Sweet Art Company LLC v. Sweet Art, Inc.
Claim Number: FA1505001617812
Complainant is Sweet Art Company LLC ("Complainant"), represented by Christopher M. DeBacker of Law Office of Mark Brown, LLC, Kansas, USA. Respondent is Sweet Art, Inc. ("Respondent"), represented by Thomas Q. Henry of Woodard, Emhardt, Moriarty, McNett & Henry LLP, Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sweetartinc.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 5, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <sweetartinc.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 May 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on May 6, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 June 11, 2015.
On July 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant holds U.S. trademark registrations for SWEET ART, used in connection with food decorating machines and related products. A design-plus-words version of the mark was registered in 1989; the mark consists of a drawing of a chef with the words "Sweet" and "Art." A words-only version of the SWEET ART mark was registered in 2009. The registrations indicate that the mark was first used in 1987 or 1988.
Complainant contends that the disputed domain name <sweetartinc.com>, registered by Respondent in 1998, is confusingly similar to its SWEET ART mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Complainant states that Respondent, like Complainant, is in the business of food decorating, and that Respondent is advertising its business through a website that uses the disputed domain name. Complainant states that it first learned of Respondent's website in 2014, after both parties signed up to participate in an industry event. Complainant states further that one of its customers saw Respondent listed as "Sweet Art" on the list of vendors and assumed that it was Complainant rather than Respondent.
Complainant alleges that Respondent's use of Complainant's mark with in a domain name is not legitimate because Complainant's trademark predates Respondent's domain name registration. Complainant states that Respondent is a locally-focused business located in Indianapolis, Indiana, and that its use of Complainant's mark beyond that local market is causing confusion with Complainant's mark and business.
Respondent asks that the Complaint be denied based upon the doctrine of laches because of the unexplained 17-year delay in bringing the Complaint. Respondent alleges that Complainant has known of Respondent's use of the "Sweet Art" name since even before Respondent's 1998 registration of the disputed domain name.
Respondent also contends that Complainant has not proved that Respondent has no rights or legitimate interests in the disputed domain name, nor that it was registered and is being used in bad faith.
Respondent claims that it has rights and legitimate interests in the disputed domain name because it is commonly known by the domain name and has been using it in connection with a bona fide offering of goods and services. Respondent states that it began using "Sweet Art" in its name in late 1985 and provides a copy of a Certificate of Incorporation for Sweet Art Galleries, Inc., issued in November 1986; Respondent incorporated under its current name, Sweet Art, Inc., in 1992. Respondent describes its business as "Indianapolis' premier wedding cake and specialty cake shop," and states that it also manufactures confectionary ingredients and cake decorating tools for sale all around the world under "Sweet Art" and other names.
Respondent asserts that Complainant has known of Respondent's business since 1997 and has "openly cooperated" in Respondent's use of "Sweet Art." In support thereof, Respondent provides a copy of an internal memo to Complainant's staff from 2000, mentioning Respondent's Sweet Art, Inc., and Sweet Art Galleries by name. The memo refers to confusion that has occurred because of the parties' similar names and states that they have cooperated in forwarding misdirected inquiries to one another. Respondent also provides a copy of a 1997 letter from an attorney representing Complainant. The letter acknowledges Respondent's use of the "Sweet Art" name and its claim that such use predated that of Complainant, but refuses to cancel Complainant's trademark registration or discontinue use of the mark. The letter also refers to Respondent's planned participation in an international industry event to take place in Las Vegas later in 1997.
C. Additional Submissions
In its Additional Submission, Complainant states that its present owner had no knowledge of the prior discussions between the parties referred to by Respondent. Complainant argues that Respondent has acted in bad faith in its recent expansion of its use of the "Sweet Art" name, from an Indianapolis-based cake decorating business to an interstate food decorating equipment business.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel finds that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and has failed to prove that the disputed domain name was registered and is being used in bad faith. The Panel further finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
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 disputed domain name <sweetartinc.com> corresponds to Complainant's registered trademark SWEET ART, with the space omitted and the generic term "inc" and the ".com" top-level domain appended thereto. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Avant Credit Corp. v. Andy Tang, D2014-2163 (WIPO Mar. 2, 2015) (finding <avantcreditinc.com> confusingly similar to AVANT CREDIT); Hewlett-Packard Development Co. v. Huangwei, FA 1584446 (Nat. Arb. Forum Nov. 28, 2014) (finding <hewlettpackardinc.com> confusingly similar to HEWLETT PACKARD).
The Panel finds that the disputed domain name is confusingly similar to Complainant's SWEET ART mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). However, the ultimate burden of proof on this issue remains upon Complainant. See Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc., FA 1595932 (Nat. Arb. Forum Jan. 20, 2015).
The disputed domain name incorporates Complainant's registered mark, is being used without Complainant's permission, and resolves to a website that promotes a competing business. But Respondent clearly has rights or legitimate interests in the domain name.
Respondent has been operating a business under the "Sweet Art" name for many years, and is commonly known by the name—at the very least locally, which in the Panel's view is sufficient. It is true, as Complainant argues, that an infringing use generally does not give rise to rights or legitimate interests under the Policy. But the evidence before the Panel indicates that Respondent has been using the "Sweet Art" name for longer than Complainant has, and that Complainant has been aware of Respondent's concurrent use for many years.
Complainant may well have a legitimate dispute with Respondent concerning Respondent's longstanding use of "Sweet Art" in its company names, in connection with its products and services, and in its domain name. But the Policy was not intended to resolve disputes of this nature; it was designed to handle only a "relatively narrow class of cases of 'abusive registrations.'" Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ¶ 4.1(c) (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm> (noting that "the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)"). "The Policy covers only cybersquatting and cyber piracy, that is, instances 'where the domain name registrant's business activities (to the extent that they exist at all) are merely a pretext designed to camouflage the registrant's intent to exploit the trademark value of a domain name.'" Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004) (quoting Palace Holding SA v. Priston Entmt. Ltd., D2003-0705 (WIPO Dec. 5, 2003)).
The Panel finds that Complainant has failed to meet its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The evidence before the Panel does not support either of the circumstances set forth above, nor any of the other bad faith examples that appear in the Policy. Furthermore, it is quite clear that Respondent registered the disputed domain name in order to use it in connection with its own legitimate business, and was not thereby specifically targeting Respondent or its mark, as the Policy requires for a finding of bad faith. See Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013) ("To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when he registered the domain name, and the registration must in some way have been targeted at Complainant or its mark."); InnoGames GmbH v. Buydomains.com, Inventory Management, D2011-0085 (WIPO Mar. 28, 2011) ("The Policy generally requires that the respondent's bad faith must be targeted at the complainant or its mark in some way"); DataServ, L.L.C. v. Name Administration Inc. (BVI), D2012-1538 (WIPO Sept. 27, 2012); Investone Retirement Specialists, Inc. v. Motohisa Ohno, D2005-0643 (WIPO Aug. 2, 2005). The Panel finds that Complainant has failed to meet its burden of proving that the disputed domain name was registered and is being used in bad faith.
Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., PFIP, LLC v. Marco Jud, FA 1577082 (Nat. Arb. Forum Sept. 26, 2014); Edward Smith v. Douglas Bates, FA 1483682 (Nat. Arb. Forum Mar. 27, 2013). Merely failing to prevail on the merits is insufficient; a finding of RDNH should be reserved for truly egregious cases. See Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006).
In this case, it should have been obvious to Complainant that it could not prove that the disputed domain name was registered in bad faith. Even the allegations of bad faith in the Complaint relate only to Respondent's current use of the domain name, not to its original registration in 1998.
The history of communications between the parties makes it clear that Complainant was aware of Respondent's business and its longstanding use of the "Sweet Art" name. The Panel does not consider the Complainant's claimed change of ownership sufficient to explain its purported lack of knowledge of the history between the parties, especially considering that Complainant has been represented by counsel at all relevant times. See Pick Enters., Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Ctr. f/k/a Woman to Woman Health Ctr., D2012-1555 (WIPO Sept. 22, 2012) (noting that an unjustified complaint is especially inexcusable when complainant is represented by counsel).
In the Panel's view, Complainant knew or should have known that it could not prove that the disputed domain name was registered in bad faith, and nevertheless initiated this proceeding in an improper effort to obtain the domain name. The Panel finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
The Panel considers it unnecessary under the circumstances to address Respondent's laches argument.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <sweetartinc.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: July 31, 2015
 The registrant field in the Whois record for the disputed domain name is blank. However, the domain name appears to have been registered by or on behalf of Sweet Art, Inc., and the parties have proceeded on this basis. The original Complaint named Sweet Art Inc. as Respondent, but was amended at the Forum's request to name "[Registrant]" as Respondent. Under the circumstances, the Panel considers Sweet Art, Inc. to be the proper Respondent in this proceeding.
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