DECISION

Claudette Y. Lobbins v. Vangaurd Design

Claim Number: FA0302000146601

PARTIES

Complainant is Claudette Y. Lobbins, Castaic, CA (“Complainant”).  Respondent is Vangaurd Design, Towson, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prettyears.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Anne M. Wallace, Q.C., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 24, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On February 25, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <prettyears.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 March 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 2003 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@prettyears.com by e-mail.

A timely Response was received and determined to be complete on March 25, 2003.

Complainant’s additional submission was timely received on March 31, 2003. Complainant’s additional submission includes material in response to specific allegations made by Respondent and is therefore proper and relevant, and the Panel has considered this submission in coming to this decision.

On April 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant purchased the disputed domain name <prettyears.com> on July 22, 2000.  Originally the disputed domain name was registered with Register.com and technical contact was with Concentric Network Corporation.  When Concentric Network Corporation changed its business structure, Complainant decided to move her domain name and website to a company named Hostway.com in January 2001.  On January 21, 2001, Complainant received confirmation from Register.com that her domain name server had been changed.  She followed all of the directions from Hostway.com for transfer of the Disputed Domain Name to Hostway.com and the website was up and running within two days.  Hostway.com confirmed the web hosting on January 21, 2001.  On February 20, 2001, Complainant established her website as an e-commerce site through a company called Iongate, which is a subsidiary of Costco.

Complainant began the business involving the mark PRETTYEARS in early 2000 and has been using the name PRETTYEARS since February 2000.  The product to which the name PRETTYEARS is attached is an ear cap.  It is a small beauty product which is used by women who style their hair using heated cosmetology tools.  Complainant filed evidence with respect to her use of the mark PRETTYEARS in relation to the ear cap, including corporate registration, a sample product, a video of a thirty second television commercial, magazine advertisements, postcards and bank account information.  This evidence, together with the evidence of registration of <prettyears.com> in July of 2000, demonstrate that Complainant was using the mark PRETTYEARS in her business from February 2000 to date.  In January 2001, Complainant established a bank account for the e-commerce portion of her business and for offering Visa and MasterCard sales.

Complainant searched the United States Patent and Trademark Office (“USPTO”) on July 19, 2000 and was advised that while there had been a registration at one time, the name was “dead” as of November 9, 1989.  She was advised by USPTO that she should use the trademark for a period of two years and then apply for registration of same.  Complainant made application for the trademark PRETTYEARS on November 29, 2002.

The expiry date for the hosting of the disputed domain name with Hostway.com was to be January 9, 2003.  Through some confusion, with respect to which the Panel has little evidence, Respondent somehow purchased the disputed domain name on August 29, 2002.  When Complainant discovered that Respondent was using the disputed domain name, she began sending e-mails to Respondent requesting that the domain name be returned to her.  In January 2003, Respondent installed a pornographic website at <prettyears.com> .

Complainant contends that she has common law trademark rights in PRETTYEARS and <prettyears.com>  and that the domain name is identical to or confusingly similar to her trademark. Complainant further contends that Respondent has no rights or legitimate interest in the dispute domain name and that by Respondent’s use of the domain name to link to a pornographic website, Complainant has been forced to pull all sales of her products because she would lose goodwill with her customers and the existence of the pornographic website will injure her company’s good name.

Lastly, Complainant submits that Respondent is using the domain name in bad faith because Respondent was aware that the domain name was released in error from Complainant’s control; because Respondent’s use of the domain name which resolved to a pornographic website tarnishes the goodwill and marketability of the Complainant’s feminine product; and because Complainant has repeatedly attempted to contact Respondent by certified mail but that the messages have been returned.  Complainant asserts that by using her domain name, Respondent has disrupted her business, which suggests Respondent registered and used the domain name in bad faith.

B. Respondent

Respondent’s position is that Complainant had no trademark rights in PRETTYEARS when Respondent registered <prettyears.com>.

Respondent is in the business of buying and selling domain names as well as promoting various affiliate programs on the Internet. Respondent buys domain names that appear to them to have some intrinsic value and then promotes various affiliate programs on them or sells them at a later date.  Respondent says that in this case a check of the USPTO revealed no trademark at the time the domain was purchased on August 29, 2002.  There was only an expired trademark for 1983. Complainant’s trademark registration was not until November 11, 2002, which is after Respondent had registered the disputed domain name.

Respondent states that because there was no registered trademark on the domain name, Complainant would have to prove common law trademark rights and that she has failed to do so because the mark is not famous, the mark is not distinctive and the domain name contains two very generic terms “pretty” and “ears.”

C. Additional Submissions

Complainant’s additional submission deals with the question of whether Complainant has common law rights in PRETTYEARS and <prettyears.com>.  Complainant points out that almost every exhibit which was submitted in her original package has a date of either 2000, 2001 or 2002.  These dates, Complainant submits, especially the original purchase of the domain name in July 2000, are conclusive evidence that she used PRETTYEARS and <prettyears.com> long before Respondent registered the disputed domain name on August 29, 2002.

Complainant submits that she has common law rights in the marks because she was the first to use them and she has continued to use them in her business.  Complainant further submitted evidence showing that her business began in June 1999 and that she had registered the business names PRETTYEARS and <prettyears.com> with the San Diego County Office on February 1, 2001.  She also provided evidence of public notice of the names in the San Diego Commerce Newspapers on February 28, 2001.  Complainant submits therefore that she is the legal and rightful owner of the trademark PRETTYEARS and <prettyears.com>.  Complainant submits that she has used the PRETTYEARS mark on her product since February 2000 while Respondent has used <prettyears.com> since January 2003 for a pornography website.

FINDINGS

The Panel finds as follows:

1. The domain name <prettyears.com> is identical to Complainant’s marks PRETTYEARS and prettyears.com.

2. Respondent does not have rights or legitimate interests in the domain name.

3. Respondent registered and is using the domain name in bad faith.

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 has continuously conducted operations, advertised and offered its product under the PRETTYEARS mark since February 2000.  Complainant is the original registrant of <prettyears.com>, initially registered on July 22, 2000.  On the evidence before us, the Panel is satisfied that Complainant has sufficiently demonstrated rights in the PRETTYEARS mark for the purpose of Policy 4(a)(i).  See McCarthy on Trademarks and Unfair Competition, Section 25:74.2, Volume 4 (2000) (the ACANN Dispute Resolution Policy is “broad in scope” in that “the reference to a trademark or service mark” “in which the Complainant has rights” means that “ownership of a registered mark is not required - unregistered or common law trademark rights will suffice” to support a domain name complaint under the policy). On the evidence before us, Complainant has common law rights in the trademark and the trademark is sufficiently distinctive to permit the acquisition of those rights.

There is no question that the disputed domain name <prettyears.com> is identical to Complainant’s PRETTYEARS mark. Complainant has established the first element.

Rights or Legitimate Interests

Complainant essentially argues that Respondent has opportunistically registered the domain name after Complainant’s domain name registration accidentally lapsed.  Complainant contends that it was the original registrant of <prettyears.com>  and that its registration expired because of alleged procedural irregularities over which it had no control.  Complainant provided documentation which was not contradicted, that shows that the subject domain registrations’ renewal was not due until January 2003.

Under Policy 4(c)(i), Respondent can show rights to and legitimate interests in the domain name by demonstrating that before any notice of the dispute, Respondent has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.  In this case, Respondent has provided no evidence whatsoever of any use of or demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services.

Under Policy 4(c)(ii), there is no evidence that Respondent has been commonly known by the domain name or that Respondent has required any trademark or service mark rights in the name.

Lastly, there is no evidence that Respondent is making any legitimate non-commercial or fair use of the domain name without its intent for commercial gain.

Respondent states that it is in the business of buying domain name registrations that appear to hold intrinsic value and then using the domain names to promote various affiliate programs or selling the registrations at a later date.  In this case, the inference to be drawn from all of the evidence, however, is that Respondent opportunistically registered the disputed domain name when it discovered that Complainant’s domain name had accidentally lapsed.  The registration by Respondent took place virtually immediately following the lapse of Complainant’s domain registration.

Respondent has failed to show that it has a right to or legitimate interest in the disputed domain name. Complainant has established the second element.

Registration and Use in Bad Faith

Policy 4(b)(i) states there will be bad faith where there are circumstances indicating respondent registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s out-of-pocket costs directly related to the domain name.

Complainant asserts that Respondent registered and used the domain name in bad faith in this sense because Respondent was aware that the domain name was “released in error” from Complainant’s control. In this case, where the domain name was previously used by Complainant, the Panel is entitled to infer bad faith in the absence of any evidence to the contrary.  See InTest Corp. v. Servicepoint FA95291 (Nat. Arb. Forum Aug 30, 2000). Here, Respondent registered the disputed domain name immediately after the name was “released.” Other than a general explanation that Respondent is in the business of buying and selling domain names and promoting various affiliate programs on the Internet, Respondent has not provided any explanation for why Respondent chose the name <prettyears.com> and why Respondent chose that name when it did. On all the evidence before us, the logical inference to be drawn is that Respondent took advantage of the error in lapse of the disputed domain name registration and Complainant’s failure to renew it. The Panel is of the view that these circumstances amount to bad faith within the meaning of Policy 4(b)(i), and therefore Complainant has established the third element.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <prettyears.com> domain name be TRANSFERRED from Respondent to Complainant.

Anne M. Wallace, Q.C., Panelist
Dated: April 21, 2003

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