Kathy Miller-Kramer v. Dave Warren
Claim Number: FA1501001602672
Complainant is Kathy Miller-Kramer (“Complainant”), represented by Neal L. Slifkin of Harris Beach PLLC, New York, USA. Respondent is Dave Warren (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <invisabelt.com>, registered with Catalog.com.
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 Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On February 4, 2015, Catalog.com confirmed by e-mail to the Forum that the <invisabelt.com> domain name is registered with Catalog.com and that Respondent is the current registrant of the name. Catalog.com has verified that Respondent is bound by the Catalog.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 February 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2015 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@invisabelt.com. Also on February 5, 2015, 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 February 23, 2015.
On March 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has trademark rights in INVISIBELT as demonstrated by its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,356,764, registered Dec. 18, 2007, filed Dec. 8, 2003). The mark is used in connection with the sale of clothing, namely, waist belts made of plastic. The <invisabelt.com> domain name is confusingly similar to the INVISIBELT mark as the domain name merely substitutes the letter “a” for the “i” in Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent, and its affiliate “isABelt,” are not commonly known by the <invisabelt.com> domain name, nor does Respondent have authorization to use the domain name, or make use of a variation of Complainant’s mark. While Respondent does not use the term “invisabelt” in conjunction with any products, Respondent has maintained the resolving website to discuss its “isABelt” products, and promotes links to <isabelt.com>. In 2007, following a cease and desist letter, Respondent complied with the request and deactivated the domain name. However, on November 12, 2014, Complainant became aware that the disputed domain name was active again. In response to another cease and desist letter, Respondent resolved the disputed domain name to a parking page. Respondent’s demonstrated prior use of the disputed domain name has been competitive with Complainant as Respondent sells similar competing goods. Respondent’s acquiescence to parking the disputed domain name does not remedy its lack of rights in the name.
Respondent has engaged in bad faith registration and use. Respondent’s use of the disputed domain name to promote competing goods disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii). Further, Respondent is using the disputed domain name to redirect users seeking Complainant to Respondent’s own site where Respondent sells competing waist belts. Such conduct falls within the auspices of Policy ¶ 4(b)(iv) bad faith. The totality of the circumstances further demonstrate bad faith. Respondent’s continued re-posting of a competing commercial website shows Respondent’s bad faith. The circumstantial evidence shows Respondent registered the disputed domain name with knowledge of Complainant. In addition, Respondent has engaged in typosquatting, which is additional evidence of bad faith registration and use.
B. Respondent
Respondent is isABelt, ltd., the owner and buyer of the disputed domain name. The listed Respondent and registrant, “Dave Warren” handled isABelt’s websites during the time in question, and is responsible for reactivating the disputed domain name without isABelt’s knowledge. Dave Warren is no longer employed by isABelt.
Respondent registered the disputed domain name with the intention of marketing its newly invented product in 2006. At the time, the “invisibelt” trademark had been abandoned and there was no active “invisibelt” website. Respondent registered the name for its business portfolio.
Respondent has not used the disputed domain name for commerce. The individual contracted to oversee Respondent’s domain portfolio reactivated the disputed domain name without authorization.
Respondent did not acquire the disputed domain name in bad faith as the “invisibelt” trademark had been abandoned at the time of registration. Further, Respondent did not intend to infringe on Complainant or its business efforts in any way. The redirection cited by Complainant was innocent, as a new IT person made the redirection without isABelt’s knowledge.
1.Complainant is a United States company engaged in the manufacture and sale of women’s clothing accessories, particularly a clear belt described as “Invisibelt: The Only Invisible, Flat, Undetectable Belt.”
2. Complainant is the owner of the INVISIBELT trademark as demonstrated by its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,356,764, registered Dec. 18, 2007, filed Dec. 8, 2003), giving Complainant trademark rights in INVISIBELT since Dec.8, 2003.
3. Interests associated with the disputed domain name operate via a company named Isabelt Ltd that is engaged in the manufacture and sale of a belt that Isabelt Ltd has described as “The isABelt is The ORIGINAL invisible belt”.
4. Respondent is the registrant of the disputed domain name, was formally engaged by Isabelt Ltd to manage its websites and in that capacity reactivated the website to which the disputed domain name resolved, namely www.invisabelt.com. He is no longer associated with Isabelt Ltd.
5. Respondent registered the disputed domain name on December 12, 2006.
6.The disputed domain name has been used to direct internet users to the website of Isabelt Ltd and that website has promoted Isabelt Ltd’s similar and competing product.
7.The disputed domain name is confusingly similar to the INVISIBELT mark in which Complainant has rights.
8. Respondent has no rights or legitimate interests in respect of the disputed domain name.
9. The disputed domain name was registered and has been used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has trademark rights in INVISIBELT as demonstrated by USPTO registration (Reg. No. 3,356,764, registered Dec. 18, 2007, filed Dec. 8, 2003). Complainant notes that mark is used in connection with the sale of clothing accessories, namely, waist belts made of plastic. Complainant adds that its <invisibelt.com> domain name was active as far back as 2003 .See Compl., at Attached Ex. F. Complainant claims that its rights in the mark date back to the December 2003 filling date for purposes of Policy ¶ 4(a)(i). Prior panels have found USPTO registration satisfies the initial requirements of Policy ¶ 4(a)(i), and that the effective date for trademark rights is the application’s filing date where the application was ultimately successful. 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”). Accordingly, the Panel finds Complainant’s valid USPTO registration demonstrates its rights in the INVISIBELT mark pursuant to Policy ¶ 4(a)(i), and that such rights date back to the December 8, 2003 filing date.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s INVISIBELT mark. The <invisabelt.com> domain name is confusingly similar to the INVISIBELT mark as the domain name merely substitutes the letter “a” for the “i” in Complainant’s mark. The Panel may also note that the disputed domain name affixes the generic top-level domain (“gTLD”) “.com,” though panels have consistently deemed the addition of gTLDs inconsequential to the confusing similarity analysis. 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). The Panel determines that the subsitution of a single letter does not sufficiently distinguish the <invisabelt.com> domain name from the otherwise incorporated INVISIBELT mark. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited, FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”). Therefore, the Panel finds the disputed domain name confusingly similar to Complainant’s
INVISIBELT trademark pursuant to 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 INVISIBELT mark, to make only one minor spelling alteration and to use it in its domain name;
(b) Respondent registered the disputed domain name on December 12, 2006;
(c) The domain name has been used to direct internet users to Respondent’s website that promoted Respondent’s similar and competing products but at present does not resolve to an active website;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and Respondent has not negated that submission;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as , inter alia , neither the listed Respondent, nor its affiliate “isABelt,” is commonly known by the <invisabelt.com> domain name, nor does Respondent have authorization to use the domain name, or make use of a variation of Complainant’s mark. In its Response, Respondent acknowledges that it is not commonly known by the disputed domain name. Accordingly, the Panel determines that Complainant has carried Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response);
(f) Complainant further argues that while Respondent does not use the term “invisabelt” in conjunction with any products of that name, Respondent has used the domain name and the website to which it resolves to promote its “isABelt” products, and promote links to Respondent’s website reachable through <isabelt.com>. See Compl., at Attached Exs. M-N, P-R . Complainant explains that in 2007, following a cease and desist letter, Respondent complied with the request and deactivated the domain name from use with Respondent’s business. See Compl., at Attached Exs. O, P. However, in April 2011, Complainant became aware that the disputed domain name was active again. Following another letter, Respondent deactivated the domain name. See Compl., at Attached Ex. Q, O, R. Then again on November 12, 2014, Complainant noticed the disputed domain name was activated. See Compl., at Attached Exs. S, O. In response to another cease and desist letter, Respondent resolved the disputed domain name to a parking page. See Compl., at Attached Exs. T, U. Complainant argues that Respondent has used the disputed domain name to compete with Complainant as Respondent sells similar competing goods. The Panel agrees that Respondent’s documented use of the disputed domain name to promote or redirect users to its competing goods does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
These considerations show that Complainant has established a prima facie case that Respondent has no right or legitimate interest in the disputed domain name. It now remains to be seen if Respondent has rebutted that prima facie case. The Panel finds that Respondent has not done so.
Respondent’s main argument to show that it has a right or legitimate interest in the domain name is that the company involved on Respondent’s side of the dispute is Isabelt Ltd and, by implication, that it is legitimate to register a domain name that reflects a company name. That may be true in some cases, but not in the present case, where the domain name does not reflect the company name relied on, but for some unexplained reason uses the name “invisabelt” instead of “isabelt”. This introduces an entirely new concept into the domain name being constructed, namely that the belt in question is invisible. Thus it can hardly be said that the domain name <invisabelt.com> is simply an internet version of the company name Isabelt Ltd when it is a noticeably different name.
The argument is even weaker when it is considered that not only has the Respondent not chosen a domain name that accurately reflects the name of its company vehicle, but one that is confusingly similar to Complainant’s trademark. It cannot be said that it is legitimate for a registrant to take and use a domain name that is very similar to a competitor’s name and likely to confuse users, when it is not the name of the registrant’s company.
Respondent also argues that “isABelt is NOT known as Invisibelt.” However, it has chosen the domain name <invisabelt.com>, a name that is virtually identical to Complainant’s trademark INVISIBELT and its domain name <invisibelt.com>. This suggests that there has been an attempt to invoke Complainant’s trademark and its domain name <invisibelt.com> as a means of attracting business for Respondent.
Respondent also argues that it did not register the disputed domain name as a means of diverting business. However, as no plausible explanation is given as to why the domain name was chosen at all, the Panel finds that it was chosen because of its close similarity to Complainant’s trademark and to attract business. In this regard it should be noted, as was submitted by Complainant, that Respondent registered the disputed domain name in 2006 and by that time Complainant had a pending application to register its trademark for
INVISIBELT and the mark had been published for opposition on
July 12, 2005, more than a year prior to Respondent’s registration
of the domain name <invisabelt.com>. This suggests, again as Complainant argues, the confusing similarity between the disputed domain name and Complainant’s INVISIBELT mark and pre-existing <invisibelt.com> domain name constitutes exceptionally strong circumstantial evidence that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
Respondent has thus failed to rebut the prima facie case against it and Complainant has therefore 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’s use of the disputed domain name to promote competing goods disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii). Complainant reiterates that Respondent has maintained the resolving website to promote its “isABelt” products, and promote links to Respondent’s own website <isabelt.com> where those products are displayed. In other words Respondent has not used the domain name to promote goods described as “invisibelt” or even “invisabelt”, but “isabelt”. So it is attracting the interest of potential customers by way of a minor alteration to Complainant’s INVISIBELT trademark and using it to divert users to a website promoting Respondent’s own “isabelt” goods. The Panel accepts the evidence adduced by Complainant to establish that contention. See Compl., at Attached Exs. M, N, R. As Respondent sells waist belts in competition with Complainant, the Panel concludes that Respondent’s use of the disputed domain name in promotion of its own goods constitutes commercial disruption, which is proscribed by Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Secondly, Complainant argues that Respondent is using the disputed domain name to redirect users seeking Complainant’s goods to Respondent’s own site where Respondent sells competing waist belts. Complainant claims such conduct falls within the auspices of Policy ¶ 4(b)(iv) bad faith. Previous panels have found evidence of Policy ¶ 4(b)(iv) bad faith where the respondent is using a confusingly similar domain name to promote competing goods or direct users to a competitor of the complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel finds Respondent’s use of the <invisabelt.com> domain name to direct users to its competing commercial website constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant adds that Respondent’s continued re-posting of such competing commercial websites reveals Respondent’s bad faith intentions and capacities with respect to the <invisabelt.com> domain name. Complainant argues that Respondent’s acquiescence in removing the competing landing pages should not mitigate Respondent’s bad faith, as it has then re-activated the site. The Panel agrees that Respondent’s prior uses of the disputed domain name to feature competing goods informs the Panel’s decision despite Respondent’s claimed unawareness of such activity. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”). In any event, the named Respondent was an agent of the interests associated with the disputed domain name and those interests are responsible for the actions of Respondent in reactivating the website.
Fourthly, Complainant further submits the circumstantial evidence shows Respondent registered the disputed domain name with knowledge of Complainant. Complainant explains that it applied for the INVISIBELT mark on December 8, 2003, and that its <invisibelt.com> domain name was active as far back as 2003. See Compl., at Attached Exs. D-F. The fact that Respondent operates in the same niche area as Complainant further suggests, together with all the other circumstances, that Respondent probably knew of Complainant at the time of the registration of the disputed domain name. The Panel notes again that Respondent has not given a plausible reason why it registered the disputed domain name. Moreover, the Panel notes from Complainant’s Exhibit M that Isabelt Ltd currently refers to its product as “The isABelt is The ORIGINAL invisible belt”, suggesting by inference that it has had Complainant’s trademark and products in mind. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). As the Panel infers Respondent had actual knowledge of Complainant and the INVISIBELT mark at the time of domain registration, the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith.
In addition, Complainant argues that Respondent has engaged in typosquatting, which is additional evidence of bad faith registration and use. Prior panels have found bad faith under the Policy ¶ 4(a)(iii) totality provision where the respondent registered a domain name, not out of the ingenuity of the respondent, but because that respondent saw a mark that could be manipulated in its spelling to siphon Internet users to an unrelated website. See Indep. Ins. Agents & Brokers of Am., Inc. v. Liqian, FA 1582252 (Nat. Arb. Forum Nov. 10, 2014) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string . . . Respondent’s typosquatting is, in itself, evidence of Policy ¶ 4(a)(iii) bad faith.”). Presently, the Panel recalls that the disputed domain name differs from the mark only by the substitution of a single letter. As the Panel agrees that such behavior is indicative of typosquatting, the Panel finds evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the <invisabelt.com> disputed domain name using the INVISIBELT mark with only a minor spelling alteration and in view of the conduct that Respondent engaged in when using the domain name and its activation as a website on several occasions, Respondent registered and used the domain 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 <invisabelt.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 10, 2015
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