NZ Manufacturing, Inc. v. Eric Snell
Claim Number: FA1604001670641
Complainant is NZ Manufacturing, Inc. (“Complainant”), represented by Daniel A. Thomson of Emerson Thomson Bennett, LLC, Ohio, USA. Respondent is Eric Snell (“Respondent”), represented by Laura J. Winston of Kim Winston LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stretchcordz.com> and <1stretchcordz.com>, registered with GoDaddy.com, LLC.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2016; the Forum received payment on April 15, 2016.
On April 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stretchcordz.com> and <1stretchcordz.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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, firstname.lastname@example.org. Also on April 21, 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 May 16, 2016.
On May 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
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 names be transferred from Respondent to Complainant.
Policy ¶ 4(a)(i)
Complainant has rights in the STRECHCORDZ mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,518,491, registered December 11, 2001). Respondent’s <stretchcordz.com> and <1stretchcordz.com> domain names are confusingly similar to the STRECHCORDZ mark because they each contain the mark, along with an additional letter “t,” while the <1stretchcordz.com> domain also contains the number “1.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <stretchcordz.com> and <1stretchcordz.com> domain names. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name redirects to Respondent’s own website.
Policy ¶ 4(a)(iii)
Respondent uses the <stretchcordz.com> and <1stretchcordz.com> domain names in bad faith because each domain name redirects to Respondent’s own website.
Policy ¶ 4(a)(i)
The <stretchcordz.com> and <1stretchcordz.com> domain names are composed of generic terms.
Policy ¶ 4(a)(ii)
Complainant has failed to establish a prima facie case sufficient to satisfy Policy ¶ 4(a)(ii). The <stretchcordz.com> and <1stretchcordz.com> domain names are composed of generic terms. The <stretchcordz.com> and <1stretchcordz.com> domain names are used as part of a legitimate marketing strategy to drive traffic to Respondent’s business offering equipment related to competitive swimming.
Policy ¶ 4(a)(iii)
Complainant has failed to make specific allegations of bad faith registration or use. Respondent registered the <stretchcordz.com> and <1stretchcordz.com> domain names without knowledge in Complainant’s rights in the STRECHCORDZ mark, and with no intent to create confusion, but rather in order to register domains made of generic terms.
Complainant is the holder of the US Trademark registration no. 2,518,491 STRECHCORDZ, registered on December 11, 2001 and used for manually operated equipment.
Respondent registered the disputed domain names on December 10, 2012 and December 13, 2014, respectively.
The <stretchcordz.com> and <1stretchcordz.com> redirect to Respondent’s website offering its stretch band product line.
Respondent has registered a number of domain names consisting of generic terms, some with alternative spelling.
The Panel believes that the present dispute constitutes a trademark dispute, which is outside the scope of the UDRP, and thus has to be resolved in another forum such as a court of mutual jurisdiction or before the USPTO.
Respondent has notified the Forum of his Petition for Cancellation of Complainant’s U.S. Trademark Reg. No. 2,518,491 for the trademark STRECHCORDZ, filed with the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) on grounds of genericness.
Therefore, Respondent asserts that this dispute is not suited for resolution under the UDRP Policy because it involves "the resolution of a legitimate trademark dispute outside the scope of the Policy.”
If it had been only for the sole fact that a petition for cancellation was filed with the TTAB, bearing in mind that it was brought after the initiation of the present proceedings, the Panel might have decided to proceed with reviewing the case under the Policy, as long as Complainant asserted that the acquisition and use of the domain names subject to this dispute were made in bad faith.
However, the Panel believes that in the present case the existence of rights and/or legitimate interests turns on resolution of a legitimate trademark dispute.
The Panel also recognizes that this proceeding may hinge upon the resolution of Respondent’s petition to the TTAB.
In fact, there is more at stake in this dispute, particularly:
- the validity of rights and/or legitimate interests, and thus the issue of possible trademark infringement.; and
- conflict between legitimate interests of two fair users. Basically, Complainant as a holder of registered trademarks, who has been fairly using its marks for an extended period of time, challenges the disputed domain name which is confusingly similar to its marks and, at the same time, consists of generic terms. There is no doubt as to the generic nature of the words “stretch cordz”, even in view of the alternative spelling of the last letter in the word “cords”. Neither Complainant, nor Respondent are the “authors of this alternative form of spelling” widely used in commerce.
Previous Panels, which indicated that legitimate disputes should be decided by the courts, often referred to the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at:http://www.wipo.int/amc/en/processes/process1/report/index.html ), particularly its paragraph 135, which reads:
“…(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.”
Respectively, previous Panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
Having found the present dispute not to be appropriately resolved under the UDRP Policy, the Panel concludes that relief shall be DENIED and the Complaint DISMISSED.
Antonina Pakharenko-Anderson, Panelist
Dated: June 3, 2016
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