Orange Glo International, Inc. v.
SeriousNet, Inc.
Claim Number: FA0412000391316
PARTIES
Complainant
is Orange Glo International, Inc. (“Complainant”)
represented by Michael K. Hendershot of Goldberg, Kohn, Bell, Black, Rosenbloom & Moritz, Ltd., 55 East Monroe Street, Suite 3700,
Chicago, IL 60603. Respondent is SeriousNet, Inc. (“Respondent”) represented by Brett P. Wakino, of The Law Offices of
Brett P. Wakino, 4266 Atlantic Avenue, Long Beach, CA
90807.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <orangeglow.com>,
registered with Tucows 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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
23, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 27, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <orangeglow.com>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
January 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 24,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@orangeglow.com by e-mail.
A
timely Response was received and determined to be complete on January 24, 2005.
Complainant
timely filed an Additional Submission under date of January 28, 2005. Thereafter, Respondent filed an Additional
Submission dated February 2, 2005.
On January 27, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In its initial submission, Complainant contends, among other
things, that:
It
manufactures, distributes and sells household cleaning products, including a
cleaning and reconditioning preparation for wood and other hard surfaces
marketed under the trademark ORANGE GLO;
The
company has expended substantial time, money and other resources in developing
and marketing its ORANGE GLO brand product, and has, as a result, sold millions
of units of that product;
The
ORANGE GLO mark is a suggestive word-mark which is inherently distinctive, and
which has been in use since 1986 and has been registered with the United States
Patent and Trademark Office since 1997;
Respondent’s
disputed domain name is no more than a deliberate misspelling of Complainant’s
mark, which misspelling is confusingly similar to that mark;
Neither
Respondent nor any business or product offered by Respondent has ever been
commonly known by the subject domain name; and
In
October of 2004, legal counsel for Complainant addressed to Respondent
correspondence demanding transfer of the disputed domain name to Complainant,
and Respondent has never answered that correspondence.
B.
Respondent
In
its initial submission, Respondent contends, among other things, that:
Respondent
is a California corporation in good standing which is in the business of
website development and marketing;
The
disputed domain name was validly registered in July of 2001;
At
the time of such registration, Respondent had no knowledge of Complainant’s
mark ORANGE GLO;
Although
there is a literal similarity between the subject domain name and Complainant’s
mark, that mark consists solely of two generic words;
Where
the competing mark is generic, the first party properly to register a domain
name based on the constituent words should be entitled to its use;
In
any event, registration and use of a generic domain name is fair use;
Moreover,
there is no evidence that Respondent established the subject domain name in
order to sell it to Complainant.
C.
Additional Submissions
In
its additional submission, Complainant contends, among other things, that:
As
of the date of filing of its Complaint in this proceeding, Respondent was not
using the subject domain name in any way related to either of the words
“orange” or “glow;” and
Instead,
Respondent’s website associated with the disputed domain name has been used to
refer Internet users to on-line gambling websites and to sites devoted to
automobile goods and services.
In
its additional submission, Respondent contends, among other things, that:
In
response to the cease-and-desist letter directed to it by Complainant,
Respondent immediately removed from its website associated with the subject
domain name all links to unrelated sites, and, in particular, all commercial
links.
FINDINGS
1.
The
disputed domain name is confusingly similar to a trademark in which Complainant
has rights;
2.
Respondent
has no rights or legitimate interests in respect of the subject domain name;
and
3.
Respondent
has registered and used the disputed domain name in bad faith.
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 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;
(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.
There
is no dispute that Complainant has long used and duly registered the trademark
ORANGE GLO. Respondent nonetheless
attempts to challenge the validity of Complainant’s mark by suggesting that it
is composed merely of two “generic” terms.
Respondent’s effort in this regard is unavailing. This is so, in the first instance, because
registration with the U.S. Patent and Trademark Office is prima facie evidence of validity of the mark, i.e.: that it is not
generic. See Owens Corning Fiberglas
Tech., Inc v. Hammerstone,
D2003-0903 (WIPO, Dec. 29, 2003). Moreover,
Respondent cannot successfully assert that the misspelled word “glo” is
generic. It is rather, standing alone,
inherently suggestive, and, taken together with its companion term “orange,”
both suggestive and descriptive.
Accordingly, ORANGE GLO enjoys a presumption of validity as a
protectable mark, and that presumption has not been rebutted by the proofs
submitted in this proceeding.
On the point
of comparison of Complainant’s mark with the challenged domain name, it must
first be observed that it is well established both that “essential” or
“virtual” identity between an established mark and a contending domain name is
sufficient to make out the proof required of Complainant under ¶4(a)(i)
of the Policy, and that, for this purpose, the suffix “.com” is of no
significance. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd.
v. Macesic, D2000-1698 (WIPO, Jan. 25, 2001), and cases cited therein.
In the instant
case, moreover, there is no phonetic difference between Complainant’s mark
ORANGE GLO and the substantive portion of the disputed domain name <orangeglow.com>. And, in part because this is true, the
single-letter spelling difference between the two is without material
impact. See, e.g., Deutsche Telekom AG v. Domainsforlife.com,
D2002-0164 (WIPO, May 21, 2002).
Accordingly, the disputed domain name is
both essentially identical and confusingly similar to Complainant’s mark within
the meaning of ¶4(a)(i).
There is no
evidence that Complainant has ever authorized Respondent to use the ORANGE GLO
name and mark or to include it in any domain name. Respondent might nonetheless establish that it has rights to or
legitimate interests in respect of the subject domain name, if, for example, it
could demonstrate the application of any of the three subparts of Policy ¶4(c).
As
to Policy ¶4(c)(i), Respondent’s domain name is confusingly similar to and
inherently misleading with respect to Complainant’s mark. Therefore, and because Respondent’s website
appears to have existed, until Complainant objected, solely for the purpose of
referring Internet users to other commercial sites, it cannot fairly be said
that Respondent has used the subject domain name in connection with a bona fide
offering of goods or services as contemplated in ¶4(c)(i).
With
regard to ¶4(c)(ii) of the Policy,
it is undisputed that Respondent has never been commonly known by the disputed
domain name within the meaning of that subsection.
Finally,
in connection with ¶4(c)(iii) of the Policy, Respondent admits that it is in the business of Internet
marketing, while its website associated with the subject domain name has for
years referred Internet users to commercial websites. From these facts, taken together with the inherently misleading
character of the confusingly similar domain name vis-à-vis Complainant’s mark,
Respondent cannot satisfy the requirements of ¶4(c)(iii) either as to fair use of the
domain name or from the perspective that Respondent’s intent in using that
domain name has been other than to divert Complainant’s customers for
Respondent’s commercial gain. See AT&T Corp. v. Zuccarini, D2002-0440
(WIPO, Aug. 28, 2002).
Therefore,
Complainant has made an adequate showing under Policy ¶4(a)(ii) that
Respondent has no rights to or interests in the subject domain name.
The essence of Complainant’s allegations
in this proceeding is that this is a case of “typo-squatting,” a situation in
which Respondent has, in creating and using its domain name, deliberately
slightly misspelled Complainant’s familiar mark in hopes of diverting to
Respondent’s website unsuspecting Internet users by anticipating their
inadvertent typographical errors in entering key words or URL’s in their web
browsers.
It has been said in this connection that
the question of bad faith is closely allied with the just-treated issue of
legitimate rights in the subject domain name.
See Youbet.com Inc. v. Grand Slam
Co., D2002-0711 (WIPO, Sept. 6, 2002). Thus Respondent’s bad faith is
demonstrated by the fact of its deliberate efforts to use a linguistic ruse to
attract Internet custom away from Complainant. Nothing more is required to be shown in order to satisfy the bad
faith proof requirements of Policy ¶4(a)(iii).
However, it should also be noted that,
because Complainant’s mark has been in use in commerce since 1986 and has been
registered with the U.S. Patent and Trademark Office since 1997, it is fair to
conclude that Respondent must have known of the existence of Complainant’s mark
when it registered the subject domain name in 2001. This, too, is evidence of Respondent’s bad faith registration and
use of that name. See. e.g., Repsol YPF, S.A. v. COMn.com,
D2001-0741, (WIPO, Aug. 23, 2001).
DECISION
Having
found all three elements required under the ICANN Policy, the Panel concludes
that relief must be GRANTED.
Accordingly,
it is Ordered that the <orangeglow.com> domain name be forthwith TRANSFERRED
from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 10, 2005
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