Scrubs AC, Inc. dba allheart, a Delaware corporation v. Brian Payne / Allheart Industries
Claim Number: FA1607001683441
Complainant is Scrubs AC, Inc. dba allheart, a Delaware corporation (“Complainant”), represented by Carlo F. Van den Bosch of Sheppard Mullin Richter & Hampton LLP, California, USA. Respondent is Brian Payne / Allheart Industries (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allheart.us>, registered with GoDaddy.com, LLC.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2016; the Forum received payment on July 14, 2016.
On July 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allheart.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2016 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@allheart.us. Also on July 14, 2016, 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 August 2, 2016.
On August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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 to the usTLD Dispute Resolution Policy (“Rules”)
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the ALLHEART mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,780,130, registered on April 27, 2010). Respondent’s <allheart.us> domain name is identical to the ALLHEARTmark because it merely adds the country-code top-level domain (“ccTLD”) “.us.” to the mark.
Policy ¶ 4(a)(ii)
Respondent does not own a trademark identical to the <allheart.us> domain name. Respondent has not been commonly known by the <allheart.us> domain name despite registering it as “Allheart Industries.” In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to create a false impression of affiliation with Complainant and to compete with Complainant through the sale of apparel and jewelry.
Policy ¶ 4(a)(iii)
Respondent uses the <allheart.us> domain name in bad faith because the resolving website disrupts Complainant’s business and attracts Internet users through the false impression of affiliation with Complainant by selling competing apparel and jewelry. Respondent registered the <allheart.us> domain name in bad faith because it did so with constructive knowledge of Complainant’s rights in the ALLHEART mark.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent has been known as “Allheart Industries” prior to its registration of the <allheart.us> domain name through its registration with the Florida Secretary of State. Respondent does not compete with Complainant because the resolving website is under construction and does not feature live links and because Respondent operates in a different market than Complainant.
Policy ¶ 4(a)(iii)
Respondent neither registered nor uses the <allheart.us> domain name in bad faith because it was not aware of Complainant at the time of registration and because it operates in a different locality and market than those of Complainant.
Complainant Scrubs AC, Inc. does business as “allheart.” It holds two United States Patent and Trademark Office (“USPTO”) registrations for the ALLHEART mark, one for retail store services in the field of medical goods and the second in connection with sales of footwear and other items of clothing of a type worn in the medical field. Complainant has owned and operated a website under the domain name <allheart.com> since May 1997 and owns other domain names using the ALLHEART mark. It sells apparel, medical equipment and medically-themed jewelry as well as other product through its <allheart.com> website.
Respondent Brian Payne formed a company called Allheart Industries, LLC that he registered with the Florida Secretary of State on January 7, 2015. The company manufactures and markets “precious metal” jewelry for women. The disputed domain name <allheart.us> was registered by Respondent through Go Daddy on January 1, 2015. Respondent’s website under that domain name has been “under construction” ever since. Respondent initially listed jewelry, apparel and “All Heart Classes” as products that would be offered on the website. When Respondent received notice of the Complaint, he removed the reference to apparel from the website. He notified Complainant that his website had merely listed a temporary generic format from which he removed all references to apparel upon being notified of the Complaint. He contends that he registered the disputed domain name after determining that the domain <allheart.com> was not in use. The record contains no evidence that Respondent had actual knowledge of Complainant or Complainant’s right in the ALLHEART mark at the time he registered the disputed domain name, nor is there any evidence that he has used the domain name to market jewelry that competes with medically-themed pins that are marketed by 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the ALLHEART mark through its USPTO registrations. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015). Because Respondent has wholly incorporated the ALLHEART mark in the disputed domain name and merely added the country code “.us” as a top level domain TLD to the mark, the disputed domain name is identical to Complainant’s mark within the meaning of Policy ¶4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015).
Because Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, the burden is on Respondent to prove he has rights or legitimate interests in it. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Respondent has no trademark registration and he has not yet done business through his website using the disputed domain name. Even though he created a limited liability corporation which he registered in Florida named Allheart Industries, L.L.C., the record does not show that he is commonly known by that name. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014). When Respondent was contacted by Complainant with a cease and desist letter challenging his use of the ALLHEALTH mark, he removed the reference to the marketing of apparel from his website. He contends he had no knowledge of Complainant’s rights in the mark before receiving that letter and changed the reference on his website to manifest his intention to use the domain name only for marketing precious metal women’s jewelry in an area of Florida where he would not be in competition with Complainant and where he would be using the website for a bona fide offering of goods.
The panel finds that Respondent intends to offer jewelry that has no connection to the medical field, and he will not compete with Complainant nor will he use his website to divert Internet users who are seeking goods offered by Complainant. Respondent’s planned use of his website is legitimate within the meaning of Policy ¶4(a)(ii). See LifeWatch Holding Corp. v. Network Earth, Inc., FA 96301 (Forum Jan. 26, 2001).
The record contains no evidence that Respondent had actual knowledge of Complainant and Complainant’s rights in the ALLHEALTH mark at the time he registered the disputed domain name. Nor does the record show that he intends to use the domain name to disrupt or interfere with Complainant’s business. Complainant has failed to establish that Respondent has registered or used the disputed domain name in bad faith within the meaning of Police ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) and Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001).
Because Complainant has not established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <allheart.us> domain name REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: August 22, 2016
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