Kaz, Inc. v. Turfcare of Nashville
Claim Number: FA0512000608686
PARTIES
Complainant is Kaz, Inc. (“Complainant”), represented by Karin Segall, of Darby & Darby P.C., 805 Third Avenue, New York, NY 10022. Respondent is Turfcare of Nashville (“Respondent”), represented by Douglas W. Schelling, of Wyatt, Tarrant & Combs, LLP, 2525 West End Avenue, Suite 1500, Nashville, TN 37203.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nosquito.net>, registered with Network Solutions, 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.
Jeffrey H. Kaufman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2005.
On December 14, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <nosquito.net> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2006 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@nosquito.net by e-mail.
A timely Response was received and determined to be complete on January 9, 2006.
Complainant timely submitted an Additional Submission on January 17, 2006. Respondent filed a timely Additional Submission on January 23, 2006.
On
January 18,
2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey H. Kaufman as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Allegations in the Complaint
Complainant, Kaz, Inc., is a New York corporation with its headquarters in New York, New York. Kaz, Inc. manufactures products under various brand names, including NOSQUITO. Kaz, Inc.’s products are sold at retailers across the country, including Babies “R” Us, Best Buy, Home Depot, K-Mart, Target and Wal-Mart.
Kaz, Inc. uses its NOSQUITO trademark on various insect repellant products, including electrical devices. Kaz, Inc. owns the following U.S. trademark registrations:
|
Mark |
Reg. No. |
Filing Date |
Filing Basis |
Reg. Date |
Date of First Use in
Commerce |
Goods |
|
NOSQUITO |
2920350 |
December 16, 2002 |
Sec. 1(a) |
January 25, 2005 |
November 10, 1999 |
Insect repellants |
|
NOSQUITO |
2909058 |
June 11, 2002 |
Originally Sec. 1(b)
converted to 1(a) |
December 7, 2004 |
January 2003 |
Chemical luring products,
namely pheromone – based attractants |
|
NOSQUITO |
2882244 |
October 1, 2001 |
Originally Sec. 1(b)
converted to 1(a) |
September 7, 2004 |
February 2004 |
Electronic device to kill
mosquitoes |
Complainant also owns an International Registration No. 820,305, designating the countries France, Italy, Portugal and Spain in Classes 5 and 9.
Complainant also owns the <nosquito.com> domain name, which it registered on February 9, 2000.
Complainant first became aware of Respondent around September 2004, when it was alerted to an application to register the NOSQUITO AUTOMATIC MISTING SYSTEMS mark with the USPTO, Serial Number 78/440,289, for insecticides. The application was filed by Patrick McKennon, Respondent’s administrative contact.
On September 10, 2004, Complainant sent a letter to Mr. McKennon informing him of Complainant’s trademark rights and demanding that he withdraw his trademark application and ceases all use of the NOSQUITO mark. Mr. McKennon never responded to Complainant’s letter. As Respondent’s agent, Mr. McKennon’s knowledge of Complainant’s trademark rights can be imparted to Respondent.
On October 9, 2004, Respondent activated its website.
On October 19, 2004, Mr. McKennon’s attorney filed a letter of express abandonment of the trademark application with the USPTO. The application was declared abandoned on February 7, 2005.
On March 22 and May 13, 2005, Complainant sent follow-up letters to Mr. McKennon requesting his assurance, in writing, that he had ceased all use of the NOSQUITO mark and any other confusingly similar mark. No response was received.
Complainant first became aware of Respondent’s website in October 2005. On October 11, Complainant sent Mr. McKennon a follow-up letter demanding that he relinquish the domain name.
On its website at <nosquito.net>, Respondent provides information on an insect repellant system called NoSquito which is not manufactured by, endorsed by, sponsored by, authorized by, or affiliated with Complainant. The website prominently displays the NOSQUITO mark.
Complainant alleges that Respondent
registered and is using the <nosquito.net> domain name to
intercept web traffic intended for Complainant and to redirect that traffic for
Respondent’s monetary gain. Complainant
contends that this is prima facie evidence of bad faith according to
ICANN Policy 4(b)(iii) and (iv).
Complainant alleges that by activating and continuing to operate the website for commercial gain at <nosquito.net> despite repeated notice of Complainant’s prior rights in the mark, and after Mr. McKennon’s abandonment of his application, Respondent acquired the domain name in bad faith for the purpose of trading upon the goodwill associated with Complainant’s NOSQUITO trademark.
Complainant alleges that Respondent is creating a likelihood of confusion with the NOSQUITO trademark, by causing web users who seek information about Complainant’s NOSQUITO-branded products to be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and goods.
Complainant also alleges that Respondent continues to own and use the domain name without having any rights or legitimate interests in the said domain name.
Complainant alleges that:
a. the infringing domain name is identical or confusingly similar to Complainant’s trademark;
b. Respondent has no rights or legitimate interest in respect of the infringing domain name; and
c. The infringing domain name has been registered and is being used in bad faith.
B. Respondent’s Allegations in the Response
The <nosquito.net> domain name is identical to the NOSQUITO trademark in which Complainant had rights as of the time of filing the Complaint. However, Complainant provided no evidence of any rights in the NOSQUITO mark at the time the domain name was registered by Respondent. Complainant has noted three U.S. trademark registrations for NOSQUITO, for which registrations issued after Respondent’s registration of the domain name. Complainant has not produced evidence of common law rights before the domain name was registered, such that Complainant has used the mark in connection with goods or services so as to have acquired a reputation such that members of the public would associate those goods or services with Complainant and not with others not authorized by Complainant to use the marks. Secondary meaning may be established by demonstrating that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services. Relevant factors include advertising expenditures, consumer surveys, unsolicited media coverage, sales success, attempts to plagiarize the mark, and length and exclusivity of the mark’s use.
Although Complainant filed its U.S. registration applications in late 2001 and 2002, mere pending applications at the time of Respondent’s registration of the domain name, do not give rise to trademark rights. Thus, Complainant has provided no evidence of any trademark rights at the time of registration of the domain name by Respondent.
The burden of proving absence of Respondent’s rights or legitimate interests in a domain name rests with Complainant, in that a prima facie case must be presented. Respondent contends that Complainant has failed to meet its burden in proving that Respondent lacks rights and legitimate interests. Specifically, Complainant, by providing only a conclusory statement, fails to articulate the specific facts and circumstances necessary to support an allegation that Respondent has no rights or legitimate interests in the domain name.
Respondent should be considered as having rights or legitimate interests in respect of the domain name because:
(1) before any notice of the dispute, Respondent made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; and
(2) Respondent has been commonly known by the domain name.
Respondent registered the domain name on March 21, 2004. Several weeks thereafter, on April 15, 2004, Respondent registered a Tennessee Corporation under the name Nosquito Automatic Misting Systems, LLC. On June 1, 2004, Respondent obtained a Tennessee trademark registration for the NOSQUITO AUTOMATIC MISTING SYSTEMS mark for “mosquito and other flying insect control applied through misting systems.” Respondent was unaware of Complainant’s use of NOSQUITO at the time of these three events. Respondent attached an affidavit of Patrick McKennon as proof of Respondent’s knowledge.
At least as early as April 22, 2004, automatic misting systems services were provided under the name Nosquito Automatic Misting Systems. Respondent provided a copy of a redacted bill for services performed and the affidavit of Patrick McKennon. Respondent used a vehicle labeled Nosquito Automatic Misting Systems when providing such services. Respondent provided a printout, dated October 9, 2004, of a page from Respondent’s website showing a photo of the vehicle. Respondent also submitted copies of advertising contracts, together with examples of advertising from July 2004 until September 2005.
By the time Respondent received Complainant’s letter dated October 11, 2005, Respondent had already been using the domain name since October 9, 2004. Respondent provided a printout of its website dated October 9, 2004 showing the name Nosquito Automatic Misting Systems, LLC, described as a system for protection from mosquitoes, and bearing the notice “copyright 2004-Nosquito Automatic Misting Systems.” Thus, the Panel should conclude that before any notice to Respondent of the dispute, Respondent had made use of and had made 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 should also be considered as having rights or legitimates interests in respect of the domain name because Respondent has been commonly known by the domain name. As stated above, Respondent registered as a Tennessee Corporation on April 15, 2004, and obtained a Tennessee trademark registration on June 1, 2004. Respondent billed customers for services rendered by Nosquito Automatic Misting Systems at least as early as April 22, 2004, and Respondent used a vehicle labeled with its business name. Respondent also spent at least $20,000 in advertising.
Respondent has proved that it has rights and legitimate interests in the <nosquito.net> domain name under Paragraph 4(c)(i) and 4(c)(ii) of the Policy.
The domain name should not be considered as having been registered and used in bad faith. Respondent registered the domain name primarily for the purpose of use in connection with its bona fide offering of services. The domain name has not been offered for sale. Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, or location, or of a product or service on Respondent’s location.
Respondent uses the domain name for sending emails. At the time Respondent registered the domain name, Respondent was unaware of Complainant’s use of the term NOSQUITO. See Affidavit of Patrick McKennon. Respondent also had no constructive knowledge of Complainant’s use of NOSQUITO at the time of registration of the domain name, because Complainant’s trademark registrations had not issued. Also, even though Complainant had registered the <nosquito.com> domain name, Complainant never activated the website.
Further, Complainant provided no evidence of any common law marks at the time of Respondent’s registration of the domain name.
Respondent’s continuing use of <nosquito.net> after receipt of Complainant’s cease and desist letters does not constitute registration in bad faith.
Finally, Complainant provided no evidence of actual confusion.
C. Complainant’s Allegations in its Additional Submission
Complainant asserts that its common law rights in the NOSQUITO mark are established through the filing of statements of use in connection with its trademark applications. Complainant’s use-based application, Serial Number 76/476,644 was filed on December 16, 2002. The application included a verified statement of Kaz, Inc.’s predecessor, certifying first use of the mark in commerce on November 10, 1999. Therefore, although the registration itself did not issue until after Respondent’s registration of the domain name, Complainant’s application and registration sufficiently establishes Complainant’s common law rights preceding Respondent’s registration of the domain name.
Complainant asserts that its application Serial Number 76/474,644 was not abandoned at the time Respondent registered the domain name, because the USPTO did not declare the application abandoned until approximately two months after Respondent registered the domain name. In any event, the application was revived and the actual use claimed in the application was not negated.
Complainant asserts that prior to Respondent’s activation of the domain name, Complainant filed two Statements of Use in connection with its two other registered marks. These Statements of Use provide further evidence of Complainant’s common law rights prior to Respondent’s registration of the domain name.
In response to Respondent’s assertion of good faith registration, Complainant asserts that the facts and circumstances lead to the inescapable conclusion that Respondent must have had knowledge of Complainant. In the affidavit attached to the Response, Mr. McKennon testified under oath that he was “unaware of Complainant’s use of the term NOSQUITO” at the time he registered the infringing domain name. Mr. McKennon did not testify under oath that he did not know of Complainant or that he did not know that the <nosquito.com> domain name was registered. Accordingly, any argument by Respondent’s counsel as to Respondent’s lack of knowledge of Complainant, or Complainant’s domain name, is unsupported by the underlying evidence and not credible under the circumstances.
In particular Respondent offered no explanation for its choice of the “.net” TLD, in light of the fact that the more desirable “.com” domain name was already registered. Companies commonly register a “.net” domain name when the “.com” version is already taken. Therefore, Respondent’s registration of the domain name was undertaken in bad faith.
Complainant asserts that Respondent could not have become commonly known by a name incorporating the NOSQUITO mark until months after it registered the domain name. Respondent may not rely upon this after-the-fact evidence in order to turn its bad faith registration into a right or legitimate interest in the domain name.
Respondent incorrectly asserts that it first received notice of this dispute on October 11, 2005. In fact, Respondent first received notice of this dispute in September 2004, one month before Respondent activated the domain name. Respondent’s preparations to use the domain name after receiving notice of the dispute, and continuing use since then, violate ICANN Policy Para. 4(c)(i). Respondent’s use of the domain name to sell goods and services (automatic insecticide misting systems) that are confusingly similar to Complainant’s goods (electric and chemical insect repellants) after having received notice from Complainant is evidence of Respondent’s violation of ICANN Policy Para. 4(b)(iv), namely that Respondent intentionally attempts to attract internet users to its site for commercial gain, by creating a likelihood of confusion.
D. Respondent’s Allegations in its Additional Submission
Respondent had, before any notice of the dispute, made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. This demonstrates Respondent’s rights to a legitimate interest in the domain name. Some examples of Respondent’s use and preparations to use the domain name before any notice of the dispute include:
(1) the April 22, 2004 redacted bill displaying the domain name;
(2) the July 29, 2004 and August 5, 2004 advertisement displaying the domain name;
(3) the July, August and September 2004 advertising expenses described in Respondent’s Affidavit; and
(4) the July 20, 2004, August 12, 2004 and September 2, 2004 invoices for advertising.
Additional evidence was provided in Respondent’s Response.
Complainant is not a competitor and Respondent’s goods and services are not confusingly similar to those offered by Complainant. Respondent professionally installs permanent, automated systems on personal property. Such goods and services are not confusingly similar to Complainant’s “electronic device to kill mosquitoes,” “pheromone-based attractants,” and “insect repellants.”
Respondent was unaware of Complainant’s use of the term NOSQUITO at the time it registered the domain name. Respondent had no notice of Complainant through the <nosquito.com> domain name because that domain name was not, and is still not, in use for an active website. Respondent also had no constructive notice of Complainant’s marks. In addition, the statements of use for Complainant’s application numbers 76/319,958 and 76/419,473 had not been filed at the time Respondent registered the domain name, and application number 76/476,644 had not been revived from abandonment.
Thus, Complainant has not proven that:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interest in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Because Complainant has failed to prove all of the required elements, Respondent respectively requests that Complainant’s request to transfer the domain name be denied.
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.
From the parties’ submissions, the Panel finds the following salient facts:
|
November 10, 1999 |
Complainant’s predecessor’s first use in commerce of NOSQUITO for “insect repellants”, as indicated in Complainant’s U.S. federal trademark registration No. 2,920,350. |
|
February 9, 2000 |
Complainant registered the <nosquito.com> domain name. No evidence of use of the domain name has been provided. |
|
October 1, 2001 |
Intent-to-use application filed for Complainant’s NOSQUITO mark for “electronic device to kill mosquitoes”, later registered as Reg. No. 2,882,244. |
|
June 11, 2002 |
Intent-to-use application filed for Complainant’s NOSQUITO mark for “chemical luring products, namely pheromone-based attractants,” later registered as Reg. No. 2,909,058. |
|
December 16, 2002 |
Use-based application filed for Complainant’s NOSQUITO mark, later registered as Reg. No. 2,920,350. |
|
January 2003 |
First use in commerce of NOSQUITO for “chemical luring products, namely pheromone-based attractants,” as indicated in Complainant’s registration Reg. No. 2,909,058. |
|
February 2004 |
First use in commerce of NOSQUITO for “electronic device to kill mosquitoes,” as indicated in Complainant’s registration Reg. No. 2,882,244. |
|
March 21, 2004 |
The status of Complainant’s federal trademark applications at this time are as follows: - the application later assigned Reg. No. 2,920,350: a timely response to the Office Action dated July 21, 2003 had not been received; the Petition to Revive received by the USPTO on March 1, 2004 may, or may not, have been reflected in the TARR database; the application was subsequently deemed abandoned on May 10, 2004 and revived on July 28, 2004. - the application later assigned Reg. No. 2,909,058: a Statement of Use had not yet been filed. - the application later assigned Reg. No. 2,882,244: a Statement of Use had not yet been filed. |
|
March 21, 2004 |
Respondent registered
<nosquito.net>. |
|
April 15, 2004 |
Respondent registered a Tennessee Corporation under the name Nosquito Automatic Misting Systems, LLC. |
|
April 22, 2004 |
Respondent provided services under the name Nosquito Automatic Misting Systems. Respondent provided a redacted bill for services performed and Affidavit testimony of Patrick McKennon. Respondent used a vehicle labeled Nosquito Automatic Misting Systems when providing such services. |
|
June 1, 2004 |
Respondent obtained a Tennessee trademark registration for the NOSQUITO AUTOMATIC MISTING SYSTEMS mark for “mosquito and other flying insect control applied to misting systems.” |
|
June 23, 2004 |
Patrick McKennon filed a federal trademark application to register NOSQUITO AUTOMATIC MISTING SYSTEMS, Serial No. 78/440,289, for “installation, maintenance and repair of automated insecticide dispensing systems,” claiming a first use date of May 1, 2004. |
|
July – September, 2004 |
Respondent paid for advertisements of its business. |
|
September 2004 |
Complainant first became aware of Respondent (but not of Respondent’s website), when it was alerted to application Serial No. 78/440,289. The application was filed by Patrick McKennon, Respondent’s administrative contact. |
|
September 10, 2004 |
Complainant sent a letter to Mr. McKennon informing him of Complainant’s trademark rights and demanding that he withdraw his trademark application and cease all use of the NOSQUITO mark. Mr. McKennon’s knowledge of Complainant’s letter can be imparted to Respondent. Mr. McKennon never responded to Complainant’s letter. |
|
October 9, 2004 |
Respondent’s website was active on this date, showing information on its business. |
|
October 19, 2004 |
Mr. McKennon filed a letter of express abandonment of his trademark application with the USPTO. |
|
February 7, 2005 |
Mr. McKennon’s application was declared abandoned. |
|
March 22 and May 13, 2005 |
Complainant sent follow-up letters to Mr. McKennon requesting his assurance, in writing, that he had ceased all use of the NOSQUITO mark and any other confusingly similar mark. No response was received. |
|
October 2005 |
Complainant first became aware of Respondent’s website. |
|
October 11, 2005 |
Complainant sent Mr. McKennon a follow-up letter demanding that he relinquish the domain name. |
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith:”
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel recognizes that Complainant owns federal trademark Registration No. 2,920,350, which indicates that the mark was first used in commerce on November 10, 1999. Moreover, the underlying use-based application was filed on December 16, 2002, prior to the date Respondent registered the disputed domain name. Additionally, Complainant is the owner of two other federal trademark registrations with first use dates that precede the date Respondent registered the disputed domain name. While these registrations evidence Complainant’s rights to its NOSQUITO trademark, the Panel finds Complainant has failed to establish that Respondent registered, and is using, the domain name in bad faith for the reasons set forth below.
The Panel is cognizant that the parties’ goods and services are closely related, and that under such circumstances, use of a domain name corresponding to the senior user’s mark is frequently found to be registration and use of the domain name in bad faith. See, e.g., Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001).
However, the determination of bad faith must be made on a case-by-case basis. In this case, Respondent submitted an Affidavit attesting to its lack of knowledge of Complainant’s use of its NOSQUITO mark at the time it registered the disputed domain name. Complainant did not provide any evidence of use of its mark prior to March 21, 2004 to indicate that Respondent had actual knowledge of Complainant’s rights to NOSQUITO.
Complainant asserted that the filing of the use-based application to register NOSQUITO by its predecessor-in-interest on December 16, 2002, indicated that a signed declaration of use was submitted to the Patent and Trademark Office, and that this constituted evidence of use of its mark. Even if a copy of the signed declaration had been provided to the Panel, this evidence is insufficient to show that Respondent knew of Complainant’s rights to its mark at the time the domain name was registered.
Complainant also does not have the benefit of relying upon statutory constructive notice of its mark because its three trademark applications were either pending or abandoned at the time Respondent registered the domain name.
The Panel also finds that the fact that Complainant registered the <nosquito.com> domain name in February 2000 does not evidence Respondent’s bad faith registration of the disputed domain name, <nosquito.net>, because no evidence of use of <nosquito.com> was provided. Although the Panel recognizes that the “.com” domain is generally more desirable than the “.net” equivalent, the Panel declines to conclude that Respondent’s selection of the “.net” domain name in this case was in bad faith. To the contrary, an extended period of non-use of a domain name for a website may be an indication of lack of interest in the domain name.
Complainant also asserted that its “products are sold worldwide and at most retailers across the country, including: Babies R Us, Best Buy, Home Depot, Kmart, Target, and Walmart.” This assertion does not specify that it applies specifically to goods bearing the NOSQUITO mark and does not indicate the exposure of Complainant’s mark at the time Respondent registered the domain name.
For these reasons, the Panel finds that Complainant has not established that Respondent registered, and is using, the domain name in bad faith. Because bad faith is a necessary requirement under the Policy, the Panel declines to address the remaining two elements.
DECISION
Having failed to establish an element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jeffrey H. Kaufman,
Panelist
Dated: February 1, 2006
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