Fiberstar, Inc. v. Merlin Kauffman
Claim Number: FA1602001663188
Complainant is Fiberstar, Inc. (“Complainant”), represented by John Haen, Wisconsin, USA. Respondent is Merlin Kauffman (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fiberstar.com>, registered with Register.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Steven M. Levy, David E. Sorkin and Dennis A. Foster (chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 29, 2016; the Forum received payment on February 29, 2016.
On February 29, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <fiberstar.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 March 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2016 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 email@example.com. Also on March 2, 2016, 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 timely Response was received and determined to be complete on March 22, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on March 28, 2016. Also, a timely Additional Submission from Respondent was received and determined to be complete on March 31, 2016. The Panel will consider both Additional Submissions in the Findings and Discussion below.
On March 31, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Steven M. Levy, David E. Sorkin, and Dennis A. Foster as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
- Incorporated since 2002, Complainant is in the business of marketing citrus-based food ingredients for use in various products sold in over 65 countries. Complainant conducts that business under the FIBERSTAR trademark, for which it has obtained a registration with the United States Patent and Trademark Office ("USPTO").
- The disputed domain name, <fiberstar.com>, is identical to Complainant's trademark, and potential customers of Complainant are confused by the name as to its relationship with Respondent.
- Respondent has no rights or legitimate interests in the disputed domain name as the name is being used for no purpose and is listed for sale by Respondent. Respondent owns more than 15,000 domain names and is in the business of bad faith sales of those names.
- The disputed domain name was registered and is being used in bad faith. Complainant contacted Respondent about purchase of the disputed domain name, and Respondent replied by requesting $35,000, a sum far in excess of Respondent's out-of-pocket costs related to the name.
- Contrary to Complainant's assertions, the disputed domain name is being used by Respondent. His website attached to the name provides links to third party websites that offer products consistent with the descriptive terms "fiber" and "star."
- Whereas Complainant's products use the word "fiber" in connection with dietary and food supplements, Respondent's use of that word in his website linkages relates to optic and lighting products. Thus, Respondent has a legitimate interest in the disputed domain name.
- Respondent did not seek out or target Complainant with an offer to sell the disputed domain name, but merely responded to repeated attempts by Complainant to buy the name. As a legitimate reseller of generic-word domain names, Respondent ultimately replied to Complainant with an offer to sell the disputed domain name at a market-based price. Such a response by Respondent is not evidence of bad faith as defined under the Policy.
C. Complainant's Additional Submission
- Complainant was formed in 1997. Complainant actively uses its FIBERSTAR trademark globally across all media.
- Beyond setting a price of $35,000, Respondent did not suggest alternate ways in which Complainant might purchase the disputed domain name. There are many different ways in which to assess domain name value, and Respondent's price for the disputed domain name is far in excess of other such assessments.
- As Respondent is in the business of buying and selling domain names, Complainant believes that many of its potential sales fall under the bad faith criteria of Policy ¶ 4(b)(i).
D. Respondent's Additional Submission
- Respondent does not dispute Complainant's rights in its FIBERSTAR trademark. However, simple prior use of a trade name does not necessarily confer trademark rights in that name.
- Complainant is in error when asserting that Respondent's willingness to sell the disputed domain name, composed of a combination of non-distinctive common words, to anyone is evidence of a primary purpose to acquire and sell the name to Complainant in violation of the requirements set forth under the Policy.
Founded in 1997, Complainant is an American company that markets citrus-based fiber dietary and food products on a worldwide basis. It operates under the FIBERSTAR trademark for which it obtained a registration with the USPTO (Reg. No. 3,123,768; registered Aug. 1, 2006).
Respondent is the owner of the disputed domain name, <fiberstar.com>, which was registered on March 27, 2002.
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.
By submitting to the Panel pertinent evidence (Exhibit 1) of its USPTO trademark registration, Complainant has established its rights in its FIBERSTAR mark for the purposes of Policy ¶ 4(a)(i). See True Value Co. v. Wetters, FA 1420219 (Nat. Arb. Forum Jan. 17, 2012) (“...the Panel finds that Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.”); see also Schneider Group, Inc. v. Mann, D2010-0448 (WIPO May 5, 2010) ("The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO...").
Simple visual inspection indicates to the Panel that the disputed domain name, <fiberstar.com>, is identical to Complainant's FIBERSTAR trademark with respect to Policy requirements, as the addition of the gTLD, ".com," is of no moment in making such a comparison. See DINGBATS v. Pool.com, FA 1296562 (Nat. Arb. Forum Jan. 20, 2010) (finding <dingbats.com> to be identical to the DINGBATS mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
As the Panel has determined below that Complainant failed to show that the disputed domain name was registered in bad faith, the Panel will not offer an analysis of this element of the Policy.
Under the Policy, Complainant is charged with proving that the disputed domain name was registered and is being used in bad faith. To do this, the Complainant must establish that at the time the Respondent registered the disputed domain name the Respondent knew of and sought to take advantage of the complainant's trademark or service mark rights. See Collective Media, Inc. v. CKV, D2008-0641 (WIPO July 31, 2008) ("For a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that the Respondent was aware of the Complainant and sought to take advantage of its mark.."); see also Align Tech., Inc v. Aligntechnology.Com, D2008-0103 (WIPO Mar. 31, 2008) ("To establish registration in bad faith, Complainant, which bears the burden of proof under each Policy element, must ordinarily show that the registration was undertaken with knowledge of Complainant and its mark...and that Respondent 'targeted' Complainant.").
Complainant has provided little evidence that it possessed trademark rights in its FIBERSTAR mark when the disputed domain name was registered on March 27, 2002. Complainant did not obtain a recognized trademark registration for its trademark until 2006, well after registration of the disputed domain name. Complainant could have possibly gained enforceable common law rights in its mark prior to the trademark registration, and Complainant does allude to its founding in 1997. However, Complainant has provided no evidence, in terms of notoriety, revenues, promotion, etc., to the Panel which might sustain a finding that Complainant had obtained common law rights in the FIBERSTAR mark prior to trademark registration in 2006, let alone prior to the disputed domain name registration in 2002. See Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS, D2008-1036 (WIPO Sept. 30, 2008) ("Relevant evidence of [common law rights] includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition."); see also Mary's Futons, Inc. v. Texas Intern'l Prop., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) ("A common law trademark must be shown by evidence such as sales figures, advertising expenditure, numbers of customers. "). Therefore, the Panel can find no basis upon which to decide that the disputed domain name was registered with knowledge of Complainant's rights in the mark and thus possibly in bad faith.
Complainant's assertion that Respondent's sale price of $35,000 for the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(i) fails also. Complainant's mark, FIBERSTAR, is composed of two common words, "fiber" and "star" and, as Complainant contends, fits within up to 15,000 generic-word domain names that are owned by Respondent. Moreover, Complainant admits that it initiated negotiation over price by first contacting Respondent in connection with purchase of the disputed domain name. Since, as reasoned above, there is no sustainable evidence that Respondent acquired the disputed domain name in bad faith, Respondent, as a legitimate reseller of generic-word domain names, is free to set the prices he deems reasonable for names in his inventory. See Pocatello v. CES Marketing, FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain bad faith is some accompanying evidence that the domain was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner."); see also Puky GmbH v. Ignatius Agnello, D2001-1345 (WIPO Jan. 3, 2002); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000).
Accordingly, the Panel finds that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith.
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 <fiberstar.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Chair
Steven M. Levy, Panelist David E. Sorkin, Panelist
Dated: April 11, 2016
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