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Generic Top Level Domain Name (gTLD) Decisions |
David Hall's Center for Cellular Health,
LLC v. Needak Manufacturing
Claim Number: FA0208000123892
PARTIES
Complainant
is David Hall's Center For Cellular
Health, LLC, Manti, UT, (“Complainant”) represented by John E. Delaney, of Parsons
Behle & Latimer. Respondent is Needak Manufacturing, O’Neill, NE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <cellerciser.com>, <cellerciser.org>,
<cellerciser.net>, <cellerciser.biz>,
<cellerciser.info>, <cellercise.org>,
<cellercise.net>, <cellercise.biz> and <cellercise.info>, registered with Enom.
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.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 26, 2002; the Forum received
a hard copy of the
Complaint on August 26, 2002.
On
August 29, 2002, Enom confirmed by e-mail to the Forum that the domain names <cellerciser.com>, <cellerciser.org>,
<cellerciser.net>, <cellerciser.biz>,
<cellerciser.info>, <cellercise.org>, <cellercise.net>,
<cellercise.biz> and <cellercise.info>
are registered with Enom and that the Respondent is the current registrant of
the names. Enom has verified that
Respondent is bound by the Enom 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
September 10, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 30, 2002 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@cellerciser.com,
postmaster@cellerciser.org, postmaster@cellerciser.net,
postmaster@cellerciser.biz,
postmaster@cellerciser.info,
postmaster@cellercise.org, postmaster@cellercise.net,
postmaster@cellercise.biz, and postmaster@cellercise.info
by e-mail.
A
timely Response was received and determined to be complete on September 26,
2002.
Complainant’s
additional submission was received on October 7, 2002. Respondent’s additional submission was
received on October 10, 2002.
On October 24, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
David Hall’s Center for Cellular Health, LLC, claims to hold a trademark for
“Cellerciser,” also the name of a mini-trampoline
called the “Easy-bounce
Cellerciser.” Complainant contends that
Respondent sells a competitive product called Rebounder. Complainant contends the Respondent has
intentionally attempted to disrupt Complainant’s business and Respondent’s
registration of
the disputed domain names “could be used to” confuse
Complainant’s customers.
B. Respondent
Respondent,
Needak Manufacturing, contends that “Cellercise” is an abandoned trademark and
that “cellercise” is the “contracted form
of ‘cell exercise,’” and it is
referred to in several exercise programs.
Respondent contends that the “movements by [Complainant] are nothing
new, but rather a re-packaging of the work of others.” Respondent contends that David Hall was
formerly associated with Respondent’s business where he learned proprietary
information about
Respondent’s rebounder product. Respondent claims that Mr. Hall left Respondent’s business and
sold the rebounder under the name of David Hall’s Center for Cellular
Health,
LLC. Respondent claims the right to use
the domain names and to provide “accurate information” about rebound exercise.
C. Additional Submissions
Complainant
and Respondent have made additional submissions. Complainant’s additional submission states that the parties are
competitors in the marketing and sale of mini-trampolines. Complainant claims to hold registered
trademarks incorporating the word “cellercise” and claims to have used the word
“cellercise”
in commerce since 1998.
According to Complainant, Respondent registered the disputed domain
names on August 15, 2002, after Respondent was aware of Complainant’s
use of
the trademarks. Complainant’s response
describes the parties’ efforts at attempting to resolve this dispute. Complainant denies Respondent’s contention
that the mark “cellercise” is generic.
It
its additional submission, Respondent restates its position that Complainant
has failed to prove that the terms “cellercise” and
“cellerciser” are unique
terms. Respondent contends that it is
in the interest of the rebounding industry that these terms remain
generic. Finally, Respondent contends
that Complainant has failed to show that the domain names were registered in
bad faith.
FINDINGS
Complainant,
David Hall’s Center for Cellular Health, LLC, holds two trademarks
incorporating the word “Cellerciser,” which is also
the name of a
mini-trampoline called the “Easy-bounce Cellerciser.” These marks were registered in May 2001. Respondent sells a competitive product
called Rebounder. David Hall was
formerly associated with Respondent’s business. Respondent registered the disputed domain names on August 15,
2002, after Respondent was aware of Complainant’s use of the trademarks.
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
Complainant holds two federally
registered trademarks: Cellerciser and Easy-Bounce Cellerciser. These marks were registered in May 2001. Although Respondent has asserted that
Complainant has abandoned its “Cellercise” mark, it is offered to evidence of
abandonment.
Respondent’s domain names are identical
or substantially identical to Complainant’s marks because they incorporate the
word “Cellerciser,”
or a variation thereof, and merely add the generic
top-level domain “.com.” The addition
of a top-level domain is irrelevant when conducting a Policy ¶ 4(a)(i) analysis
because top-level domains are a required
element of a domain name and have no
distinctive qualities of their own. As
a result, the addition of a top-level domain name does not create a distinct
mark capable of overcoming a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Rights or Legitimate Interests
If Respondent can demonstrate that it has
a right or legitimate interest in the domain name, then the Complaint must
fail. To demonstrate its right or
legitimate interest in the many domain names it has registered, Respondent argues
that it has the right
to provide accurate information about rebound exercise in
order to create a better informed public.
Furthermore, Respondent contends that the word “cellerciser” is a
generic name. As to the former
argument, Respondent will remain able to provide the public accurate
information about rebound exercise regardless
of the outcome of this
dispute. As to the latter contention,
Complainant has come forward demonstrating its legitimate interest in the
domain names with evidence
of similar trademark registrations.
A respondent may be found to have a
legitimate interest in a domain name if the respondent, before any notice of
the dispute, has
used or has made demonstrable preparations to use, the domain
name or a name corresponding to it, in connection with a bona fide
offering of
goods or services. Respondent has not
come forward with evidence demonstrating that, prior to the initiation of this
dispute, it has used the word “cellercise”
in connection with the marketing of
its products.
A legitimate interest may also be shown
by proof that a respondent has been commonly known by the domain name. Again, Respondent has not demonstrated that
this is the case.
Finally, a legitimate interest may be
shown if the respondent is making a legitimate, noncommercial or fair use of
the domain name
without intent for commercial gain to misleadingly divert
consumers. Because Respondent is a
competitor of Complainant, it cannot demonstrate a noncommercial purpose in the
use of the domain names.
Registration and Use in Bad Faith
Bad faith can be shown if a respondent
has registered the domain name in order to prevent the owner of the trademark
from “reflecting
the mark in a corresponding domain name,” provided that the
respondent has engaged in a pattern of such conduct. The registration of nine domain names, all identical or
confusingly similar to a trademark held by Complainant, constitutes a pattern
of registering domain names to prevent Complainant from “reflecting the mark”
in a corresponding domain name. See Ingersoll Rand v. Gully, D2000-0021
(WIPO Mar. 9, 2000).
DECISION
The domain names <cellerciser.com>, <cellerciser.org>,
<cellerciser.net>, <cellerciser.biz>,
<cellerciser.info>, <cellercise.org>, <cellercise.net>,
<cellercise.biz> and <cellercise.info
are herby TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 7, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1524.html