Sheet Labels, Inc. v. Harnett, Andy
Claim Number: FA1611001701423
Complainant is Sheet Labels, Inc. (“Complainant”), represented by David P. Miranda of HESLIN ROTHENBERG FARLEY & MESITI P.C., New York, USA. Respondent is Harnett, Andy (“Respondent”), represented by Timur E. Slonim of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cutsheetlabels.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Carolyn Marks Johnson, David A. Einhorn, and Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the Forum electronically on November 4, 2016; the Forum received payment on November 4, 2016.
On November 4, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <cutsheetlabels.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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 email@example.com. Also on November 7, 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 December 13, 2016.
Complainant’s Additional Submission was timely received on December 19, 2016.
On December 22, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Honorable Carolyn Marks. Johnson as Panelist;
David A. Einhorn as Panelist; and
Paul M. DeCicco as Panelist.
Respondent’s Additional Submission was timely received on December 26, 2016.
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 contends as follows:
Complainant has rights in the SHEET LABELS and SHEETLABELS.COM marks through their registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <cutsheetlabels.com> domain name is confusingly similar to the marks because it incorporates the marks along with the generic or descriptive word “cut” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <cutsheetlabels.com> domain name because the available WHOIS information identifies “Harnett, Andy” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to divert customers away from Complainant in order to compete with Complainant.
Respondent uses the <cutsheetlabels.com> domain name in bad faith because the resolving website disrupts and diverts Complainant’s business in order to drive consumers to Respondent’s competing website, which creates an impression of association with Complainant. Respondent registered the <cutsheetlabels.com> domain name in bad faith because it is well aware and familiar with the existence of Complainant.
Respondent contends as follows:
The <cutsheetlabels.com> domain name is not confusingly similar to Complainant’s marks because the marks are not distinctive such that the additional term “cut” distinguishes the domain name and marks and because the SHEETLABELS.COM is a stylized mark while the domain name lacks the stylized elements. Respondent’s registration of the <cutsheetlabels.com> domain name predates Complainant’s rights in the marks. The marks and domain name are composed of generic terms.
Respondent had been doing business as “New Jersey Business Forms Manufacturing Corporation,” selling “cut sheets” of labels since 2002, and registered the <cutsheetlabels.com> domain name in 2010 as part of a restructuring of its business. The <cutsheetlabels.com> domain name accurately describes the nature of Respondent’s business. Complainant’s SHEET LABELS and SHEETLABELS.COM marks and the disputed domain name are composed of generic terms.
The <cutsheetlabels.com> domain name accurately describes the nature of Respondent’s business which is not operated with the intent to disrupt Complainant’s business. Respondent’s registration of the <cutsheetlabels.com> domain name predates Complainant’s rights in the marks.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Respondent argues that the domain should not be transferred because Complainant’s trademark registration does not predate Respondent’s domain name registration for cutsheetlabel.com on June 8, 2010. Respondent’s argument is incorrect.
Complainant is the owner of three federally registered SHEET LABELS marks, including Registration No. 3,504,325, registered by the USPTO on September 23, 2008. Although Complainant inadvertently failed to include a copy of its registration in its Amended Complaint, it plead and argued its 2008 trademark registration in its Amended Complaint, “Complainant began using the SHEET LABELS® and SHEETLABELS.COM® marks in 2005, began using it online in 2005, filed its first trademark applications with the USPTO in 2008 and 2011, and obtained its federal registration on September 23, 2008”. See Complainant’s Amended Complaint dated November 4, 2016.
Respondent was previously made aware of the 2008 SHEET LABELS ‘325 registration, via a cease and desist letter sent prior to the commencement of this proceeding.
Respondent improperly argues that the SHEET LABELS trademarks are generic and not entitled to protection in this proceeding. Respondent’s contentions however, are misplaced in this proceeding since ICANN-UDRP proceedings are not vested with jurisdiction to determine a Complainant’s entitlement to trademark protection.
Complainant, in its Amended Complainant has made a prima facie showing of the absence of rights or legitimate interests in the domain name on the part of the Respondent, and the Respondent has failed to show with concrete evidence, that it has legitimate interests in the domain name.
Respondent does not allege to be known by the name CutSheetLabels, or to have any formal business entity known by that name.
Respondent’s website at <cutsheetlabels.com>, allegedly went live in August of 2014, selling the products of his competing company, New Jersey Business Forms. Respondent has failed to show that it is known by, or doing business as cutsheetlabels, other than through its use of the offending domain name. Directing internet users seeking Complainant’s services to a third party website unrelated to Complainant, does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii).
Respondent argues that his use of Complainant’s trademark as his domain name in order to sell products of his competing business is not in bad faith because “there is nothing unlawful in Respondent offering the same generic products”. Respondent’s argument that the registered trademarks are generic is not germane to this proceeding. The United States Patent and Trademark Office has determined that issue in favor of Complainant. By registering and using the disputed domain name to support a website selling goods similar to those of Complainant, Respondent is intentionally attempting to confuse internet users as to the source of the goods offered at such website.
Respondent’s use of a Privacy Service to register the domain name anonymously, concealing his name and contact information, further raises a presumption of bad faith registration and use of the disputed domain name.
Respondent contends in its Additional Submission as follows:
Complainant’s improperly added third trademark registration (stylized and disclaimed) is not identical or similar to standard character domain name.
Respondent’s lack of pre-existing rights defense and in violation of the NAF Supplemental Rule 7(f) which provides that “[a]dditional submissions must not amend the Complaint,” Complainant’s Additional Submission amended the Amended Complaint by adding and attaching a third trademark registration no. 3,504, 325.
Complainant is wrong that “[a]lthough Complainant inadvertently failed to include a copy of its registration in its Amended Complaint; it pleads and argued its 2008 trademark registration in its Amended Complaint.” The Panel should not consider this untimely request to “amend the Complaint” in violation of Supplemental Rule 7(f).
Even if considered, Complainant’s belated addition of a third trademark registration no. 3,504,325 for a stylized (not standard character) mark does not revive its pre-existing rights case. Its stylized registration does not give it any exclusive rights in, and is not similar to, the standard character term “Sheet Labels.” Respondent’s domain <cutsheetlabels.com> is not stylized in any way.
Moreover, Respondent is not attempting to divert Internet users seeking Complainant’s products for commercial gain because its website at <cutsheetlabels.com> does not display Complainant’s mark but rather its own logo. Thus, Complainant’s stylized (not standard character) registration for its mark in 2008 is not identical or similar (and is thus irrelevant to) the standard character domain name cutsheetlabels.com.
Taking Complainant at its word that “[o]nce the pertinent authorities [i.e., the PTO] have spoken [about ‘a Complainant's entitlement to trademark protection’], the issue is determined for purposes of these proceedings,” the panel has to conclude--as the PTO did—that Complainant has no such rights in the words “SHEET LABELS.” The PTO has decisively spoken that Sheet Labels, Inc. has no exclusive rights to use “SHEET LABELS.COM.”
Complainant did not challenge and thus tacitly confirmed its admission that disclaimed SHEET LABELS and SHEETLABELS.COM do not function as trademarks because they refer to “the type of product” and do not identify Complainant as a source.
Complainant is incorrect that its 2016 “disclaimer …[of] the exclusive right to use "SHEETLABELS.COM" … does not diminish the prior trademark rights that Complainant has to the combined term SHEET LABELS in use since June 2005 [i.e., ], and federally registered since September 23, 2008 [for ].” There was nothing to “diminish” for the 2016 disclaimer, as it admitted that even in 2016, let alone in 2010, Sheet Labels, Inc., had no exclusive rights and has not acquired any secondary meaning in the term Sheet Labels.
Complainant failed to disprove that Respondent has rights and legitimate interests in the at-issue domain name. Complainant did not challenge and thus tacitly confirmed its admission that Respondent’s domain name is descriptive of the content of its website, which is the centerpiece of Respondent’s case that it has rights and legitimate interests in this domain.
Respondent’s and Complainant’s products are “identical,” “descriptive names” for Respondent’s products which also “includ[e] cut sheet labels.”
The fact of anonymous registration, which has recently ended as reflected in the Amended Complaint, does not support bad faith and does not defeat Respondent’s rights and legitimate interests in this domain. Complainant’s last unavailing argument is that <cutsheetlabels.com> is not a formal, incorporated business name of Respondent and its companies and that cutsheetlabels.com does not do business in the offline, real world.
Respondent’s traditional printing companies have an unincorporated division that has a completely different business model from them. This unincorporated division is <cutsheetlabels.com>, which has no physical sales force and does all its business through an interactive website. Respondent is doing business as <cutsheetlabels.com> exclusively online. The fact that Respondent does not promote <cutsheetlabels.com> in the offline world, and does not have a formally incorporated company bearing that name is also irrelevant and insufficient to defeat Respondent’s bona fide rights and legitimate interests in offering sheets of labels through the descriptive/generic cutsheetlabels.com domain and website.
Complainant failed to prove that registrant registered and used the domain at issue in bad faith. Complainant did not challenge and thus tacitly agreed with Respondent that Respondent registered <cutsheetlabels.com> in June 2010 in good faith because it was done without knowledge of Complainant and prior to the Complainant obtaining its 2012 and 2016 registrations asserted in the Amended Complaint. Complainant’s recitation of its stylized registration in the June 1, 2016 cease and desist letter to Respondent, which is six years after Respondent registered the domain, does not change Respondent’s good faith in registering generic/descriptive terms into bad faith.
When one chooses generic/descriptive words as its mark and thus disclaims exclusive right to use those exact words, such as Complainant did here, it has no right to complain that such generic/descriptive terms, when searched online, will bring up other competitors, including Respondent, who legitimately offer the same products.
Complainant has rights in the SHEET LABELS and SHEETLABELS.COM marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered and uses the at-issue domain name to support a bona fide online business which began operations prior to the instant dispute.
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.
Complainant has rights in a mark that is confusingly similar to the at-issue domain name.
By virtue of several relevant registrations with the USPTO, Complainant shows that it currently has rights in SHEET LABELS and SHEETLABELS.COM. It is well settled that a complainant may establish rights in a mark by registering such mark with a trademark authority, such as the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Further, the at-issue domain name incorporates Complainant’s SHEET LABELS trademark, less its space, prefaced by the generic term “cut” and with generic top-level domain “.com” appended to the resulting string. Complainant’s SHEETLABELS.COM mark is fully contained in Respondent’s domain name and prefaced by the term “cut.” The slight differences between Respondent’s domain name and Complainant’s trademarks are insufficent to distinguish one from the other with regard to Policy 4 (a)(i). Therefore, the Panel finds that Respondent’s <cutsheetlabels.com> domain name is confusingly similar to both Complainant’s SHEET LABELS and SHEETLABELS.COM trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)).
Complainant fails to conclusively show that Respondent lacks rights and interests in respect of the domain name.
Complainant must first make out 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, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <cutsheetlabels.com> domain name. WHOIS information identifies Respondent as “Andy Harnett” a name dissimilar to the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Furthermore, Respondent is not authorized to use any of Complainant’s marks. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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). Given the foregoing, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Respondent claims that the terms in the <cutsheetlabels.com> domain name are common and descriptive terms and therefore Complainant does not have an exclusive monopoly on such terms notwithstanding Complainant’s trademark registrations. Respondent contends that the domain name relates to and describes the products it offers online via the website linked to the <cutsheetlabels.com> domain name.
Policy 4(c)(i) states:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
Respondent has operated its online business via the at-issue domain name <cutsheetlabels.com> well in advance of any notification to Respondent of the current dispute between the parties. While Complainant, in essence, argues that using the trademark of another in a domain name negates the possibility of finding that the entity connected to the domain name might qualify as using the domain name for a “bona fide offering of goods or services” for the purposes of Paragraph 4 (c)(i), such is not the case here where the domain name and the relevant trademarks are not identical and the domain name is descriptive of the products offered by Respondent. Complainant’s suggestion that Respondent intended to, and does, use the domain name primarily to divert customers from Complainant to Respondent thus seems misplaced. Rather, Respondent demonstrates that it used the <cutsheetlabels.com> in furtherance of an active cut sheet labels business. The at-issue domain name in fact describes the particular goods sold at its referenced website. It thus appears not only plausible but probable that Respondent registered and used the <cutsheetlabels.com> domain name for its descriptive value rather than to misappropriate any goodwill associated with Complainant’s trademarks. Since the Panel finds that circumstances exist that are congruent with those recited in Paragraph 4 (c)(i) of the Policy, Respondent thereby demonstrates its rights and/or legitimate interest in the <cutsheetlabels.com> domain. Therefore, Complainant fails to meet its ultimate burden regarding Respondent’s lack of rights or legitimates interests pursuant to Policy ¶ 4(a)(ii). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name); see also, Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
Since as discussed above Respondent has rights or legitimate interests in the at-issue domain name, Respondent could not have registered or used the <cutsheetlabels.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cutsheetlabels.com> domain name REMAIN WITH Respondent.
Honorable Carolyn M. Johnson (Ret.),
David A. Einhorn and Paul M. DeCicco, Panelists.
Paul M. DeCicco, Chair
Dated: January 4, 2017
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