logo Shop and the link to “greenlogoshop.com” on November 19, 2008—which was the next date after the page had last been imaged and archived on June 29, 2008.

 

As for the new assertion—made completely upon speculation and without any support—that Respondent acted in bad faith by using the “robot.txt.” feature to supposedly “hide” its web activity, nothing could be further from the truth.   When Respondents first launched their website back in 2008, it was a very simple website set up as a frameset store, and linked to Respondent's primary Innovative Promotions website.  Unbeknownst to Respondent, the “robot.txt” feature was a default setting within the template—set up by a third party provider.  Respondent was completely unaware of the setting or even what it meant.  In 2011, Respondent learned for the first time that this setting was “on” and preventing “robots” from crawling the store.  As Respondent understands it, robots are automated systems that search engines use in order to crawl and index websites.  After gaining knowledge of what this feature did Respondent immediately turned it “off” so the search engines could crawl the site.  Obviously, Respondent wants the website to be crawled in order to improve its traffic and rankings in the major search engines.  The feature has remained turned off ever since 2011.  There was never any bad faith here.  To the contrary, it is Complainant who has engaged in bad faith by making baseless and false accusations against Respondent.

 

FINDINGS

Jurisdiction of the Panel

Respondent consented to be bound to the Policy when it executed the Registration Agreement with the Registrar. The Registrar properly placed the domain name on lock status pending resolution of this dispute. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that the UDRP applied because: “[b]y virtue of its contract with NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future”).  While paragraph 4(k) of the Policy allows the parties to litigate in court, the Panel remains free to decide the instant dispute on the merits strictly under the guidelines of the Policy.

 

Keeping it straight

In this Decision, the Panel has distinguished the Trademark, the Registered Trademark, and Complainant's domain name.  Although Complainant and Respondent in their submissions often treat these items as one[2], they are not the same and their differences are important in a consideration of whether or not Complainant has shown a violation of the Policy by Respondent. 

 

Complainant's trademark rights

Complainant has shown rights in the Registered Trademark by reason of its U.S. Registration No. 3,579,930. Previous panels have found that evidence of a registration with the USPTO for a given mark is sufficient to establish rights in that mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  The Panel also concludes that Complainant has rights in the registered Trademark dating back to its filing date of July 15, 2008 pursuant to Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

But, Complainant has not shown that it has any common law rights in the Trademark apart from the Registered Trademark.  Domain name registration and use do not by themselves establish trademark rights.  There must also be an association of the domain name with specific goods and services and the representation of the domain name in a distinctive form (either as an adjective modifying a generic term or by itself in a distinctive, stylized form), so that the domain name becomes more than an address on the Internet or a trade name.

 

The only evidence of use of the Trademark submitted by Complainant is a screen shot of its website dated May 31, 2008.  This screen shot uses Complainant's domain name only in non-distinctive form as a noun and a trade name in sentences ("Thank you for visiting TheGreenLogo.com" and "In an effort ... TheGreenLogo.com was conceived...).  Such use is not trademark use.

 

Since Complainant has failed to prove trademark rights other than those arising from its registration, the Panel will consider only the Registered Trademark in its decision.  

 

Respondent's improper labeling of defenses

Respondent sets forth both a "prior use" defense and a "descriptive fair use" defense.  Although such defenses may be applicable to a claim of trademark infringement, they are not pertinent to a claim under the Policy.  The Panel will consider Respondent's contentions so labeled only in view of the defenses that are allowed under the Policy.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to the Registered Trademark.

 

The Domain Name incorporates the entirety of the words in the Registered Trademark, deletes the non-distinctive word "the", and adds the nondistinctive word "shop" and the top-level domain ("gTLD") ".com." Previous panels have found that adding a generic word and a gTLD to a complainant’s mark, as well as removing a generic portion of a complainant’s mark, are insufficient changes to overcome a finding of confusingly similar under Policy ¶ 4(a)(i).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). 

 

The Domain Name also omits the design element of the Registered Trademark. But, Policy ¶ 4(a)(i) does not concern itself with trademarks themselves, but rather whether the words of a trademark are so similar to the words in a domain name so as to create a confusing similarity between the two. See, e.g., Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”).

 

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the Respondent 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 trademark or service mark at issue.

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 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.”).

 

Respondent does not contend that she is known by the Domain Name or that her website operation is noncommercial.  Thus, Complainant's prima facie showing regarding paragraphs 4(c)(ii) and 4(c)(iii) prevails.

 

Regarding paragraph 4(c)(i), notice of this dispute occurred in March 2013, when Complainant and Respondent first engaged in discussions.

 

Previously, Respondent had registered the Domain Name and was engaged in the operation of a website using the Domain Name.  Do these actions show rights or legitimate interest?

 

The Panel refers to the following chronology of evidence that it has found useful in answering whether Respondent’s actions show rights or legitimate interests, and in later addressing the issue of bad faith registration and use:

 

September 8, 2007 

Complainant registers its domain name

April 25, 2008           

Complainant's date of first use of its registered Trademark, stated in its application for registration

May 31, 2008           

Wayback Machine screen shot showing Complainant's domain name used as a website address and as a trade name for a business of offering eco-friendly products

June 24, 2008          

Respondent registers the Domain Name

July 15, 2008

Complainant files its application for registration of the Trademark

July 22, 2008 to January 12, 2011

Google Campaign Activity reports for Respondent's "Green Logo Shop" (assumed by the Panel to be a Google keyword or "Adword")

July 22, 2008 to March 2, 2011     

Wayback Machine screen shots show that the Domain Name is inactive

November 19, 2008

Wayback Machine screen shot showing the Domain Name used as a stylized trademark of a business offering eco friendly products, at a website having the address <innovativepromotions.com>

February 24, 2009   

Issuance of the registered Trademark

August 24, 2011      

Wayback Machine screen shot showing the Domain Name used as a website address and as a stylized trademark of a business offering eco friendly products.

 

From this chronology and from consideration of the underlying evidence and the contentions of the parties, the Panel finds that Respondent did not make actual use of the Domain Name as the address of a website until August 24, 2011.  Prior to this date, Respondent's use of the Domain Name was as a keyword ("Green Logo Shop") or as a stylized trademark.  These latter uses are, however, names corresponding to the Domain Name.

 

Thus, from July 22, 2008 to August 24, 2011, Respondent engaged in demonstrable preparations to use the Domain Name.  From August 2011 to notice of this dispute, Respondent engaged in use of the Domain Name.  Were these actions bona fide?  The Panel has struggled with the answer to this question. 

 

On the one hand, Respondent's preparations to use began within one month of its registration of the Domain Name and before the issuance of the Registered Trademark.  Also, Respondent's stylized form of the Domain Name, used as a trademark on Respondent's website, does not emulate the design form of the Registered Trademark. 

 

On the other hand, Complainant's rights in the Registered Trademark[3] date back to the filing of its application for registration, which predates Respondent's demonstrable preparations to use its Domain Name.  The Domain Name is likely to be confused with the Registered Trademark for the purposes of the Policy, as previously noted. The Domain Name has been and is being used only for the offering of the identical types of goods that Complainant offers under the Trademark, so that Respondent is a competitor of Complainant.  Complainant has not authorized respondent’s use of the Domain Name.  And, the Domain Name has been used by the Respondent in the form of a stylized trademark, so that Respondent's claim of generic or descriptive use of the terms "green" and "logo" and "shop" must fail.

 

On balance, the Panel believes that Respondent's use was not bona fide, and that Complainant's showing regarding paragraph 4(c)(i) prevails.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.

 

Paragraph 4(b) of the Policy reads:

 

[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy.  And, the Respondent must have known or should have known of the Trademark.

 

Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii).  A sufficient showing under Policy paragraph 4(a)(iii) requires more and must convince the Panel that the Respondent is in fact a cybersquatter.

 

The chronology previously set forth shows that Respondent registered the Domain Name before the effective date of rights in the Registered Trademark, when Complainant filed its application.

 

Complainant has shown no evidence that would lead the Panel to find that Respondent must or should have known of the Registered Trademark at or before registration of the Domain Name.  Complainant's registration of his domain name, his use of that domain name as a trade name, and his claimed date of first use of the Registered Trademark, all predate registration of the Domain Name, but do not show prior use of the Registered Trademark.  More importantly, they do not establish actual knowledge on the part of the Respondent at the time of her Domain Name registration[4].

 

The fact that Respondent may have later engaged in bad faith use of the Domain Name cannot by itself obviate Respondent's prior good faith registration of the Domain Name. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ("A conscious decision was made that UDRP proceedings be limited to abusive registrations. The question whether domain names registered in good faith become infringing is outside the scope of this inquiry"); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).

 

A learned and full exposition of whether later bad faith use can convert a prior good faith registration into one of bad faith can be found in Validas, LLC v. SMVS Consultancy Private Ltd., D2009-1413 (WIPO January 29, 2010), which stated:

 

In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail, as expressed in Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528, following Telstra, that “registration of a domain name that at inception did not breach [Policy] 4(a)(iii) but is found later to be used in bad faith does not fall foul of [Policy] 4(a)(iii)”.

 

There are a few cases that state that later bad faith use can convert bad faith use into bad faith registration, particularly in the situation where the respondent defaults.  See O2 Holdings Ltd. v. Sarang Hodjati,  D2010-1887 (WIPO January 29, 2011):

 

If the Respondent’s use of the Domain Name is caught by paragraph 4(b)(iv) of the Policy, as the Panel has found to be the case, that bad faith use may provide sufficient evidence, in the absence of any evidence to the contrary, that the Domain Name was also registered in bad faith (see the decision of the majority of the panel in A Natterman & Cie GmbH and Sanofi-Aventis v. Watson Pharmaceuticals Inc ... “Thus the abuse of a domain name as specified in paragraph 4(b)(iv) of the UDRP is evidence of bad faith registration and use but is not conclusive.  It may be rebutted by contrary evidence that the registration was in fact made in good faith”).

 

The Panel in O2 Holdings went on to find that the Respondent had submitted contrary evidence and found no bad faith registration.

 

Here, Respondent also has submitted contrary evidence.  She states that she conceived of a "green" division dedicated to the use of environmentally friendly products for use by her business clients in promoting and advertizing their "logos".  She states that she considered both the domain name <greenlogostore.com> and the Domain Name, before registration of the latter.  And, her registration of the Domain Name was followed almost immediately by use of the "Green Logo Shop" as a Google keyword. 

 

This statement of intent and this contemporaneous and generic use do not show that Respondent registered the Domain Name primarily for the purpose of transferring it to Complainant, or to prevent Complainant from reflecting the Registered Trademark in a corresponding domain name[5], or primarily for the business of disrupting Complainant's business, as required to prove violations of paragraph 4(b)(i), 4(b)(ii), and 4(b)(iii) of the Policy.

 

Complainant contends that Respondent registered the Domain Name in bad faith because Respondent had an obligation to conduct a search prior to use of the Domain Name.  This obligation is contained in paragraph 2 of the Policy, which states:

 

By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."

 

There are cases supporting Complainant's contention, which hold that the obligation to search results in an implied warranty at the time of registration that the domain name will not be used by the registrant in bad faith[6].  The Panel declines to follow these cases, because the Panel believes its authority to be limited to a consideration only of the three elements of paragraph 4(a) of the Policy.

  

Given the absence of bad faith registration, the Panel will not further address the issue of bad faith use by Respondent, under paragraph 4(b)(iv) of the Policy or otherwise.

 

The Panel finds that Complainant has not met its burden of proof under paragraph 4(a)(iii) of the Policy.

 

DECISION

Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <greenlogoshop.com> domain name REMAIN WITH Respondent.

 

 

Bruce E. O'Connor, Panelist

Dated:  December 6, 2013