Tower Laboratories Ltd. v. Eric Seltzer
Claim Number: FA0609000791325
PARTIES
Complainant is Tower Laboratories Ltd. (“Complainant”), represented by Kenneth Wexler, of Tower Laboratories Ltd., P.O. Box 306, 8 Industrial Park Road, Centerbrook, CT 06409. Respondent is Eric Seltzer (“Respondent”), 5194 Bolton Place, Newark, CA 94560.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bromoseltzer.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.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 5, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 8, 2006.
On September 11, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <bromoseltzer.com>
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 September 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 4, 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@bromoseltzer.com by e-mail.
A timely Response was received and determined to be complete on September
25, 2006.
On October 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
The domain name <bromoseltzer.com> is confusingly similar
to the trademark Bromo Seltzer.
The Bromo Seltzer trademark is
recognized by U.S. consumers for use with an antacid and pain reliever product
that has been commercially sold in the U.S. for more than 115 years.
The domain name in dispute, <bromoseltzer. com>, is not
similar to any other known product or entity, other than the Complainant’s
trademark. A prospective customer of the product Bromo Seltzer entering <bromoseltzer.com>
into the Yahoo.com search engine would find not only the Respondent’s
website but an advertisement by a retailer (<drugstore.com>) of the
Complainant’s trademark and product (by <drugstore.com>).
The Respondent should be considered as having no rights or legitimate
interests in respect of the domain name <bromoseltzer.com>. There
is no established relationship between the Respondent and the trademark Bromo Seltzer.
The trademark Bromo Seltzer
has a long and valuable commercial history. The business and trademark was
first put into first commercial use long before the Internet, in 1889, first by
the Emerson Drug Company (Baltimore, MD); later the business and trademark was
sold to Warner Lambert; and the business and trademark was in turn sold to
Numark Laboratories mid more recently the business and trademark was sold, in
2006, to the complainant Tower Laboratories Ltd.
The Respondent has not demonstrated any rights or legitimate interests
in these commercial transactions. Complainant concedes that the Respondent’s
last name is “Seltzer”, but that he nevertheless has no legitimate interest in
the trademark-related domain name <bromoseltzer.com>.
The USPTO also recognizes “seltzer” as a fairly common product name,
and in the trademark registration of Bromo
Seltzer “no claim is made to the exclusive right to use ‘seltzer’ apart
from the mark as shown”. The Complainant has no concerns about the existing
domain names <seltzer.com> and <ericseltzer.com>.
The domain name should be considered as having been registered and being used
in bad faith. Before any notice to the Respondent of the dispute, Respondent’s
use of the domain name was to display an image of a bottle containing Bromo
Seltzer antacid with the USPTO registration mark ® clearly evident, which is a
clear indication of the Respondent’s awareness of the Complainant’s trademark
and bad faith use of the Complainant’s trademark.
Soon after the Respondent was notified of the dispute (June 23, 2006),
this product image was replaced by the image of a child and the statement
“Upset Stomach." This misleading
image and statement also tarnishes the complainant’s trademark in that the
over-the-counter drug product, Bromo Seltzer, is specifically approved by the
FDA for ‘upset stomach” and has a specific warning to “Keep out of Reach of
Children”. This uncontrolled use by the Respondent of a domain name confusingly
similar to the trademark Bromo Seltzer,
with no care to the rules of drug product marketing, could potentially lead to
the unregulated use of the product by children.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
It is clear based upon the earlier use of the product image and the
current use of the statement “upset stomach” that the Respondent is aware of
the Complainant’s trademark, and has created a likelihood of confusion with the
Complainant’s trademark.
The Respondent’s commercial gain in use of the domain name, although
not revealed to the Complainant by the Respondent, may have been a memorable
way (based upon the wide awareness of the Complainant’s trademark), to increase
traffic to the Respondent’s commercial email address which appears to be
related to employment recruitment (“a_recruiter@hotmail.com”). The Respondent’s
email address link was found as the only active link on the domain name home
page. Eric Seltzer, the Respondent, is believed to have held the position of
senior recruiter for Redwood City-based Excite@Home. Since the Respondent was
notified of this pending complaint by the Complainant the Respondent has
removed his email link from the domain name home page.
B. Respondent
Respondent contends as follows:
Respondent admits that the at-issue the domain
name is identical or confusingly similar to a trademark or service mark that
the Complainant allegedly has rights.
Respondent has owned the domain name, <bromoseltzer.com>
since August of 1999 and has never sold any goods or services using the domain
name during that time. Respondent has never advertised goods or services for
sale and has never financially prospered from the at-issue domain name.
Respondent has never initiated contact with any
individual or company for the purpose of advertising or selling goods or
services, including the sale of the domain name.
I have never been commonly known by the domain
name as an individual, business or other organization.
Respondent’s surname is Seltzer. In 1999 he
decided to register the domain name <bromoseltzer.com>. The
“bromo” part of the domain name was a tribute to Respondent’s father’s
14-year-old Pomeranian, “Bromo,” who was born in 1990 and died last year. For 6
years after registration Respondent, did not “host” the site and did not have
any images or content on the web. In January of 2006, Respondent activated the
site in hopes of making a family website. The event was timed with a tribute to
“Bromo” on Respondent’s daughter’s second birthday.
Respondent believes that Bromo Seltzer was not
sold in the United States at the time he registered the domain name. He
believes that the reintroduction of the product seems to be a recent event,
sometime after 1999.
The use of the domain name was not “…a memorable way to increase traffic to the
Respondents commercial email address which appears to be related to employment
recruitment.” There was never any connection between Respondent’s employment
and the website. On average this page gets approximately 30 hits a month.
Respondent does not believe that “[a] prospective
customer of the product Bromo Seltzer entering <bromoseltzer.com>
into the Yahoo.com search engine would find not only the Respondents website
but an advertisement by a retailer...” Rather, a prospective customer would
type in “Bromo Seltzer” in the search field of Yahoo.com and they would find
Respondent’s site as the 47th result and on page five. Respondent has no
relationship with any of the advertisers that are shown when using Yahoo.
Respondent removed the vintage image of the Bromo
Seltzer bottle from the <bromoseltzer.com> website after the
complainant notified Respondent that he would be the subject of an arbitration
hearing regarding the domain name. Respondent replaced the image with a photo
of his 2-year-old daughter, Sydney. The assertion in the complaint that posting
an image of a child “could potentially lead to the unregulated use of the
product by children” seems to suggest unethical conduct rather than the posting
by a proud father of his daughter’s photo.
Respondent changed the contents of the website
twice after being contacted by Complainant in order to avoid a conflict concerning
this matter. When Respondent made these changes he was aware that the
domain-name issue would ultimately be resolved by arbitration. Respondent’s
changes to the <bromoseltzer.com> website were not made in bad
faith but rather as an attempt to placate Complainant.
During the time that Respondent has registered
the website he never acted in bad faith.
He has neither registered nor acquired the domain
name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to the Complainant. Respondent was not aware that
Complainant was the owner of the at-issue trademark until Complainant contacted
him on June 23, 2006.
FINDINGS
Complainant has trademark rights in the mark Bromo Seltzer and there were such
rights in the mark at the time Respondent registered the at-issue domain
name.
Respondent’s surname is “Seltzer.”
Respondent’s father’s dog was named “Bromo Seltzer.”
Respondent registered the name with knowledge
that another party may have rights in the mark Bromo Seltzer.
Respondent did not use the domain name for
any apparent commercial gain.
Websites referenced by the domain name
contained images related to the Complainant’s trademarked product.
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.
Respondent admits that the domain name is
identical or confusingly similar to the Complainant’s mark. Complainant has demonstrated that it has
rights in the Bromo Seltzer mark
by virtue of the mark’s continuous use in commerce since 1889. The Panel
further notes that the mark is well known and on further examination may be a
famous mark. The Complainant clearly has common law trademark rights in the
at-issue mark predating Respondent’s registration. See British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
Complainant must first make a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The threshold for such prima facie showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name.
Complainant alleges that although Respondent’s surname is “Seltzer” he nevertheless has no rights in the Bromo Seltzer mark. The domain name contains both Respondent’s surname and the first term of Complainant’s trademark. Furthermore, Respondent is admittedly not commonly known as “Bromo Seltzer.” Accordingly, Complainant has made the necessary preliminary showing that Respondent does not have rights or legitimate interests in the <bromoseltzer.com> domain name pursuant to Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004).
The Respondent has not used the domain name in connection with 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000). Respondent used the domain name in a cavalier manner to display pictures of the Complainant’s product and to display a picture of his daughter with an obvious indirect text reference to the Complainant’s product.
Although there is no indication that Respondent intended to profit from the use of the domain name, Respondent used the at-issue domain name in a manner that was not sanctioned or authorized by the Complainant. Some panels have held that it is reasonable to register a domain name based on a nickname. See Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000) (“It is reasonable for someone to register a domain name based on a nickname such as ‘Penguin,’ and it follows that the Respondent had legitimate interests in that name. It is not for this Administrative Panel to decide on whether such use would in any way infringe any intellectual property rights of the Complainant and this must be left to other fora.”); see also Jollibee Foods Corp. v. Chrystman, FA 95561 (Nat. Arb. Forum Oct. 31, 2000) (finding that the respondent had rights or legitimate interests in the <jollibee.com> domain name because his wife’s nickname was “Jollibee” and he was not using the disputed domain name for commercial purposes). However, it does not follow that registration of a nickname that is based squarely on a widely known and perhaps famous trademark vitiates against infringement when the mark is reused in another context by the Respondent. Notably the ultimate reason that Respondent registered the domain name was because of its commercial notoriety and that it contained Respondent’s surname.
For the above
reasons, the Respondent does not have any rights or legitimate interest in the
domain name outside of the rights granted by the registration agreement.
There is no clear indication that the Respondent acted in a manner consistent with any of the bad faith scenarios enumerated under section 4(b) of the Policy. However, even if Respondent has not violated any of the factors listed in Policy ¶ 4(b), the Panel may still find that Respondent’s registration and use of the <bromoseltzer.com> domain name is indicative of bad faith under Policy ¶ 4(a)(iii), based on the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent knew of the Bromo Seltzer product, if not the fact of there being trademark rights in the mark Bromo Seltzer at the time he registered the domain name. While Respondent claims that the name was registered because of his father’s dog’s name (who was named after the Complainant’s trademarked product) and was to be used for a website tribute to that dog and later as a family website, the actual websites that he created and that were addressed by the domain name contained either an image of the Complainant’s trademarked product or a textual indirect reference thereto.
Even after being contacted by Complainant, Respondent made changes to the <bromoseltzer.com> website that nevertheless indirectly referenced Plaintiff’s trademarked product. The Respondent made no attempt to ensure that visitor’s to his website would not be confused as to the source or sponsorship of the website referenced by the <bromoseltzer.com> domain name, rather the material posted by Respondent adds to the likelihood of consumer confusion regarding the at-issue domain name.
As mentioned above, using the at-issue domain name in the manner used by Respondent is not a fair use of Complainant’s mark. While Respondent may have subjectively not wanted to infringe on anyone’s trademark, the websites created by the Respondent were likely to, at least initially, confuse the public as to the source of the material exhibited at the <bromoseltzer.com> referenced website. Respondent’s lack of care in using Complainant’s mark to address the <bromoseltzer.com> website when he knew or should have been aware that there were trademark rights in such mark is compelling evidence of Respondent’s bad faith in registering and using the at-issue 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 <bromoseltzer.com>
domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 16, 2007
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