Parenting Concepts, Inc. v. EarthBaby
Claim Number: FA0609000799008
Complainant is Parenting Concepts, Inc. (“Complainant”), represented by Tracy Urban, of Parenting Concepts, 571-A Crane St., Lake Elsinore, CA 92530. Respondent is EarthBaby (“Respondent”), 9935A SW 158th St, Vashon, WA 98070-4130.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <slingezee.com>, <sling-ezee.com> and <slingeasy.com>, registered with Go Daddy Software, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2006.
On September 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <slingezee.com>, <sling-ezee.com> and <slingeasy.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@slingezee.com, postmaster@sling-ezee.com and postmaster@slingeasy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <slingezee.com> is identical to Complainant’s SLINGEZEE mark and the <sling-ezee.com> and <slingeasy.com> domain names are confusingly similar to the mark.
2. Respondent does not have any rights or legitimate interests in the <slingezee.com>, <sling-ezee.com> and <slingeasy.com> domain names.
3. Respondent registered and used the <slingezee.com>, <sling-ezee.com> and <slingeasy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Parenting Concepts, Inc., has been marketing and selling baby slings under the SLINGEZEE and SLING-EZEE marks since 1990. Complainant has registered the SLINGEZEE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,874,706 issued August 17, 2004, filed June 26, 2003).
Respondent registered the <slingezee.com> domain name on June 4, 2001 and the <sling-ezee.com> and <slingeasy.com> domain names on October 27, 2004. All three domain names resolve to Respondent’s website where it sells competing baby sling products. Complainant offered to buy the <slingezee.com> domain name from Respondent for $1,000 but Respondent refused, stating that the use of Complainant’s mark was worth more to Respondent than $1,000.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s trademark registration for the SLINGEZEE mark predates Respondent’s registration of the <sling-ezee.com> and <slingeasy.com> domain names but not the <slingezee.com> domain name. However, the Panel finds that a trademark registration is not required to satisfy Policy ¶ 4(a)(i) if Complainant can show common law rights in the SLINGEZEE mark that predate Respondent’s registration of the <slingezee.com> domain name. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Since 1990, Complainant has continuously used the SLINGEZEE
mark to refer to its baby sling products.
This use predates Respondent’s registration of the <slingezee.com>
domain name by eleven years. For
purposes of satisfying Policy ¶ 4(a)(i), the Panel finds that Complainant has
established common law rights in the mark.
Therefore, Complainant’s rights in the SLINGEZEE mark predate
Respondent’s registration of the disputed domain name. See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the
complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10,
2000) (finding that the complainant has common law rights in the mark FISHTECH
that it has used since 1982).
Moreover, Respondent’s <sling-ezee.com> domain
name contains the entire mark and merely adds a hyphen. In Eastman Chem. Co. v. Patel, FA
524752 (Nat. Arb. Forum Sept. 7, 2005), the panel concluded that the
respondent’s addition of a hyphen to the complainant’s mark was insufficient to
distinguish the disputed domain name from the mark. Accordingly, the Panel finds that the mere addition of a hyphen
to Complainant’s SLINGEZEE mark renders the <sling-ezee.com>
domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <slingeasy.com> domain name is
also confusingly similar to Complainant’s SLINGEZEE mark, as the term
“slingeasy” has a similar pronunciation to the mark. In Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat.
Arb. Forum Apr. 7, 2000), the panel found that a domain name phonetically
identical to a complainant’s mark was confusingly similar under Policy ¶
4(a)(i). Likewise, the panel in YAHOO!
Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) found the <yawho.com>
domain name to be confusingly similar to the complainant’s YAHOO mark for
similar reasons. As a result,
Respondent’s <slingeasy.com> domain name is confusingly similar to
Complainant’s SLINGEZEE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain names under the name
“EarthBaby,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the disputed domain names. Consequently, Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum
Feb. 5, 2001) (finding no rights or legitimate interests because the respondent
is not commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Instron Corp. v. Kaner, FA
768859 (Sept. 21, 2006) (finding that the respondent was not commonly
known by the <shoredurometer.com> and <shoredurometer.com> domain
names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip't as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute).
Furthermore, Respondent is using the disputed domain names
to redirect Internet users to its own website selling competing baby sling
products. In Am. Tool &
Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16,
2002), the respondent registered a domain name confusingly similar to the
complainant’s EZ-HITCH mark and used the domain name to sell products in direct
competition with the complainant. The
panel stated, “Respondent has attempted to trade opportunistically on
Complainant’s established goodwill in the industry by emulating Complainant’s
mark and product when registering a confusingly similar domain name.” The panel
thereafter held that the respondent’s actions of “expropriating Complainant’s
mark and business” did not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). Respondent has engaged in similar conduct and therefore, the
Panel concludes that Respondent is not using the disputed domain names in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Carey Int’l, Inc. v.
Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005) (holding that the
respondent’s use of disputed domain names to market competing limousine
services was not a bona fide offering of goods or services under Policy
¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in
order to profit from the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting
Internet users seeking Complainant’s baby sling products to its own website
selling Complainant’s products. The
Panel finds that Respondent is taking advantage of the confusing similarity
between Complainant’s SLINGEZEE mark and the disputed domain names in order to
profit from the goodwill associated with the mark, which constitutes bad faith
according to Policy ¶ 4(b)(iv). See
Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (find that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to
Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA
445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under
Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to respondent’s
website offering competing computer products and services).
Respondent’s registration and use of the disputed domain
names to operate a competing website also suggests bad faith registration and
use according to Policy ¶ 4(b)(iii). In Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered
and used the <euro-disney.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme
park. Because Respondent’s website also
resolves to a website promoting goods competing with Complainant, Respondent
appears to be disrupting Complainant’s business under the SLINGEZEE mark. Therefore, Respondent has demonstrated bad
faith registration and use under Policy ¶ 4(b)(iii). See Peter Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct.
23, 2006) (concluding that the respondent registered and used the
<sportlivescore.com> domain name in order to disrupt the complainant’s
business under the LIVESCORE mark because the respondent was maintaining a
website in direct competition with the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <slingezee.com>, <sling-ezee.com> and <slingeasy.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 9, 2006
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