Labrada Bodybuilding Nutrition, Inc. v.
Mike Glisson
Claim Number: FA0403000250232
PARTIES
Complainant
is Labrada Bodybuilding Nutrition, Inc. (“Complainant”),
represented by James G. Munisteri, of Gardere Wynne Sewell, LLP,
1000 Louisiana Street, Suite 3400, Houston, TX 77002‑5007. Respondent is Mike Glisson (“Respondent”), represented by John M. Mueller, of Taft, Stettinius & Hollister LLP,
425 Walnut Street, Suite 1800, Cincinnati, OH 45208.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <carbwatchers.com>,
registered with Network Solutions, Inc.
PANEL
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.
Mr. Peter L. Michaelson, Esq., as
Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy then in effect (“Supplemental Rules”).
The
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on March 31, 2004; the Forum received a hard copy of
the Complaint, together with Exhibits A‑D, on April 5, 2004.
On
April 5, 2004, Network Solutions, Inc. ("NSI")
confirmed by e‑mail to the Forum that the domain name <carbwatchers.com> is registered
with NSI and that the Respondent is the current registrant of the name. NSI has verified that the Respondent is
bound by the NSI registration agreement and has thereby agreed to resolve
domain‑name disputes brought by third parties in accordance with the
Policy.
On
April 7, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 27,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to the Respondent via e‑mail, post and fax, to all entities
and persons listed on the Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@carbwatchers.com by e‑mail.
A
timely Response, together with Exhibit A, was received and determined to be
complete on April 26, 2004.
The Complainant filed a timely additional
submission, together with Exhibits A‑C, on May 3, 2004. The Respondent followed with a timely
additional submission, together with Exhibits B and C, on May 7,
2004. Both of these submissions have
been fully considered.
On May 17, 2004,
pursuant to the Complainant’s request to have the dispute decided by a single‑member
Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Panelist and set
a date of June 1, 2004 to receive the decision from the Panel.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing
similarity/identicality
The Complainant states that the disputed
domain name incorporates the Complainant’s mark “CARBWATCHERS".
Moreover,
the Complainant states that inclusion of the generic top level domain (gTLD),
here being ".com", into the domain name is such a minor addition that
it does not render that name sufficiently dissimilar to the Complainant's mark
as to preclude user confusion
Hence, the Complainant concludes that the
disputed domain name satisfies the requirements of paragraph 4(a)(i) of the
Policy.
2. Rights
and legitimate interests
The Complainant
contends that, for the following reasons, the Respondent has no rights or
legitimate interests in the disputed domain name.
First, the Complainant states that the
Respondent is using the disputed domain name to point to a generic web site
with little or no content.
Specifically, although the current version of the Respondent’s web site
promises future content, no material has been present on the web site since at
least December 2001. Given this, the
Respondent views that using a domain name
that corresponds to another’s trademark in order to direct consumers to
another’s web site, as it asserts the Respondent has done here, does not
constitute rights or a legitimate interest in a domain name. Specifically, the Complainant states:
"when an internet user types in 'carbwatchers.com' in hopes of
finding material related to Labrada’s low‑carbohydrate food products and
Labrada’s services for person’s interested in managing their dietary
carbohydrate intake, the user is instead brought to a generic web site
promising future content unrelated to Labrada." The Complainant has provided, in Exhibit C to the Complaint, a
hard copy of the page to which the disputed name resolves. The Complainant contends that the
Respondent's use of the disputed domain name in this fashion is not a
legitimate use.
Thus, under the Complainant's analysis,
the Respondent can not establish, under paragraph 4(c) of the Policy, any
rights to and legitimate interests in the disputed domain name.
3. Bad
faith use and registration
The
Complainant contends that the Respondent has registered and is using the
disputed domain name in bad faith, hence in violation of paragraph 4(b) of the
Policy.
First,
the Complainant contends that the Respondent could have learned of the
existence of the Complainant's federal trademark application for the mark
"CARBWATCHERS" at least as early as November 2001, when the
Complainant filed its first federal trademark application for that term. In that regard, the Complainant contends that
the Respondent had not yet made any use of the domain name <carbwatchers.com> as of November 2001. Moreover, the Complainant states that for at
least the subsequent two years, the Respondent has yet to make any use of the
domain name <carbwatchers.com>. The Complainant points to the Respondent as
having had actual knowledge of the Complainant's CARBWATCHERS Marks following
federal registration of the first such mark on December 30, 2003 and after
having been contacted by the Complainant regarding its rights in the
CARBWATCHERS Marks.
Hence, Complainant concludes that the
Respondent's actions in registering and using the disputed domain name is in
bad faith and contravenes paragraph 4(b) of the Policy.
B. Respondent
1. Confusing
similarity/identicality
The Respondent does not contest that the
disputed domain name is identical or confusingly similar to the Complainant's
CARBWATCHERS Marks. However, the
Respondent contests whether the Complainant, owing to its junior status in time
with respect to the Respondent's rights in the disputed domain name ‑‑
which is discussed in detail below, has any enforceable trademark rights in its
marks against the Respondent.
2. Rights
and legitimate interests
The Respondent contends that it has legitimate
rights and interests in the disputed domain name under paragraph 4(c) of the
Policy.
Specifically, the Respondent contends
that its rights in the disputed domain name are superior in time, i.e.,
earlier, to any trademark rights, which the Complainant has acquired in the
CARBWATCHERS Marks, hence negating any claim which the Complainant might have
to that name.
As to having legitimate rights and
interests, the Respondent points to having made actual use of the disputed
domain name in connection
with low carbohydrate diets and has not substantially altered that use since
September of 2000. This date is more
than one full year prior to the earliest date (the October 29, 2001 filing date
of the Complainant's first intent to use federal trademark application) for
which the Complainant can claim it has acquired federal trademark rights in its
CARBWATCHERS marks. Hence, the
Respondent contends that it is impossible for the Complainant to have any
rights in the disputed domain name that are superior in time to those of
Respondent.
3. Bad
faith
The Respondent
contends that it did not register and use the disputed domain name in bad faith.
First,
the Respondent contends that, regardless of whether it learned or could have
learned about the Complainant's CARBWATCHERS Marks as early as November 2001,
the Respondent registered and used the disputed domain name more than 2 1/2
years before the Complainant even filed its earliest federal trademark
application for its marks.
Second, as to intentional
diversion, the Respondent states that he has done nothing whatsoever to drive
the Complainant’s traffic to the Respondent's web site or to engender confusion
between itself and Complainant. The
Respondent points to the fact that he has not substantially altered his web
site since September 2000 and that the Respondent registered the disputed
domain name more than 2 1/2 years prior to the Complainant’s acquisition of any
trademark rights in the term "CARBWATCHERS". Given this, the Respondent contends that if
there is any confusion being caused in the relevant consuming public by the
Respondent’s use of the name <carbwatchers.com>
(as alleged by the Complainant), it is the Complainant, and not the
Respondent, who is responsible for such confusion. In that regard, the Respondent states: "[i]t is particularly
surprising that Complainant would make such an allegation given ... the fact
that Respondent’s registration and use of the <carbwatchers.com>
domain name was indisputably prior to Complainant’s acquisition of any rights
in any of its alleged CARBWATCHERS trademarks."
Third, as to resale of the disputed
domain name, the Respondent alleges that he did not register the name for the
purposes of resale, but instead registered it to develop his own web site with
content relevant to low‑carbohydrate diets and of interest to low‑carbohydrate
dieters. (See Affidavit of Mike
Glisson, a copy of which is supplied in Exhibit A to the Response). Furthermore, while the Respondent fully
acknowledges that he engaged in good faith negotiations with the Complainant
about potentially selling the disputed domain name to the Complainant, those
negotiations were initiated by the Complainant. In evaluating and eventually rejecting the Complainant’s offers
for the domain name, the Respondent fully considered the value he intends to
derive from the domain name under his original business plan. If anything, the Respondent’s rejection of
the Complainant’s offer of $10,000 is evidence of Respondent’s good faith
intent to lawfully and fairly use the disputed domain name, legitimately and
fairly in the marketplace.
4. Reverse Domain Name
Hijacking/Complainant's Bad Faith
The Respondent contends that
the Complainant's action in filing the Complaint constitutes reverse domain
name hijacking and hence an abuse of the Policy, and requests that the Panel so
find.
As to the Respondent's
contentions of the Complainant's bad faith, the Respondent first points to:
(a) the Complainant’s own
statement that it would use the UDRP proceeding to obtain the domain name from
Respondent if the Respondent did not agree to the Complainant’s purchase offers
(See Glisson Affidavit);
(b) the Complainant's filing
of an objectively baseless complaint;
(c) the Complainant’s attempt
to inconsistently argue that the Respondent is responsible for causing
confusion in the relevant consuming public while the Complainant simultaneously
filed federal trademark applications which, in their accompanying declarations
signed by the Complainant, affirmatively stated that the Complainant is unaware
of any such confusion or likelihood thereof; and
(d) the Complainant’s act of
filing an intent‑to‑use federal trademark application for the term
"CARBWATCHERS" specifically calculated to preclude the Respondent
from pursuing his legitimate business plan for the disputed domain name shortly
after the Respondent confided his plans to the Complainant.
C. Additional submissions
Both the Complainant and the Respondent
have each timely filed an additional submission. As indicated above, the Panel has fully considered both of these
submissions.
For
the most part, both of these submissions amplified allegations and
justifications, which each side has already raised in its initial
submission. For the sake of brevity,
the Panel will simply dispense with discussing either of these submissions in
any further detail.
FINDINGS
A copy of the
WhoIs registration record for the disputed domain name appears in
Exhibit D to the Complaint. This
record indicates that the Respondent registered that name on March 23,
1999. This registration date is at
least 2 1/2 years prior to the earliest date on which the Complainant can claim
to have begun acquiring its federal trademark rights in the term
"CARBWATCHERS". The latter
date is October 29, 2001, which is the filing date (constructive use date) of
the Complainant's earliest intent to use federal trademark application, now
federal registration 2,800,937.
A. Complainant’s CARBWATCHERS Marks
The Complainant currently owns two
federal trademark applications and one federal trademark registration for the
term "CARBWATCHERS", and has provided, in Exhibit B to the Complaint,
a copy of the pertinent record of each mark from the Trademark Electronic
Search System (TESS) which is provided by the US Patent and Trademark Office
(PTO) and is accessible through the Internet.
The pertinent details are as follows:
1. CARBWATCHERS
(block letter)
pending
application
serial
number: 78/340,847; filed: December 15, 2003 (use basis)
This mark was filed for use in connection
with: "bakery goods and products, biscuits, bread, bead [sic] sticks,
brownies, cakes and pies, cookies, Danish pastries, doughnuts, muffins, tarts,
waffles, wafers, breakfast cereals, oatmeal, food bars, snack foods, candy,
candied fruit snacks, candy coated popcorn, caramels, chocolate covered nuts,
chocolate, chocolate syrup, frozen confections, frozen yogurt, ice cream, ice
milk, puddings made from milk, beverages not being diary‑based or
vegetable‑based, hot chocolate and cocoa", all in international
class 30. This mark claims a first use
and first use in commerce date of August 1, 2003.
2. CARBWATCHERS
(block letter)
pending
application
serial
number: 78/338,851; filed: December 10, 2003 (intent to use basis)
This mark was filed for use in connection
with: "education services, namely, conducting classes, seminars,
conferences, workshops in the fields of diet, nutrition, and overall fitness,
and distributing course materials in connection therewith; development and
disseminations of education materials in the field of diet, nutrition and
overall fitness; arranging and conducting educational demonstrations in diet,
nutrition and overall fitness", all in international class 41.
3. CARBWATCHERS
(block letter)
registration:
2,800,937; registered: December 30, 2003
serial
number: 76/331,853; filed: October 29, 2001 (intent to use basis)
This mark was registered for use in
connection with: "nutritional supplements" in international
class 5. This mark claims a first
use and first use in commerce date of April 1, 2003.
B. Complainant's
and Respondent's Activities
The
Complainant's CARBWATCHERS‑branded chocolates, protein shakes and meal
replacement bars have been scientifically designed to provide good nutrition
and low net carbohydrates while providing convenience and value to the
Complainant's customers. The Complainant
is also developing CARBWATCHERS‑marked educational materials emphasizing
an overall healthy lifestyle by focusing on diet, nutrition, fitness and
exercise. The Complainant has
previously employed this business model with its "LEAN BODY" marks and
has been successful, becoming well known in the fitness and nutrition
industries. (See Affidavit of Kyle
Workman, a copy of which appears in Exhibit A to the Complainant's Additional
Submission). An integral part of the
Complainant's business model is its web site, <labrada.com>, to which the Complainant links additional
domain names identified by its various trademarks, including <leanbody.com>. Id. The Complainant's business model ties each
of its domain names, which incorporates one of the Complainant's marks, to the
section of the Complainant's home page that details the products and services
advertised under that particular mark.
The
Respondent registered the disputed name because, at that time of registration,
he had then recently successfully completed a low‑carbohydrate diet and
was very happy with the results of the diet.
Given that, the Respondent thought that it would be useful to develop a
web site that would provide others on low‑carbohydrate diets with
information concerning such diets as well as to provide a forum for discussing
the diet, food sources, concerns, issues, etc.
At the time, however, the Respondent was busy with other business
projects and therefore was unable to proceed much further with respect to
developing his proposed web site. (See
Glisson Affidavit). In February 2000,
the Respondent, with time available, then briefly launched a web site, which
provided some information about low carbohydrate diets in accordance with his
proposed business plan. However, the
Respondent subsequently encountered various time constraints, which prevented
him from further developing the web site as desired. Accordingly, the Respondent reluctantly removed that information
from his site but with the full intent of re‑launching the site later
when time allowed.
In early November 2003 and prior to the Respondent re‑launching
his full concept for the disputed domain name <carbwatchers.com>, the Respondent received a communication
from Complainant inquiring as to whether that name was available for
purchase. While Respondent had
generally not considered the possibility of selling the domain name prior to
being contacted by Complainant, the Respondent entered into sale negotiations
with the Complainant. The Complainant
asked the Respondent what plans the latter had for the name. The Respondent replied that he intended to
re‑establish and further develop a web site to disseminate information
about low‑carbohydrate diets as well as provide a forum for people who
were on or were contemplating undertaking such a diet. Presently, the disputed domain name points
to a generic web site that has little or no content. Though that site indicates that content will be forthcoming, the
Respondent had not substantially altered its web site since September of 2000.
On December 10 and 15, 2003, the Complainant filed two
federal trademark applications for registration of the term
"CARBWATCHERS" for goods which the Respondent claims he disclosed,
during those negotiations, to the Complainant and as part of the Respondent's
business plan.
Since November 2003, the Complainant and
the Respondent conferred on several occasions about a transfer or sale of the
disputed domain name to the Complainant culminating in the Respondent setting
$50,000 as the purchase price for the name.
When these negotiations
reached an impasse, on March 5, 2004, a representative of the Complainant told
the Respondent that the Respondent might as well accept the Complainant’s final
offer of $10,000 because “that is what it was going to cost [Complainant] to
get the domain name from [Respondent] using their lawyers and that
[Complainant] would rather give the money to [Respondent] than to
[Complainant’s] lawyers.” (See Glisson Affidavit). The Respondent heard nothing further from the Complainant until
the Respondent was served with the present Complaint.
The Respondent still intends to use the
disputed domain name, as originally planned, to provide a forum for those
interested in low‑carb diets.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(i) the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(ii) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the domain name has been registered and is being used in bad faith.
In view of the Panel's finding that the
Respondent did not register the disputed domain name in bad faith, the Panel
has no need to consider any issues raised under paragraphs 4(a) (i) and
(ii) of the Policy, and thus declines to do so.
The Panel finds that the Respondent did
not register the disputed domain name in bad faith.
Simply stated, in order for a domain name
to be registered in bad faith, a Complainant must possess valid trademark
rights, whether through an active registration or at common law, in that name
or one confusingly similar to it at the time the name is registered. However, if no such trademark rights exist,
as is the case here, then a Respondent registrant can register that name with
impunity relative to that Complainant as the Respondent simply has senior
rights in that name and the Complainant has no basis to question the
Respondent's registration by bringing a claim under the Policy. See Phoenix Mortgage Corp. v. Toggas, Case No. D2001‑0101 (WIPO March 30, 2001).
With respect to the instant dispute, the Respondent
registered the disputed domain name on March 23, 1999. Of the Complainant's three federal trademark
applications, the Complainant has only accrued federal trademark rights in two
of those trademarks as a result of having alleged use of its CARBWATCHERS mark
in each. Those applications are serial
numbers 78/340,847 and 76/331,853; the latter has been registered as US
registration 2,800,937. The '937
registration, having been applied on an intent‑to‑use basis, is
accorded, under the Lanham Act, its October 29, 2001 filing date as its
constructive use date. Of these two
marks, this date is the earliest date to which the Complainant can point as the
start of its having acquired federal trademark protection for its mark
CARBWATCHERS. This date follows by some
2 1/2 years the March 23, 1999 date on which the Respondent registered the
disputed domain name, that registration still subsisting.
Thus, the
Respondent, in the complete absence of any prior rights whatsoever then held by
the Complainant in its mark CARBWATCHERS, registered the disputed domain name
in good faith.
Given this
conclusion, there is no need for the Panel to consider any issues surrounding
bad faith usage; hence, the Panel declines to do so.
Consequently,
the Complainant has failed to meet its burden under paragraph 4(a)(iii) of the
Policy.
Reverse
Domain Name Hijacking/Abuse of the Administrative Process
The Complainant
opines "Labrada’s subsequent, legitimate application of the UDRP process
to prevent the unlawful use of a domain name that is confusingly similar to
Labrada’s trademarks cannot be evidence of bad faith." (Complainant's
Additional Submission at p. 5). While
the Complainant characterizes its actions in filing the Complainant as being
legitimate, this Panel disagrees.
It simply
defies reason, and strains credulity, to think that the Complainant did not
know, prior to filing its Complainant, that the Respondent had senior rights in
the disputed domain name vis‑à‑vis the Complainant's CARBWATCHERS
Marks. As previously discussed,
registration of the disputed domain name preceded, by 2 1/2 years, the earliest
date on which the Complainant started acquiring its federal trademark
rights. Specifically, the Respondent
registered the disputed domain name on March 23, 1999. Yet, the earliest date
which the Complainant is entitled as its first use date, i.e., the earliest
date, which it specifically claims that its federal trademark rights began is
October 29, 2001 ‑‑ some 2 1/2 years later.
The
Complainant, in identifying that the Respondent owned the disputed domain name
and obtaining the Respondent's contact information, had to have performed a
WhoIs search prior to having contacted the Respondent. Given that there was essentially no content
then posted to the Respondent's web site, there was simply no other method
other than having consulted NSI's WhoIs database to readily ascertain that
information. The registration record,
as evidenced by that search (a copy of which appears in Exhibit D to the
Complaint), plainly lists the March 23, 1999 registration date. The Complainant simply cannot feign
ignorance of that date let alone relative to its October 29, 2001 constructive
first use date, and, not surprisingly, made no such assertion.
Hence, prior to filing the Complaint, the
Complainant knew, based on irrefutable facts then known to it, or, at the very
least and under the specific facts here, should have known that the
Respondent's rights in the disputed domain name were then superior to the
Complainant's. Yet, in spite of this
knowledge, the Complainant persisted and intentionally filed its Complaint. Accordingly, the Complainant's intentions
are clear: use of the Policy as a tool to simply wrest the disputed domain name
in spite of its knowledge that the Complainant was not entitled to that name
and hence had no colorable claim under the Policy. See Aspen Grove,
Inc. v. Aspen Grove Case No. D2001‑0798 (WIPO October 5, 2001).
Therefore, the Panel finds that the
Complainant brought its Complaint in bad faith and in an attempt to commit
reverse domain name hijacking, and, as such, abused the ICANN administrative
process.
DECISION
The
Complainant has failed to establish all three elements required under the
Policy. Consequently, the relief sought
by the Complainant is hereby DENIED.
Moreover, in accordance with paragraph
15(e) of the Rules, the Panel finds that the Complainant brought its Complaint
in bad faith and in a specific attempt to commit reverse domain name hijacking,
thus constituting an abuse of the ICANN administrative process.
Peter L.
Michaelson, Esq., Panelist
Dated: May 28,
2004
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