|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
DECISION
The Tan Factory c/o Jeff D'Alessio v.
DefaultData.com c/o Brian Wick
Claim Number: FA0409000327674
PARTIES
Complainant
is The Tan Factory c/o Jeff D'Alessio (“Complainant”), 5067 S. Arville St., Las Vegas, NV
89118. Respondent is DefaultData.com c/o Brian Wick (“Respondent”),
P.O. Box 481002, Denver, CO 80248.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <tanfactory.com>,
registered with Enom, Inc.
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.
David
H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 14, 2004; the Forum
received a hard copy of the
Complaint on September 15, 2004.
On
September 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <tanfactory.com> is
registered with Enom, Inc. and that the Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent
is bound by the Enom, 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
September 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”)
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@tanfactory.com by e-mail.
The Commencement Notification set a deadline of October 12, 2004 by
which Respondent could file a Response to the Complaint.
A
timely Response was received and determined to be complete on October 12, 2004.
On
October 18, 2004, Complainant timely filed an additional submission in
accordance with NAF Supplemental Rule 7(A).
On October 19, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David H.
Bernstein as Panelist.
Shortly thereafter, also on October 19, 2004, Respondent timely filed a response to
this additional submission, in accordance with NA Supplemental Rule 7(C).
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. INITIAL SUBMISSIONS
Complainant
asserts that it has satisfied the three elements required under the Policy.
First,
Complainant asserts that it possesses trademark or service mark rights that are
identical or confusingly similar to the domain
name. Complainant states that it has a federal trademark registration
for “The Tan Factory,” that it has done business as a tanning salon
under the
name “The Tan Factory, LLC” since 1997 and that it uses “Tan Factory” in its
advertising.
Second,
Complainant alleges that Respondent lacks rights or a legitimate interest in
the domain name. Complainant alleges
that Respondent does not use the domain name in connection with a bona fide
offering of goods or services; that
Respondent has not been commonly known by
the domain name; that Respondent holds the registration of the domain name for
the sole
purpose of reselling it; and that Respondent holds no trademark
registration for “Tan Factory.”
With
respect to the third element required under the Policy, the Complaint states in
its entirety: “[T]here are
circumstances indicating that Respondent has registered or has acquired the
domain name primarily for the purpose of
selling, renting, or otherwise
transferring the domain name registration to the Complainant or to a competitor
of that Complainant,
for valuable consideration in excess of Respondent’s
documented out-of-pocket costs directly related to the domain name.”
Respondent
contests all of Complainant’s assertions.
As to the first element, Respondent contends that Complainant’s
ownership of a registration for the mark “The Tan Factory” should
not give it
rights. In summary, Respondent argues:
1) “Tan Factory” is a generic term or, if descriptive, it cannot be protected
as a trademark without
a showing of secondary meaning, and Complainant has not
shown and cannot show that “Tan Factory” has acquired secondary meaning;
2)
other businesses use the name “Tan Factory;” 3) Complainant acquired the
trademark registration for “The Tan Factory” mark through
an assignment on
August 8, 2004, which constitutes bad faith “trademark borrowing”; 4) Complainant
did not file its own application
to register “Tan Factory” until August 9,
2004; 5) Respondent used the domain name prior to the Complainant’s August 9,
2004 trademark
application; and 6) recognizing rights of Complainant to this
generic term will allow Complainant to gain control over a group of
similar
domain names.
Turning
to the second element, Respondent claims that it has made bona fide use of the
domain name. First, Respondent claims
use of the domain name in a “third party sponsored results advertising capacity
(i.e. Pay-Per-Click using
Google Overture or Findwhat),” and argues that such
use was recognized as a bona fide use by the panel in carsales.com.au
Limited v. Alton L. Flanders, D2004-0047 (WIPO Apr. 8, 2004). Second, Respondent claims to be developing a
“‘yellow page’ forum” for its domains similar to <tanfactory.com>. Third, Respondent observed, “Google,
Overture and other advertising aggregators rely on and compete heavily for use
of generic or
common use domains – demonstrating that even ‘potential’ Internet
user type-in traffic alone is a bona-fide use – regardless of how
the domain is
currently used, if at all.”
Respondent
answered Complainant’s assertions as to the third element required under the
Policy by arguing that Complainant had offered
no evidence of Respondent’s bad
faith.
In
its additional submission, Complainant responded to the points made by
Respondent.
In
regard to the dispute over the first element required under the Policy, Complainant
countered that, under 15 U.S.C. § 1115(a),
federal registration of a mark is prima
facie evidence of the registrant’s exclusive right to use the mark in
connection with the goods and services specified in the registration,
and that
Respondent has not overcome this prima facie evidence of Complainant’s
right to the mark. Moreover,
Respondent’s failure to seek cancellation of its “The Tan Factory”
registration, or to oppose its pending applications,
shows that Respondent has
conceded that the registration is valid.
Complainant observed as well that the registration states a date of
first use of the mark of February 1, 2001, more than a year prior
to
Respondent’s registration of the domain name.
In addition, Complainant argues, the fact that it acquired the
registration through assignment is irrelevant to the issue of ownership.
In
regard to the dispute over the second element required under the Policy,
Complainant asserts that Respondent is profiting by providing
advertising links
for competitive tanning salon services,[1]
but that Respondent does not provide its own tanning salon services. Complainant also states that the high number
of domain names owned by Respondent proves it is guilty of cybersquatting.
In
regard to the dispute over the third element required under the Policy,
Complainant countered by stating that, after Complainant
challenged
Respondent’s registration of the domain name, Respondent asked Complainant to
submit an offer to purchase the domain name,
and that this evidences Respondent’s
bad faith in registration.[2]
Respondent
submitted a response to Complainant’s additional submission. Among its many arguments, Respondent asserts
that his position on the first factor is supported by the NAF decision in Men's
Wearhouse Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), in
which the panel found “suit warehouse” generic.
PROCEDURAL RULING
This Panel has frequently written on the subject of
additional submissions. Although there
are limited circumstances in which such additional submissions may be
warranted, e.g.,
Top Driver, Inc. v. Schaengold, Case
No. D2002-0972 (WIPO Jan. 7, 2003) (submitting new, pertinent facts that did
not arise until after submission of Complaint);
Pet Warehouse v. Pets.Com,
Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000) (submitting new, relevant
legal authority); Radan Corp. v. Rabazzini Winery, Case No. D2003-0353
(WIPO July 28, 2003) (submitting evidence to rebut factual arguments that could
not have been anticipated in Complaint),
and although the National Arbitration Forum Supplemental Rules provide a
procedure for such submissions, NAF Supp. Rule 7, such submissions
should be
the exception rather than the rule, and should only be filed when necessary to
bring new facts or law to the Panel’s attention
or to rebut an unexpected
argument. Electronic Commerce Media,
Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000).
Parties,
however, appear to believe that routine replies and sur-replies are
appropriate, much as is expressly permitted in some litigations. Not only are such routine responses
inconsistent with the Rules as promulgated by ICANN, World Wrestling
Federation Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24,
2001) (supplemental submissions showed not be used to reargue issues already
submitted), but also they drive
up costs (both for the parties and the
panelists) and can delay the conclusion of a process that is supposed to be as
inexpensive
and efficient as possible, within due process constraints. See AmeriCares Found., Inc. v. Ewing, D2003-0347
(WIPO June 26, 2003) (saving parties expense of unnecessary supplemental
briefing because request for leave to file supplemental
submissions denied).
Most of Complainant’s additional submission did
nothing but react to Respondent’s arguments, many of which could have been
anticipated
or were so lacking in merit as to require no response. The bad faith section, though, did
more: In an effort to remedy the
obvious deficiency of the initial pleading (as quoted above), it alleged facts
(regarding an offer to sell)
that could and should have been asserted in the
initial Complaint. This is improper.
In this case, it makes no difference because, as
discussed in footnote number 2, supra, even the facts Complainant now
alleges fail to prove bad faith registration and use. That said, it is essential that Complainants put all relevant and
necessary allegations in the Complaint, as specifically required
by the Rules. Rule 3(ix).
Otherwise, Respondents will not have fair notice of the allegations and
a fair chance to respond to those allegations in the Response. When complainants include new allegations in
their replies, it can constitute sandbagging (though, in this case, it appears
to be
more from incompetence than malice) and forces respondents to incur
additional costs in preparing sur-replies.
The prejudice is even greater in NAF cases, where respondents have to
pay a filing fee for the right to file a sur-reply.
Because Complainant’s supplemental submission was
improper, the Panel will disregard it.
In light of that ruling, Respondent’s supplemental submission is moot
and also will be disregarded.
FINDINGS
Having
carefully reviewed the evidence and the parties’ arguments, the Panel concludes
that Complainant has failed to prove that the
domain name was registered in bad
faith. Accordingly, the Panel denies
the request that it transfer the domain name to the Complainant.
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
The parties do not dispute that
Complainant owns a federal registration for the service mark “The Tan
Factory”. The only difference between
that registered mark and the domain name is the word “the” and the gTLD “.com”
– two elements with no
trademark significance.
Because these minor differences are immaterial for purposes of the
Policy, see EAuto, LLC v. Available-Domain-Names.com, D2000-0120
(WIPO Apr. 13, 2000) (finding trademark “EAUTO” confusingly similar to
e-auto-parts.com), the Panel concludes that the
domain name is confusingly
similar to the Complainant’s mark.
Respondent, though, argues that
Complainant has no trademark rights (citing Men's Wearhouse Inc. v. Wick). In that case, the Complainant owned a design
mark containing the the words “suit” and “warehouse,” but both of those words
were disclaimed
(reflecting a PTO view that those words were either generic or
merely descriptive). In this case, the
word “tan” is disclaimed, but not “factory.”
This suggests that the PTO believed “factory” to be, at the minimum,
suggestive of salon services, rather than descriptive (a conclusion
that seems
right to this Panel on the limited record submitted). This fact distinguishes this case from the Men's Wearhouse
Inc. v. Wick decision.
Complainant’s
ownership of this federal registration is thus prima facie evidence of
ownership of a valid trademark. See
Commerce LLC v. Charles M. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9,
2002). Although Respondent argues that
the mark is generic or merely descriptive and that Complainant has failed to
submit evidence of secondary
meaning, a panel should not overturn the
presumption of validity absent compelling evidence. Elec. Commerce Media, Inc. v. Taos Mountain, FA 95344
(Nat. Arb. Forum Oct. 1, 2000). Because
Respondent has not submitted any such compelling evidence in this case, the
Panel concludes (for purposes of this proceeding)
that Complainant owns valid
trademark rights in the TAN FACTORY mark.
Respondent’s
final attack under the first factor is an argument that Complainant has engaged
in bad faith “trademark borrowing.” The
Panel in this case need not make any findings as to whether Complainant has
engaged in any such bad faith conduct.
Here, it is clear that Complainant (with common law trademark rights
going back to at least 1997) currently owns trademark rights
in the TAN FACTORY
mark; that is all that is required under the first factor. Landmark Group v. DigiMedia.com, L.P.,
FA 285459 (Nat. Arb. Forum Aug. 6, 2004).
Allegations concerning “trademark borrowing” may be relevant in
considering whether Complainant has proven bad faith registration
and use, but
as discussed below, the Panel finds no such bad faith and thus need not
consider whether Complainant has engaged in
“trademark borrowing” and whether
any such conduct is relevant in a UDRP proceeding.
Rights or Legitimate Interests
Complainant has made a prima facie showing
that Respondent lacks rights to the domain name. The threshold for making such a showing is quite low, since it is
difficult to produce evidence to support a negative statement. Here, Complainant has alleged that
Respondent has never been known by the domain name, does not use the domain
name for any bona fide
offering of goods or services, and has not demonstrated
preparations for such use. These
unsupported assertions, though sparse, are sufficient to make a prima facie
showing in regard to the legitimacy element.
Once a Complainant makes a prima facie
showing that a Respondent lacks rights to the domain name at issue, the burden
of production shifts to the Respondent to come forward
with evidence of its
rights to or legitimate interests in the domain name. As explained in Document Techs., Inc. v. Int’l Elec.
Communications Inc., D2000-0270 (WIPO June 6, 2000):
This “burden
shifting” is appropriate given that Paragraph 4(c) of the Policy, which is
entitled “How to Demonstrate Your Rights to
and Legitimate Interests in the
Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent
should provide to show that it has rights to or legitimate interests in the
domain name. The burden of proof, however, does not shift
as the Policy makes
clear that “the complainant must prove that each of these three elements are
[sic] present.” Policy, ¶ 4(a).
According to Paragraph 4(c) of the
Policy, Respondent may demonstrate its rights to or legitimate interests in the
Domain Name by
showing any of the following circumstances:
(i) before any notice to it of the
dispute, its use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) it (as an individual, business, or
other organization) has been commonly known by the domain name, even if it has
acquired no
trademark or service mark rights; or
(iii) it is making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert
consumers or to tarnish the trademark or service
mark at issue.
Respondent has not come forward with
sufficient evidence to demonstrate that it has a legitimate interest in the
domain name. Its bald claim,
unsupported by any documentary evidence, that it seeks to provide “third party
sponsored results advertising” is insufficient
to show a legitimate
interest. That is especially true given
that the Panel’s review of the website does not show any content related to
tanning services or tanning
factories; to the contrary, the only links provided
are to irrelevant “factoring” and lending services (and even there, it is not
clear whether these links are “third party . . . advertising”). It cannot be a legitimate use of the domain
name <tanfactory.com> to supply links to other webpages that have
no rational connection to tanning or factories.
Nor has
Respondent met its burden of coming forward with evidence showing demonstrable
preparations toward operating a “a zip code
based ‘yellow page’ forum for its
generic and common use domains, like TanFactory.com.” Even if such a “forum” would constitute a legitimate interest (an
issue on which this Panel need not rule), the absence of any evidence
of
“demonstrable preparations” is fatal to Respondent’s contention. See
World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Mere
assertions of preparations to make a legitimate use are not enough.”).
Accordingly, on
this admittedly skimpy record, Complainant has succeeded in showing that
Respondent lacks a legitimate interest in
the <tanfactory.com>
domain name.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy states that
any of the following circumstances, in particular but without limitation, shall
be considered
evidence of the registration or use of a domain name in bad
faith:
(i) circumstances indicating that the
Respondent has registered or 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 documented out-of-pocket costs directly
related to the domain name; or
(ii) the Respondent has registered
the domain name in order to prevent the owner of the trademark or service mark
from reflecting
the mark in a corresponding domain name, provided that it has
engaged in a pattern of such conduct; or
(iii) the Respondent has registered
the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its
web site or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship,
affiliation, or endorsement of the Respondent’s web site or
location or of a product or service on its web site or location.
In this case, Complainant has failed to
demonstrate that Respondent registered the domain name in bad faith.
As discussed above, the Complaint is
utterly devoid of any facts proving that Respondent registered and used the
domain name in bad
faith. Parroting the
legal standard (as the Complaint does) without providing any facts to
substantiate the claim of bad faith is grossly insufficient. For this reason alone, the Panel finds that
Complainant has failed to carry is burden of proof under the third factor. See Commerce LLC v. Charles M. Hatcher,
FA 105749 (Nat. Arb. Forum Apr. 9, 2002).
Another reason to find no bad faith
registration is Respondent’s certified claim that, at the time of registration,
it was not aware
of Complainant. Given
that Complainant appears to have had only a single “Tan Factory” salon location
at the time, that assertion appears to be credible. If Respondent was not aware of Complainant and its mark at the
time it registered the domain name, the registration cannot have been
in bad
faith vis-à-vis Complainant. Experimental
Aircraft Assoc. v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003).
DECISION
Because
Complainant has not demonstrated all three elements required under the ICANN
Policy, the Panel DENIES the Complaint.
David H. Bernstein, Panelist
Dated: November 3, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1460.html