Jelly Belly Candy Company, Inc. v. Rich
Schallmo
Claim Number: FA0511000593114
PARTIES
Complainant is Jelly Belly Candy
Company, Inc. (“Complainant”), represented by Nicolas S. Gold, of Law Offices of James R. Cypher, 405 14th Street, Suite 1607,
Oakland, CA 94612. Respondent is Rich Schallmo (“Respondent”), P.O. Box
130, Oswego, IL 60543.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportbeans.com>,
registered with Blue Razor Domains, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 7, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 5, 2005.
On December 5, 2005, Blue Razor Domains, Inc confirmed by e-mail to the
National Arbitration Forum that the <sportbeans.com>
domain name is registered with Blue Razor Domains, Inc and that the Respondent
is the current registrant of the name. Blue
Razor Domains, Inc has verified that Respondent is bound by the Blue Razor
Domains, 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 December 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of December
29, 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@sportbeans.com by e-mail.
A timely Response was received and determined to be complete on December
29, 2005.
On January 4, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. Meyerson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant manufactures SPORT BEANS, a jelly bean intended to energize
the body during exercise. The first
print advertisements for SPORT BEANS ran in August 2005, although Complainant
issued a press release regarding the product in May 2005 and began to
distribute samples of the product at that time. Complainant filed an application on May 13, 2005 to register the
mark SPORT BEANS. Complainant contends
that Respondent is using the domain name solely for the purpose of directing
Internet traffic to another domain, <superiorbargains.com>, which is a
commercial site, offering for sale a variety of goods and services. Thus, Complainant contends that Respondent
is not using the disputed domain name in connection with a bona fide
offering of goods or services.
Complainant contends that Respondent registered the domain name in order
to benefit from Complainant’s investment in, and promotion of, Complainant’s
new SPORT BEANS product.
B. Respondent
Respondent states that he has used the name SPORT BEANS over the past
several years to describe his children and their sporting activities. He states that his children are active in
sporting events of all kinds and that the term SPORT BEANS therefore
appropriately describes them.
Respondent states that there can be no confusion between his use of the
term SPORT BEANS and Complainant’s mark or product. Respondent registered the domain name on June 16, 2005.
FINDINGS
Complainant filed on May 13, 2005
an application on the basis of intent-to-use with the United States Patent and
Trademark Office (“USPTO”) for the SPORT BEANS mark (Ser. No. 78/630,111). Respondent
registered the domain name on June 16, 2005.
Respondent’s site resolves to
another site, <superiorbargains.com>,
registered by a proxy, which offers a variety of goods and services for
sale. This site makes no reference to
Respondent, his children, or their sporting activities.
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:
(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.
The record indicates that on May 13, 2005, Complainant filed an application on the basis of intent-to-use with the United States Patent and Trademark Office (“USPTO”) for the SPORT BEANS mark (Ser. No. 78/630,111). The Complainant’s intent-to-use application confers rights on Complainant for the SPORT BEANS mark for purposes of Policy ¶ 4(a)(i). See Phone-N-Phone Serv. (Bermuda) Ltd. v. Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the complainant’s intent-to-use application bestowed rights in the PHONE-N-PHONE mark).
Complainant is correct that the <sportbeans.com> domain name is identical to Complainant’s SPORT
BEANS mark because the domain name
incorporates Complainant’s mark in its entirety, with the only difference being
the addition of the generic top-level domain “.com.” Such a minor alteration to Complainant’s registered mark is
insufficient to negate the identical aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that the <bodybyvictoria.com> domain name is identical to
the complainant’s BODY BY VICTORIA mark).
Once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent asserts that he has a legitimate interest in using the domain name because it describes his children and their sports activities. But the domain name resolves to another site, <superiorbargains.com>, registered by DomainsbyProxy, Inc., which is a commercial site offering for sale jewelry, domain names, art, automotive parts, books, clothing, computers, and other products. No mention of Respondent’s children or their sporting activities is made on this site.
Thus, Complainant is correct that Respondent is using the <sportbeans.com> domain name to redirect Internet users to a commercial website that offers for sale goods and services unrelated to Complainant’s business and unrelated to any purported use by Respondent for the purpose of portraying his children’s sporting activities. Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).
Finally, the Panel finds that Respondent is using a domain name that is identical to Complainant’s mark to attract Internet users to a website for commercial gain by creating a likelihood of confusion with Complainant’s mark and that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked <drmath.com>, which contains the complainant’s DR. MATH mark, to a website run by the respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website).
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 <sportbeans.com>
domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 16, 2006
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