DECISION

 

Sharp Electronics Corporation v. Golden Potatoes Inc. f/k/a Easy Flo Vacuums

Claim Number: FA0107000098055

 

PARTIES

The Complainant is Sharp Electronics Corporation, Mahwah, New Jersey, USA (“Complainant”) represented by Susan J. Kohlmann, of Pillsbury Winthrop LLP.  The Respondent is Golden Potatoes Inc. f/k/a Easy Flo Vacuums, Chilliwack, British Columbia, Canada (“Respondent”) represented by Kathleen Lemieux, of Gowling Lafleur Henderson, LLP.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <besharp.org>, <besharp.com>, and <besharp.net>, registered with Tucows 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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 12, 2001; the Forum received a hard copy of the Complaint on July 12, 2001.

 

On July 17, 2001, Tucows Inc. confirmed by e-mail to the Forum that the domain names <besharp.org>, <besharp.com>, and <besharp.net> are registered with Tucows Inc. and that the 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 July 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2001 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@besharp.org, postmaster@besharp.com, postmaster@besharp.net by e-mail.

 

A timely response was received via electronic copy on August 13, 2001.  The hard copy of the response with exhibits arrived on August 14, 2001.  Even though the Forum considered the exhibits not to be timely filed, the exhibits were reviewed and considered by the Panel.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made)

 

On August 20, 2001, the Complainant’s additional response was received by the Forum.  This response was considered timely. 

 

On August 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain names at issue are confusingly similar to its registered United States trademark SHARP® and their 1-800-BE-SHARP customer service telephone number; that the Respondent has no legitimate rights or interest in the domain names at issue; and, that the Respondent registered and is using the domain names at issue in bad faith.

 

B. Respondent

The Respondent contends that the domain names at issue are not confusingly similar to the Complainant’s trademarks as it consists of generic or common descriptive words;  that the Respondent has legitimate interests or rights in the domain names at issue;  and that the Respondent did not register the domain names at issue in bad faith.

 

FINDINGS

The Complainant is a well-known manufacturer and distributor of consumer electronics products and household appliances in North America.  The SHARP® trademark, as well as it's 1-800-BE-SHARP customer service line are strongly associated with the Complainant.  The SHARP® trademark is a distinctive mark associated with consumer electronics and household appliances.  This mark was first used in commerce in 1931.

 

The Respondent's principal, Bert Brunia, is President of several different companies, namely  Easy-Flo Vacuum Systems, Ltd., the manufacturer and distributor of home central vacuum systems;   Super Trampolines, Inc., for the sale of trampolines;   Golden Potatoes, Inc., a holding company;  Hannah's Recipes, Inc. which has a website for Internet users to post and browse through recipes;  and Besharp Advertising, Inc., which the Respondent states would be an Internet business portal for advertising and marketing services through the Internet by creating business directories with classifications by type and geographical location.

 

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.

 

Identical and/or Confusingly Similar

The Complainant first used its trademark SHARP® in commerce in 1931.  It appears that the Respondent did not begin to use the Besharp name until at least 1997.  As the Complainant’s famous mark is known worldwide, the Respondent should have known of the confusion that may be caused by incorporating the Complainant’s trademark into the domain names at issue.

 

The domain names at issue, <besharp.com>, <besharp.net> and <besharp.org>, are confusingly similar to Complainant's United States registered trademark.  Even though the Respondent is located in Canada, the Complainant may assert its rights to the trademark through its United States registration.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

 

Secondly, the Respondent merely added the word "be" before the Complainant's trademark and added the TLD suffix ".com."    E.g., ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark¼”).

 

As it realtes to the trademark rights asserted by the Complainant to the 1-800-BE-SHARP mark, it would appear that the Complainant has established rights to this mark without obtaining a federal registration, through its continuous and widespread use.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).  Further, even though the numerical portion of the mark and the hyphens are omitted, the domain names at issue are virtually identical and confusingly similar to Complainant's 1-800-BE-SHARP mark.  See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); cf. America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

 

Finally, the domain names at issue are so confusingly similar, as the Complainant’s customer service telephone number contains the phrase "be sharp" a reasonable Internet user might assume that the domain name is somehow affiliated with Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

 

Rights or Legitimate Interests

As the Complainant and Respondent are both engaged in the business of manufacturing and distributing vacuum cleaners, a reasonable assumption would be that the Respondent was aware of the Complainant’s customer service number 1-800-be-sharp.  The Respondent displayed the Complainant’s customer service telephone number on its website.  Also, the Respondent has pointed the domain name <besharp.com> to a page that does nothing but link the user to the Respondent’s own Easy-Flo Vacuum website, which promotes Respondent’s product.  This usage does not constitute a bona fide offering of goods and services and therefore does not establish that Respondent has rights or legitimate interests in the <besharp.com> domain name. See, e.g., The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

 

Further, the Respondent has not developed sites for the domain names <besharp.org> and <besharp.net>.  See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

 

Registration and Use in Bad Faith

The fact that the Respondent has not developed or attempted to develop websites at <besharp.org>, and <besharp.net> domain name is evidence of bad faith registration and use.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

Further, the Respondent had knowledge of the Complainant’s customer assistance telephone number and was using said telephone number in its website.  As Respondent and Complainant are engaged in similar business enterprises, the Respondent's use of the <besharp.com> domain name constitutes bad faith, as a reasonable Internet user may be misled to believe that the Complainant and Respondent are somehow connected.  See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

 

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain names <besharp.org>, <besharp.com>, and <besharp.net> be transferred from the Respondent to the Complainant.

 

 

Honorable Paul A. Dorf, (Ret.), Panelist

 

Dated:  September 5, 2001