Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON
Claim Number: FA1504001613409
Complainant is Panco Men’s Products, Inc. (“Complainant”), represented by Diane Reed of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is LEN PETERSON / LEONARD L PETERSON (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genesvitamine.com>, registered with REGISTER.COM, INC.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2015; the Forum received payment on April 7, 2015.
On April 8, 2015, REGISTER.COM, INC. confirmed by e-mail to the Forum that the <genesvitamine.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, INC. 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 April 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@genesvitamine.com. Also on April 14, 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 May 4, 2015.
Complainant submitted a timely additional submission, which was received on May 8, 2015.
Respondent submitted an additional submission which was deemed deficient due to its late filing.
On May 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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 owns common law rights in the GENES VITAMIN E CREME mark, as established through its continuous use of the mark since early 2000 and widespread consumer recognition. Complainant provides cosmetics and skin care products, and uses the GENES VITAMIN E CREME mark to promote its products. The <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark. The domain name contains the Complainant’s mark in full, removes the spaces between “Genes,” “Vitamin,” and “E,” removes the word “Creme,” and inserts the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent's sole use of the disputed domain name is for attracting Internet users to a commercial website on which the Respondent promotes and offers for sale Complainant's GENES skin cream products. Respondent has not been commonly known by the disputed domain name, as nothing in the WHOIS information reflects that Respondent is known by the <genesvitamine.com> domain name. Further, Complainant has neither authorized nor licensed Respondent to use Complainant’s GENES VITAMIN E CREME mark. Respondent’s lack of rights or legitimate interests in the <genesvitamine.com> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users to a commercial website, on which Respondent promotes and offers Complainant’s products for sale.
Respondent has engaged in bad faith registration and use of the <genesvitamine.com> domain name under Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, and by featuring product claims that are highly likely to damage Complainant’s business. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Complainant fails to demonstrate that Respondent lacks rights and interests in respect of the disputed domain name. Respondent can establish rights and legitimate interests in the disputed domain name. On January 5, 2005, Respondent registered the disputed domain name to become an online reseller of Complainant’s Vitamin E Creme. Respondent has continuously used the disputed domain name for nine years, and no products in direct competition have ever been available through Respondent’s domain name.
There is no evidence that Respondent registered the disputed domain name in bad faith. First, Respondent has established that it has rights and legitimate interests in the disputed domain name, which precludes bad faith. Additionally, there is no evidence to support that Respondent has used the disputed domain name for commercial gain by creating confusion with Complainant’s mark. It cannot be established that Respondent registered and is using the disputed domain name to disrupt the business of Complainant, as Respondent is not in competition with Respondent nor has Complainant ever operated a website to sell its own products.
Complainant’s claims should be barred by the Doctrine of Laches.
C. Additional Submissions
Complainant asserts that the doctrine of laches is an inapplicable defense under the UDRP. Complainant did not delay in asserting its rights, as Complainant submitted a cease and desist letter as soon as it became aware of Respondent’s website. Further, equity should not be used to defend against intentional trademark infringement.
Respondent's additional submission was not considered by the panel in that it was not timely filed and the matters contained therein did not affect the decision.
1 - The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The disputed domain name was registered and is being 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.
Clearly the Complainant has established common law rights in the trademark through its development, continuous use and widespread consumer recognition since early 2000. Complainant's brands have become successful and well-known throughout the United States well before Respondent registered the disputed domain name in 2005. Complainant has retail presence in outlets such as Walmart, Costco and Sam's Club and its products are sold in over 5,000 total retail locations. Complainant has provided sufficient evidence of a secondary meaning in the GENES VITAMIN E CREME mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Also, Complainant has acquired trademark rights through the United States Patent and Trademark Office for the GENES VITAMIN E CREME mark (Reg. No. 4,454,201, first used in commerce Nov. 2, 2000, Filed April 30, 2013, registered Dec. 24, 2013). Although Respondent’s disputed domain name technically predates Complainant’s registration with the USPTO, the Panel finds that Complainant has rights in the GENES VITAMIN E CREME mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that the <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark. The domain name contains the Complainant’s mark in full, removes the spaces between “Genes,” “Vitamin,” and “E,” removes the word “Creme,” and inserts the gTLD “.com” to the domain name. Prior panels have found that the removal of spaces and the addition of a gTLD are both irrelevant to Policy ¶4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Further, past panels have concluded that the removal of a word from a registred mark does little to distinguish the disputed domain name from the mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Thus, the Panel may find that the <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶4(a)(i).
It should be noted that Respondent made no contentions with regard to Policy ¶ 4(a)(i).
The panel finds that Respondent lacks rights or legitimate interests in the disputed domain name due to the failure to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name diverts Internet users to a commercial website on which Respondent promotes and offers Complainant's products for sale. By offering Complainant's products under Complainant's mark, Respondent appears to be the manufacturer of the product or affiliated or sponsored by the Complainant. Respondent uses statements on the website such as "On behalf of all of us who bring you GENES Vitamin E Creme, we wish you the best of health"; "We provide Solutions with better results, Naturally!."; and "Much of our advice is from groups such as Psoriasis Association UK." Such statements could clearly mislead consumers as to the ownership or affiliation of the website.
As Complainant stated, Respondent's sole use of the disputed domain name is for attracting Internet users to the website to offer for sale Complainant's skin cream products. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (June11, 2001, it was found that the use of a manufacturer's trademark as a domain name by even an authorized dealer or reseller can be deemed a "bona fide offering of goods or services " only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods; (3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and (4) the respondent must not try to "corner the market" in all relevant domain names. And one panel added: It is critical to the establishment of rights or legitimate interests under the Oki Data approach that the reseller make use of the manufacturer's trademark only insofar as is reasonably necessary, that such use involve only the trademark owner's products, that the reseller take steps to avoid using the owner's mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement, and that the reseller's website effectively and accurately disclose the relationship with the trademark owner. Diamond Mattress Company, Inc. v. Diamond Mattress, WIPO Case No. D2010-1637.
While Respondent denies that is ever attempted to create a false association with Complainant, there is nothing on the disputed website to negate such an impression. There is no disclaimer or disclosure of Respondent's relationship with the Complainant. Even Respondent's Invoice to consumers for products shipped gives the address as GenesVitaminE.com in Centerville, MN and an email address as info@genesvitamine.com. These facts lead to a false sense that Respondent is the manufacturer of the product or that Respondent is the owner of the mark. Respondent has appropriated Complainant's trademark to his own use.
The Panel finds that the Respondent registered and uses the disputed website to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark. Internet users are highly likely to naturally assume that the website and disputed domain name is the website of or endorsed by Complainant. Previous panels have found that the use of a confusingly similar domain name to sell a complainant’s products, for commercial gain, amounts to a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Laches
The panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent's assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) ("The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.")
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <genesvitamine.com> domain name be TRANSFERRED from RESPONDENT to COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: May 26, 2015
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