Artisan Confections Company v. Swiss Connection, Inc.
Claim Number: FA0510000584879
PARTIES
Complainant is Artisan Confections Company (“Complainant”),
represented by Kathleen S. Herbert, of Setter Ollila LLC, 2060 Broadway
Suite 300, Boulder, CO 80302.
Respondent is Swiss Connection, Inc. (“Respondent”), 501 First
Street, Orlando, FL 32824.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <josephschmidt.com>,
registered with Enom, 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.
Carol M. Stoner, Esq.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on October 24, 2005; the National Arbitration
Forum received a hard copy of the Complaint on October 31, 2005.
On October 25, 2005, Enom, Inc. confirmed by e-mail to
the National Arbitration Forum that the <josephschmidt.com> domain
name is registered with Enom, Inc. and that the Respondent is the current
registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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 November 3, 2005, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of November 23, 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@josephschmidt.com by e-mail.
A timely Response was received and determined to be
complete on November 23, 2005.
Complainant submitted a timely additional submission
on November 28, 2005.
On November 2, 2005,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Carol M. Stoner,
Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Complainant contends that Respondents’ domain name
of <josephschmidt.com> is confusingly similar to Complainant’s
registered trademark of JOSEPH SCHMIDT
CONFECTIONS, in that omission of non-distinguishing word of “Confection” is
irrelevant, and that domain name is identical to Complainant’s common law mark
of Joseph Schmidt.
2. Complainant contends that it has established rights in the registered trademark JOSEPH SCHMIDT CONFECTIONS and common law JOSEPH SCHMIDT trademarks through long term, substantially continuous, and exclusive use of the marks in commerce in the U.S. since at least as early as November 1983 in connection with “candy, namely chocolate truffles and assorted chocolates.” Complainant’s U.S. trademark registration for JOSEPH SCHMIDT CONFECTIONS issued on July 18, 1989.
3. Complainant contends that Respondents had no rights
nor legitimate interest in respect of the domain name in that they have not
used the name in connection with a bona fide offering of goods or
services; and that the Respondent has never used the <josephschmidt.com>
domain name except to offer it for sale to Complainant and other third
parties for consideration in excess of its out-of-pocket expenses, contending
that said facts are evidence of bad faith.
4. Complainant contends that Respondent has no
legitimate right to use of name, even though Respondent, at one time, was a
vendor of Complainant.
5. Complainant further contends that Respondents’
knowing use of Complainant’s registered trademark, constitutes registration and use of the domain name in bad faith.
B. Respondent makes the following assertions
1. Respondent contends that it purchased products from
Joseph Schmidt Confections from September 3, 1991 until January 26, 1998 and
that the companies had a business relationship. Respondent acknowledges Complainant’s rights to the trademarked Joseph Schmidt Confections;
however, it claims, that as a distributor of Complainant, that it had
registered the domain name in good faith.
2. Respondent contends that said domain name was a
common name and that registration of the domain name was to promote
Complainant’s products.
3. Respondent further contends that registration of
the disputed domain name was done with the consent of Complainant at a time
when both parties were in a business relationship and that said registration
was not commenced in bad faith.
C. Additional Submissions
Pursuant to the declaration of Jeffery Smith and other
evidence Complainant contends that the level of orders and commitments made by
Complainant did not rise to the distributorship level, nor did it create a
business relationship with ongoing expectations. A more committed relationship
was contemplated in 1996, but did not come to fruition, due to termination of
the entire business relationship because of ongoing business problems.
FINDINGS
Complainant has established that the domain name <josephschmidt.com>,
which was registered by Respondent, is confusingly similar to the registered
trademark of Complainant; that Respondent has no rights nor legitimate
interests in the domain name; and that the domain name had been registered and
was being used in bad faith. As such,
the Panel finds that the relief requested by Complainant shall be granted; that
is, the domain name <josephschmidt.com> shall be transferred to
Complainant.
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.”
Respondent registered the disputed domain name on June
26, 1996, before the creation of the Policy.
The Panel finds that Respondent is still bound by UDRP. See Weber-Stephen Prod. Co. v. Armitage
Hardware, D2000-0187 (WIPO May 11, 2000) (“By virtue of its contract with
NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute
policy, and any changes made to that policy made by NSI in the future.”).
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:
(1) the domain name registered by the Respondent is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 asserts that the disputed domain name is
identical or confusingly similar to Complainant’s registered and common law
marks. Respondent states in its
response that, “The Respondent acknowledges the Complainant’s rights to the
Joseph Schmidt Confections trademark” and does not dispute that the names are
identical or confusingly similar.
The Panel rules that the <josephschmidt.com>
domain name is confusingly similar to Complainant’s JOSEPH SCHMIDT CONFECTIONS
mark because the only difference is the omission of the word “confections,”
which does not significantly distinguish the domain name from the mark. See Am. Eagle Outfitters, Inc. v. Admin,
FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark); Maple Leaf Sports &
Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding
that the domain name <leafs.org> is confusingly similar to the
Complainant’s marks, where the complainant holds many trademarks that contain
the term “LEAFS”).
Complainant offers its U.S. trademark registration for
the JOSEPH SCHMIDT CONFECTIONS mark to assert rights in the
mark. The Panel finds that Complainant has
established rights in the JOSEPH SCHMIDT CONFECTIONS mark pursuant to Policy
¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”); Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel was not persuaded by Respondent’s arguments
that the fact of their “business relationship” and joint marketing efforts
should empower it to the use of a domain name identical or confusingly similar
to the registered and common law trademarks of another. This proffered argument is unlike a
situation in which a distributor has a nationwide exclusive license to promote
a manufacturer’s products and a concomitant argument that use of the domain
name is part and parcel of the agreement. The facts at hand do not support this
argument. Namely, Complainant states that it has, at any one time, 1000-2000
vendors like Respondent.
Thus, the Panel finds that a distributorship
relationship would not empower Respondent to appropriate Complainant’s mark in
a domain name registration. See Procter
& Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002)
(“Respondent, merely a distributor of PUR brand products, has no authorization
to use the PUR mark for any trademark purpose, such as the use in the domain
name.”); Carlon Meter Co. v. Jerman, D2002-0553 (WIPO July 30, 2002)
(“Respondent may well be an important distributor of Complainant's products,
but its’ right to use the trademarks of Complainant do not necessarily extend
to a right to use the globally extensive domain name system by incorporating
these trademarks in the domain names in a manner which links them to
Respondent's web site.”).
The Panel further finds that there is nothing in the
record, including the WHOIS registration information, which indicates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the Respondent does not have rights in a domain
name when the Respondent is not known by the mark).
Respondent has posted an invitation for an offer to
sell the domain name registration. The
Panel finds that appropriating Complainant’s mark to invite offers to sell the
domain name registration is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(i). See CBS
Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000)
(“There is nothing inherently wrongful in the offer or sale of domain names,
without more, such as to justify a finding of bad faith under the Policy.
However, the fact that domain name registrants may legitimately and in good
faith sell domain names does not imply a right in such registrants to sell
domain names that are identical or confusingly similar to trademarks or service
marks of others without their consent”); Am. Anti-Vivisection Soc’y v.“Infa dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”).
Additionally, Complainant alleges that Respondent
offered to sell the domain name to Complainant for greater than $5,000.
The Panel finds that this offer is in excess of out-of-pocket costs and,
therefore, is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See
Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner."); Neiman Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the Respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)).
The Panel also finds that Respondent’s former status
as Complainant’s distributor implies that Respondent has specifically targeted
Complainant by abusing the domain name registration process. See Associated Materials, Inc v. Perma
Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the
respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD
mark, inferred from the fact that the respondent was a distributor of the
complainant, along with the Respondent being on notice of its own lack of
rights evidenced that the domain name was registered in bad faith); Stanley
Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2,
2002) (finding that the Respondent, through the use of the Complainant’s mark
to redirect Internet users to a website selling the complainant’s product,
placed itself without the Complainant’s consent in a preferred position with
respect to other distributors, which caused consumer confusion and evidenced
bad faith registration and use of the domain name).
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <josephschmidt.com>
domain name be TRANSFERRED from Respondent to Complainant.
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