Tristar Products, Inc. v. Laurie Braden
Claim Number: FA1411001592315
Complainant is Tristar Products, Inc. (“Complainant”), represented by Joshua A. Stockwell of Barlow, Josephs & Holmes, Ltd., Rhode Island, USA. Respondent is Laurie Braden (“Respondent”), represented by Ryan Compton of DLA Piper LLP (US), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeaneez.com>, registered with GoDaddy.com, LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2014; the National Arbitration Forum received payment on November 26, 2014.
On December 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jeaneez.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jeaneez.com. Also on December 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received on December 23, 2014, but Respondent failed to submit a copy of the Response to Complainant as required by UDRP Rule 2(b).
An Additional Submission from Complainant was received on December 26, 2014, and determined to be complete and filed in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from Respondent was received on December 31, 2014, and determined to be complete and filed in a timely manner according to The Forum’s Supplemental Rule #7.
On January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
On January 20, 2015 the Panelist issued an Order for Extending a Decision until January 27, 2015.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the GENIE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4467559, registered January 14, 2014).
1. Complainant’s GENIE mark was first used in commerce as early as February 15, 2011.
ii. Complainant uses the mark in connection with various women’s clothing articles, including leggings.
i. Policy ¶ 4(a)(i)
1. The <jeaneez.com> domain name is confusingly similar to Complainant’s GENIE mark, because the disputed domain name is phonetically equivalent to Complainant’s GENIE mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <jeaneez.com> domain name.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent is using the disputed domain name to pass itself off as Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to disrupt Complainant’s business.
2. Respondent uses the disputed domain name to create a likelihood of confusion as to its relationship with Complainant.
B. Respondent
a. Respondent registered the <jeaneez.com> domain name on February 6, 2014.
b. Policy ¶ 4(a)(i)
iv. Respondent’s <jeaneez.com> domain name is readily distinguishable from Complainant’s GENIE mark, even though it is phonetically similar.
1. Respondent’s disputed domain name consists of the descriptive term “Jean” and “eez” which commonly refer to denim trousers and the connotation of being easy.
c. Policy ¶ 4(a)(ii)
v. Respondent is commonly known by the <jeaneez.com> domain name, because Respondent’s customers are fully aware that they are purchasing Respondent’s products and not products offered by a third-party, including Complainant.
vi. Respondent is using the disputed domain name for a bona fide offering of goods and services, in that it is offering its own line of women’s trousers and there is no evidence that Respondent is capitalizing from being associated with Complainant.
vii. Respondent’s domain name merely uses a play on words: combining the term “jean” which describes the goods sold, and the arbitrary term “eez” which is meant to imply ease or easiness in the ability to wear the product.
d. Policy ¶ 4(a)(iii)
viii. Respondent could not have registered the disputed domain name in bad faith, because it has established rights and legitimate interests in the disputed domain name.
1. Respondent has no intention of disrupting the business of Complainant and Respondent has no intention of creating a likelihood of confusion through the use and registration of the domain name <jeaneez.com>.
C. Complainant’s Additional Submission
a. Complainant submitted the following additional submission:
Complainant asserts common law rights for the GENIE mark.
i. Complainant has been using the GENIE mark since as early as 2011.
ii. Complainant’s products are sold in many large retailers throughout the world, including Walmart.
b. Respondent submitted the following Additional Submission:
Respondent asserts the Japanese registrations are entirely distinct from the GENIE family of registrations on which Complainant’s allegations in the Complaint are based. As such, Complainant’s reliance on these registrations to bolster its arguments is wholly inconsistent. Further, that the registrations were not applied for/issued until 2011 or later.
Complainant does not claim common law rights based on actual use in commerce of the GENIE family of marks until at least as early as 2011.
According to Respondent’s Japanese counsel, the initial applications for the JEANIE JEANS registrations asserted by Complainant were filed in 2004 by World Kabushiki Kaisha. That the registrations were only recently acquired by Complainant from World Co. Ltd. through an assignment of rights on December 4, 2012.
Complainant has not submitted any evidence of its use of the mark JEANIE JEANS, or the alleged fame of this mark.
Complainant has failed to submit any quantifiable evidence of the purported fame of its marks such as sales revenue, advertising expenditure, consumer recognition surveys, third-party press coverage, etc.
Respondent requests that the Panel accept the National Arbitration Forum’s determination that its Response was timely received and complete.
Based on the Complaint and the content of Complainant’s Additional Submissions, it
appears that the instant dispute constitutes a trademark dispute which should lie outside the scope of the UDRP.
Preliminary Issue: Deficient Response
Although Respondent filed its Response with the Forum on time, Respondent failed to submit a copy of the alleged Response by email to Complainant by the required date, December 23, 2014, as required by UDRP Rule 2(b). Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
However, the Panel at its discretion may choose to accept and consider the Response.
The Panel chooses to accept and consider the Response for the following reasons:
a) The Response was timely filed with the Forum therefore there can be no suspicion that Respondent was other than forthcoming.
b) The Respondent in interest of preservation of Complainant’s due process rights requested that an opportunity be afforded the Complainant to specifically respond to the Response. This offer was not taken up by the Complainant. The Forum has the discretion to grant an extension under such circumstances but Complainant never pursued the offer. Nor has Complainant filed a request with this Panel, in the event that a decision is made to accept and consider the Response, for an extension to file a supplement.
c) The Panel believes that the record contains all the necessary information for it to decide the dispute without supplement.
d) Ruling a Response inadmissible under the present circumstances would be an extreme remedy not consistent with the basic principles of due process.
The Panel also chooses to accept and consider Respondent’s Additional Submission consistent with the decision to accept and consider the Response, but moreover, the Respondent has a due process right to respond to the Complainant’s Additional Submission.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 uses the GENIE mark in connection with its business in retail of women’s clothing. Complainant claims to own the GENIE mark through its trademark registrations with the USPTO (Reg. No. 4,467,559, registered January 14, 2014). Complainant argues that such registrations are sufficient to establish rights in the GENIE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that Complainant’s registrations with the USPTO are sufficient to demonstrate that Complainant owns the GENIE mark under Policy ¶ 4(a)(i).
In its additional submission, Complainant claims to also own the GENIE mark through common law rights. Complainant notes that it has been using the GENIE mark in commerce since at least 2011 and is carried by many large retailers throughout the world, including Walmart. Complainant believes that this information can be taken as evidence that Complainant owns the GENIE mark through common law rights. Previous panels have held that significant use of a mark over an extended period of time can be sufficient to demonstrate common law rights. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
The Panel agrees that Complainant’s continued use of the GENIE mark over an extended period is sufficient to demonstrate common law rights under Policy ¶ 4(a)(i).
Complainant argues that the <jeaneez.com> domain name is confusingly similar to Complainant’s GENIE mark because the disputed domain name is phonetically equivalent to Complainant’s GENIE mark.
The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com”. Previous panels have held that a domain name that is phonetically similar to a complainant’s mark can still be considered confusingly similar and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that the respondent’s <mapcrest.com> domain name and the complainant’s MAP QUEST mark are confusingly similar); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent argues that the <jeaneez.com> domain name is readily distinguishable from Complainant’s GENIE mark under Policy ¶ 4(a)(i). Respondent claims that the disputed domain name is made up of a commonly used term “jean” and a commonly used homonym “eez” for “ease”. Respondent argues that these terms describe its product, as it sells jean leggings that are easy and comfortable.
Previous panels have held that a domain name that consists of commonly used terms cannot be considered confusingly similar under Policy ¶ 4(a)(i). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the <bearbuilderz.com> domain name was not confusingly similar to the complainant’s registered BUILD-A-BEAR, BUILD-A-BEAR WORKSHOP, or BUILDABEAR.COM marks).
The Panel finds that the terms “jean” and “eez” are commonly used terms. The Panel accordingly finds that the disputed domain name is not confusingly similar to Complainant’s GENIE mark under Policy ¶ 4(a)(i).
In light of the Panel’s conclusion that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Notwithstanding the afore-stated conclusion, the Panel will address a few words to the allegations of Respondent’s lack of rights and legitimate interests in, and Respondent’s bad faith registration of, the disputed domain name.
Rights or Legitimate Interests
Claimant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <jeaneez.com> domain name.
The Panel notes that the WHOIS information identifies “Laurie Braden” as the registrant of the disputed domain name. Generally, panels will rely on the WHOIS information in determining whether or not a respondent is commonly known by the disputed domain name.
The Panel agrees that Respondent’s WHOIS information does not align with the disputed domain name. However, the Panel must also consider Respondent’s evidence that it runs a JEANEEZ branded business.
Respondent argues that it actually is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because it has established that its customers know that they are purchasing Respondent’s products, and not products from a third-party, including Complainant. Generally, panels have agreed that a respondent may be commonly known by a disputed domain name if its customers associate its products with the disputed domain name and understand that the respondent is responsible for said products. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
The Panel agrees with Respondent’s argument that it is commonly known by the <jeaneez.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent uses the disputed domain name to intentionally attract Internet users to its own website by creating a likelihood of confusion as to its association with Complainant. Complainant argues that Respondent uses the disputed domain name to sell competing products to that of Complainant, in that both parties sell women’s jean leggings. See Complainant’s Ex. 1. Generally, panels have refused to find a bona fide offering of goods and services, or a legitimate noncommercial or fair use of a disputed domain name where the respondent intentionally attracts Internet users to its own competing website. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent asserts that it has provided a bona fide offering of goods and services, and a legitimate noncommercial or fair use of the disputed domain name. In so arguing, Respondent claims that it is using the disputed domain name to operate and sell its own line of women’s jeggings and that there is no evidence that Respondent is attempting to capitalize off of Complainant’s mark. Respondent believes that this argument is sufficient to demonstrate rights and legitimate interests in the <jeaneez.com> domain name. Respondent contrasts the goods sold by GENIE and those sold by JEANEEZ, noting the differences. See Resp., at Attached Exs. B–C.
Previous Panel decisions support this contention. See Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”); see also Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name).
As such, the Panel finds that Respondent has actually demonstrated rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) by providing a bona fide offering.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Registration and Use in Bad Faith
The Panel having concluded that Respondent has rights and legitimate interests in the <jeaneez.com> domain name pursuant to Policy ¶ 4(a)(ii), also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <jeaneez.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jeaneez.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: January 22, 2015
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