Tristar Products, Inc. v. Eli Cohen, Canadian Gift Concept
Claim Number: FA1411001592318
Complainant is Tristar Products, Inc. (“Complainant”), represented by Joshua A. Stockwell of Barlow, Josephs & Holmes, Ltd., Rhode Island, USA. Respondent is Eli Cohen, Canadian Gift Concept (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copperwearonline.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2014; the National Arbitration Forum received payment on November 26, 2014.
On December 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <copperwearonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2014 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@copperwearonline.com. Also on December 3, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Complainant did submit an Additional Submission, which was received December 27, 2014 and which was timely. The additional submission was taken into account by the Panel and was considered in the course of reaching its decision.
On January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses COPPER WEAR to promote and sell clothing and other apparel. Complainant has used <copperwear.com> to promote and sell its goods since April 27, 2007. The <copperwearonline.com> domain name merely adds the term “online” to Complainant’s own mark, along with the superfluous gTLD “.com.”
2. Respondent has no rights or legitimate interests in the <copperwearonline.com> domain name. Respondent is not commonly known as this <copperwearonline.com> domain name nor has it been licensed to use the COPPER WEAR mark. Further, Respondent uses the <copperwearonline.com> domain name to pass itself off as Complainant by selling competing goods under the COPPER WEAR mark.
3. Respondent registered and is using the <copperwearonline.com> domain name in bad faith. Respondent is disrupting Complainant’s business by promoting and selling directly competing goods. Respondent is taking advantage of a likelihood of Internet users’ confusion, especially in light of Respondent’s former association as a distributor of Complainant’s goods in Canada.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant.
1. Complainant made further submissions and provided further evidence to support its claim to common law trademark rights in the COPPER WEAR mark and in particular to show, in its submission, that COPPER WEAR has become distinctive throughout the United States.
2. Complainant also made further submissions and provided further evidence to show that, in its submission, the disputed domain name had been registered and used in bad faith
1. Complainant is a United States company engaged in the promotion and sale of copper-infused fabric garments and related goods and services.
2. Complainant has common law trademark rights to the COPPER WEAR mark dating back at least to April 27, 2007 when it registered the domain name <copperwear.com>.
3. The disputed <copperwearonline.com> domain name was registered on May 18, 2014.
4. The disputed domain name is used to pass Respondent off as Complainant and to sell goods that are in competition with those of Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant need not have a registered trademark to satisfy this requirement, so long as evidence exists to show, according to usual principles, that it has a common law or unregistered trademark in the mark claimed. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).The Panel has examined the evidence submitted and finds that Complainant has common law trademark rights to COPPER WEAR and that those rights date at least from April 27, 2007 when it registered the domain name <copperwear.com> which it has used and uses in its business. Complainant uses the COPPER WEAR mark to promote and sell its clothing and other apparel. Complainant has also used the <copperwear.com> domain name to promote and sell its goods since April 27, 2007. See Compl., at Attached Ex. 6. Complainant has also filed trademark applications with the United States and Canadian trademark authorities. See Compl., at Attached Exs. 3–5. In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel agreed that secondary meaning necessary to create common law rights required a showing that the mark was used in such a way as to create, in the eyes of consumers, an association as the mark as the designator of source or origin and not merely as descriptive of the goods themselves. As the Panel finds that Complainant has shown secondary meaning in the COPPER WEAR mark, it finds that Complainant has established common law Policy ¶ 4(a)(i) trademark rights dating back at least to April 27, 2007.
The second issue that arises is whether the disputed <copperwearonline.com> domain name is identical or confusingly similar to Complainant’s COPPER WEAR mark. Complainant submits that the <copperwearonline.com> domain name merely adds the term “online” to Complainant’s own mark, along with the superfluous gTLD “.com.” The Panel agrees that the generic word “online” does not add distinction to the domain name to negate a finding of confusing similarity as the objective bystander would assume that the domain name related to the business of Complainant being conducted online. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). The Panel also finds that adding the gTLD “.com” is irrelevant, as all domain names require one TLD or another. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now 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 has chosen to take Complainant’s COPPER WEAR mark and to use it in its domain name and has added the generic word “online” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the online sale of products of Complainant;
(b) Respondent registered the disputed domain name on May 18, 2014;
(c) The disputed domain name is used to pass Respondent off as Complainant and to sell goods that are in competition with those of Complainant;
(d) Complainant submits that Respondent is not commonly known by the <copperwearonline.com> domain name, nor has it been licensed to use the COPPER WEAR mark. The Panel notes that Respondent is listed as “Eli Cohen, Canadian Gift Concept” in the WHOIS records. The Panel agrees that nothing in this record suggests that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant claims that Respondent uses the <copperwearonline.com> domain name to pass itself off as Complainant by selling competing goods under the COPPER WEAR mark. Complainant points out that Respondent was once, but is no longer, an affiliate of Complainant’s in the sale of the COPPER WEAR goods. The Panel notes that a directly competing business is hosted on this domain name’s website. See Compl., at Attached Ex. 1. The Panel agrees that such passing off does not create a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is disrupting Complainant’s business by promoting and selling directly competing goods. The Panel again notes that Exhibit 1 shows a website used to sell goods in competition with the COPPER WEAR line. The Panel finds that such a use creates a Policy ¶ 4(b)(iii) bad faith disruption with respect to the COPPER WEAR business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant argues that Respondent is taking advantage of a likelihood of Internet users’ confusion, especially in light of Respondent’s former association as a distributor of Complainant’s goods in Canada. The Panel again agrees that the use of the domain name for a competing online store, as seen in Exhibit 1, is suggestive of Respondent’s intent to profit from a likelihood of confusion in Policy ¶ 4(b)(iv) bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <copperwearonline.com> domain name using the COPPER WEAR mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus 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 <copperwearonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: January 9, 2015
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