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Lifetime Products, Inc. v. IQ Management Corporation [2004] GENDND 1493 (12 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lifetime Products, Inc. v. IQ Management Corporation

Case No. D2004-0719

1. The Parties

The Complainant is Lifetime Products, Inc., Clearfield, Utah, United States of America, represented by Workman Nydegger, United States of America.

The Respondent is IQ Management Corporation, Belize City, Belize, represented by Paul Gordon, Belize.

2. The Domain Name and Registrar

The disputed domain name <lifetimeproducts.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2004. On September 8, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 8, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 5, 2004. The Response was filed with the Center on October 6, 2004.

The Center appointed J. Nelson Landry as the Sole Panelist in this matter on October 15, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

Having observed in the Complaint that evidence was not specific in respect of the date of registration of the domain name in dispute on one hand, and that the Respondent had not inserted in his response the certification required under the Rules, a procedural order was issued whereby Complainant and Respondent were requested to provide specific evidence or remedy by November 5, 2004.

On November 5, 2004, Complainant provided additional evidence in relation to the May 11, 2002 date, and Respondent provided the missing certification.

4. Factual Background

The Complainant has been in business since 1986 starting with the introduction of an adjustable basketball pole and portable basketball system. In 1995 it introduced a new blow-molded, polyethylene picnic table and in 1998 it developed a stronger, lighter, and more durable banquet table which products may be purchased from retailers, such as Wal-Mart, Costco, Sam’s Club, Sears, in more than 50 countries around the globe.

This evolution is shown in the five United States registrations, one for LIFETIME, two for LIFETIME PRODUCTS and two for LIFETIME & DESIGN or logo. Consequently Complainant is the registered owner of the trademark “LIFETIME” under registration 2,656,296, “LIFETIME PRODUCTS” under registration No. 1,584,876 and 2,628,194 and “LIFETIME & DESIGN” under registration 2,046,057 and 2,628,195 in association with furniture and basketball backboards, poles and goals as specified in the registrations which registrations disclose dates within the period of June 1988 to February 1996. (herein collectively the “LIFETIME trademarks or LIFETIME PRODUCTS trademark”). In both registrations for LIFETIME PRODUCTS as shown in Exhibits 3 and 4, there is a disclaimer for the word “products”. LIFETIME is therefore the distinctive element in these registrations.

There is ample evidence from the Annexes to the Complaint and Response to the Procedural Order and as seen upon visiting the website of Complainant, there numerous examples of use of the LIFETIME AND LIFETIME & DESIGN trademarks in association with the products of Complainant. Furthermore Complainant has used the ® indicia to inform the visitors that LIFETIME AND LIFETIME & DESIGN were registered.

Prior to May 11, 2002, Complainant has initiated a promotional program for its products where, in early 2002, it had spent a significant amount of the over $900,000 incurred in that year.

The domain name in dispute has been registered by Respondent on May 11, 2002.

Respondent is not and has never been a licensee of Complainant and has not been authorized to use the “Lifetime Products” trademark of Complainant.

On June 22, 2004, and again on August 18, 2004, an employee of Complainant entered the domain name in dispute, <lifetimeproducts.com> and was re-directed to “search4l1.com”.

Upon verification by the Panel, “search411.com” is a search engine where on the webpage to which one is redirected there appears a number of headings, such as Arts & Entertainment, Autos and many others including Sports.

Complainant also owns the domain name <lifetime.com> and has done so since February 1997.

Respondent is not selling basketball hoops and picnic tables from the domain name in dispute <lifetimeproducts.com> and according to Mr. Gordon, has no intention of doing so.

5. Parties’ Contentions

A. Complainant

Complainant contends to be now the world’s largest manufacturer of residential basketball equipment, picnic tables, lighter, and more durable banquet tables which products may be purchased in retailers’ stores such as Wal-Mart, Costco, Sam’s Club and Sears in many countries.

Complainant submits that its LIFETIME PRODUCTS trademark is identical to the domain name in dispute with the exception of the suffix”.com” and that Respondent is not and has never been a licensee of Complainant nor authorized to use Complainant’s trademark of which Complainant has presented prima facie evidence of its exclusive right to use the said trademark LIFETIME PRODUCTS in connection with the goods and services covered by its registrations. However in its response to the Procedural Order, Complainant has further put in evidence its LIFETIME and LIFETIME & DESIGN trademarks registrations and their substantial use.

Complainant contends that Respondent has never held itself out as Lifetime Products or acquired trademark rights similar or identical to the domain name in dispute and that Respondent has made no visible progress since registration in 2002 or in the last two months toward using the domain name in dispute. According to Complainant, Respondent’s only use of the trademark “Lifetime Products” is to funnel web traffic to Respondent’s website.

Complainant further contends that Respondent has shown a pattern of registering marks confusingly similar or identical to other well-known brand names which demonstrate bad faith and thus relies on numerous UDRP panel decisions: Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272 (citing Fatbrain.com, Inc. v. IQ Management Corporation, NAF Case No. 96374 involving same respondent as in this Complaint) wherein panel held that “Respondent IQ Management Corporation has demonstrated a pattern of conduct, by registering domain names such as <ebay2.com>, variations of KATE SPADE, COACH, EBAY, KENNETH COLE, GUCCI or TOMMY BAHAMA trademarks. Similar findings were made in V&S & Sprit Aktiebolag v. IQ Management Corporation; Fatbrain.com, Inc. v. IQ Management Corporation. NAF Case No. 96374; and DJR Holdings, LLC v. Paul Gordon a/k/a IQ Management Corporation, NAF Case No. 141813.

Complainant further submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute, in that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name in dispute in connection with a bona fide offering of goods or services considering that the said domain name in dispute was used to re-direct internet visitors to “search4l1.com”. Furthermore according to Complainant the Respondent has made no visible progress since registration in 2002 or in the last two months toward using the domain name in dispute, its only use of the domain name in dispute is to funnel web traffic to Respondent’s website. Hence Respondent has not “used the domain name in dispute in connection with a legitimate non commercial or fair use without intent for commercial gain”. Fatbrain.com, Inc. v. IQ Management Corporation [2001] GENDND 414, citing Hartford Fire Ins. Co. v. Webdeal. com, Inc., NAF Case No. 95162.

Complainant contends that Respondent has not been commonly known by any known trademark or service mark, in that Respondent has never held itself out as Lifetime Products or acquired trademark rights similar or identical to the domain name in dispute. Fatbrain.com, Inc. v. IQ Management Corporation [2001] GENDND 414, citing Hartford Fire Insurance Company v. Webdeal.com, Inc., NAF Case No. 95162.

Complainant submits that the domain name in dispute was registered and is being used in bad faith. The Respondent has registered and is using the domain name in dispute in bad faith by knowingly registering and using the Complainant’s famous LIFETIME PRODUCTS trademark as a domain name, using the LIFETIME PRODUCTS trademark intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and engaging in a pattern of registering well-known marks and variations thereof.

Complainant contends that given the fact that the two LIFETIME PRODUCTS trademarks are registered on the United States principle register, Respondent knew or should have known of the fame and worldwide reputation of the Complainant’s trademark because of the knowledge of the Complainant’s LIFETIME PRODUCTS trademark, the Complainant’s numerous registrations in the United States and worldwide constitute constructive notice to the world of the existence and validity of its trademark rights. 15 U.S.C. § 1072, Mariott International, Inc. v. Momrn Anaed Ia, NAF Case No. 95573. Complainant submits that there is little doubt that Respondent was aware of the LIFETIME PRODUCTS trademark when it registered the domain name in dispute and that Respondent is using this fame to route traffic to a commercial website promoting services, which constitutes use in bad faith. Marriott International, Inc. v. Momm Amed la, NAF Case No. 95573.

According to Complainant, the Respondent uses the LIFETIME PRODUCTS trademark intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and furthermore the fact that the Respondent has engaged in a pattern of registering well-known marks and variations thereof which shows bad faith. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272 (citing Fatbrain.com, Inc. v. IQ Management Corporation, NAF Case No. 96374, V&S & Sprit Aktiebolag v. IQ Management Corporation, (supra); Fatbrain.com, Inc. v. IQ Management Corporation. NAF Case No. 96374; and DJR Holdings, LLC v. Paul Gordon a/k/a IQ Management Corporation, NAF Case No. 141813.

B. Respondent

The Response from Respondent which has been certified as accurate pursuant to the Procedural Order is rather unusual in its presentation. It is a mixture of criticisms of the ICANN system, some complaints about earlier treatment of the same Respondent in previous UDRP decisions and then a presentation of some facts and representations either specifically submitted by the Respondent or by analogy of argument in quoting from or paraphrasing certain UDRP decisions and panel comments therein. Pursuant to a detailed review and analysis of the Response, this Panel understands that the following submissions were made by the Respondent.

Respondent contends that the LIFETIME PRODUCTS trademark is a trademark which

(a) consists of a description of a product quality, merely common words resulting in a domain name which has its own inherent commercial value and must be given some weight. Capt’n Snooze Management Pty Limited v. Domains 4 Sale, WIPO Case No. D2000-0488;

(b) is generic in that it does no more than describes a quality of products or services without distinguishing the source of origin. Respondent accordingly relies on an earlier UDRP decision which held that such trademarks cannot be appropriated or monopolized and are therefore not entitled to protection, Media West-GSI, Inc., and Gannett Satellite Information Network, Inc., d/b/a The Burlington Free Press v. EARTHCARS.COM, INC., WIPO Case No. D2000-0463. Respondent argues that such trademarks cannot be appropriated or monopolized and are therefore not entitled to protection. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 2757 (1992); CES Publishing Corp. v. St. Regis Publications, Inc., [1975] USCA2 834; 531 F.2d 11, 13 (2d Cir. 1975); Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp. 2d 488, 494 (E.D. Va. 1999);

(c) is a generic term. Respondent argues that registration of an ordinary English language word as a domain name and use of that domain name for that ordinary English language can be a legitimate interest. He relies on the decision Thrifty, Inc. and Thrifty Rent-A-Car System, Inc. v. Peter George, WIPO Case No. D2002-0140 in respect of <thrifty.org> and also on Choice Courier Systems, Inc. v. William H. Kirkendale, WIPO Case No. D2002-0483 in respect of <choice.com>.

Respondent submits that it is not located in the United States and is not selling baseball hoops and picnic tables from <lifetimeproducts.com> and has no intention of doing so and submits that the Complainant has <lifetime.com> and <lifetimeinc.com> as domain names to promote its products.

In respect of its own activities, Respondent relies on the <craftwork.com> UDRP decision, General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.) NAF Case No. 92531 and represents that it has a legitimate interest in the domain name, an argument by analogy with the UDRP decision in respect of <craftwork.com>.

In respect of the pattern of conduct that has been raised by the Complainant and the numerous references to UDRP decisions against the same Respondent, Respondent submits that suspicion raised by a pattern of activities, which decisions he challenges on various grounds, cannot overcome a showing of legitimate business interest in a particular domain name. Respondent relies on the THQ Inc. v. Hamid Ramezany, NAF Case No. 96853.

Furthermore, Respondent contends that upon verifying an archive website of which he gives the address, it appears that the <lifetimeproducts.com> domain name, previously registered by the Complainant, lapsed sometime after November 2001, and therefore raised the question as why Complainant was silent in this respect. Respondent contends and has submitted evidence that Complainant was and still is the registered owner of <lifetime.com> and <lifetimeinc.com> domain names.

Finally, Respondent alleges on the basis of United States Court decisions that “the initial interest confusion that arises from a defendant use of a domain name is not legally significant where it is apparent when consumers reach a website that they are at the wrong site and have not reached the party they are looking for” and Respondent cites a Court decision which noted: “Internet surfers are inured to the false starts and excursions awaiting them”. Chatam International, Inc. v. Bodum, Inc. 157 F. Supp. 2d 549, 558; Strick Corporation v. James B. Stickland, Jr., 162 F. Supp. 2d 372, 377; Hasbro, Inc. v. Clue Computing, [2000] USCA1 262; 232 F. 3d 1, 2; Checkpoint Systems, Inc. v. Checkpoint Software Technologies, Inc. [2001] USCA3 220; 269 F. 3d 270.

In his Response Respondent argued that the UDRP decisions where he was involved in respect of <clbooks.com>, <absolutbeach.com>, <holidayin.com> and <defjamsouth.com> reached the wrong conclusions. Respondent’s main argument in this regard appears to be that the separate elements of such domain names constitute words in English or another language.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has in its evidence proven that it has adopted and made first use of the trademark LIFETIME PRODUCTS on which it relies in this case in 1995. The trademark was originally used in association with basketball equipment. Complainant obtained a registration for that mark shortly afterwards and has since expanded its line of business to pick-nick tables and filed an application and obtained a registration for the same trademark in association with different products.

Respondent contends that these words lifetime and products constituting Complainant’s LIFETIME PRODUCTS trademark are generic, descriptive, and common words in the dictionary.

There is some merit to this argument to the extent that upon examining Exhibits 3 and 4, the U.S. registrations entries, there is a disclaimer for the word “products”. However, there is no such disclaimer for the word “lifetime” and one must therefore assume that the U.S. Patent Office did not consider this term to be clearly descriptive of the quality of the wares with which the trademark is associated so as to refuse registration. Since the LIFETIME PRODUCTS trademark registrations do mention dates of first use of 1995 and 1998, one must understand that this trademark has been used for sometime before its registration and one must assume that the U.S. Patent and Trademark Office has most likely considered that this term, if not initially distinctive, had achieved secondary meaning and distinctiveness. Such a trademark benefits from a presumption of validity.

Has this trademark LIFETIME PRODUCTS become famous at the time that Respondent registered the domain name in dispute on May 11, 2002? The evidence offered by Complainant in this respect is slim and somewhat by inference. Upon reviewing the Complaint, as well as the declaration of an employee of the Complainant, we failed to see substantial evidence that throughout that period, the LIFETIME PRODUCTS trademark as distinct from LIFETIME AND LIFETIME & DESIGN logo was used in association with the goods mentioned in these two registrations.

Complainant, in its Response to the Procedural Order, has brought three other registrations for the trademarks LIFETIME and LIFETIME & DESIGN as well as evidence of advertisements costs and illustrations of such advertisements. These documents confirm what this Panel had observed in visiting, on his own initiative, the website under “www.lifetime.com”. We see numerous references to the LIFETIME & DESIGN logo with the ® indicia identifying a registered trademark and in other sentences, we see the use of the word “Lifetime” to refer to the company. Complainant has been using and promoting a family of LIFETIME trademarks which includes LIFETIME PRODUCTS.

On the basis of the evidence in this case, the Panel finds that the Complainant has at some point in time used the said LIFETIME PRODUCTS trademark and has registered rights therein. However this Panel finds that the evidence does not clearly support even on a prima facie basis that this LIFETIME PRODUCTS trademark is well-known or famous as Complainant contends.

It is not contested by the Respondent that the domain name in dispute is identical or confusingly similar to the LIFETIME PRODUCTS trademark and the Panel so finds.

Complainant has met the first criterion of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent lacks rights or legitimate interests in the domain name in dispute in stating that the Respondent has never been known by the name “lifetimeproducts” or the domain name in dispute and is not making a legitimate non commercial or fair use of the domain name in dispute.

Complainant has alleged that Respondent has not been known by the domain name in dispute or by the LIFETIME PRODUCTS trademark prior to the registration of the domain name in dispute and Respondent has not advanced any argument or evidence to the contrary and therefore, the Panel finds that Complainant has established this point. The burden was upon the Respondent to rebut this allegation of Complainant.

Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s LIFETIME PRODUCTS trademark.

Does the Respondent have legitimate rights and has it made a bona fide non commercial use of the domain name in dispute? In this respect, the evidence that has been adduced by the Complainant is that upon consulting the domain name in dispute, the Internet user is directed to “search411.com” as stated in the declaration of James Belshe. The Panel has obtained this webpage upon searching for the domain name in dispute. It appears within that webpage that there are numerous products of commercial nature that are listed therein, including sports articles. Furthermore, there is indication on this webpage that one may advertise one’s site from 1 cent per click. One can readily appreciate the commercial character of such website and the Respondent’s benefit from diverting users to the domain name in dispute.

The burden is upon Respondent to show under the circumstances of this case that the “search411.com” webpage does constitute a legitimate non-commercial or fair use of the domain name. In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the Panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name. Respondent, familiar with the Policy and Rules by reasons of earlier involvement in many cases, has not provided any evidence or explanation in this respect.

This Panel finds that under the Policy and Rules, in particular Paragraph 4(c)(iii) of the Policy, Respondent’s use is not legitimate.

This Panel finds that Complainant has established the second criterion.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

This Panel, upon considering the Complaint and the Response, has considered appropriate and necessary to have further evidence from the Complainant and certification of the evidence submitted by the Respondent. Considering the facts of this case, registration and use have to be considered separately, first for the obvious reason that they are different activities and secondly, that they are to be considered at different period of time.

Complainant submits that this Respondent has engaged in a pattern of registering domain names which are identical or confusingly similar with the trademark of Complainant. Respondent in his response in this case, sets our various explanations why those registrations were legitimate. The Panel notes that in most of the decisions cited, the trademarks at issue were shown to be well-known, thus supporting the conclusion that Respondent did not make its registrations by coincidence. This Panel believes that the domain name at issue has likewise not been registered by coincidence.

The Respondent has registered a domain name that essentially is identical to the Complainant’s LIFETIME PRODUCTS trademark but also encompassing the distinctive element “lifetime” of this trademark and two other registered trademarks of Complainant, LIFETIME and LIFETIME & DESIGN logo. The fact that these may, in other respect, be common generic words, does not overcome the fact that these are all registrations in the United States as well as in many other countries in the world and Respondent comments do not constitute a plausible explanation for registering the domain name in dispute. Moreover, it is to be noted that the disputed domain name contains the words “lifetime products” taken together. Furthermore, the Respondent uses the domain name in dispute to link to this “search411.com” webpage which the Panel has considered to be of commercial character in respect of which no explanation is given by Respondent.

As held in an earlier UDRP decision, “conduct that reveals a scheme or plan, a course of operations, is not irrelevant. Its probative value may be one of weight, but it is a matter, which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand”. Collections ETC., Inc. v. Cupcake Patrol, WIPO Case No. D2001-0305.

Considering all the facts, it remains that there is a domain name in dispute identical with the LIFETIME PRODUCTS trademark, the Respondent has no legitimate interest in the domain name in dispute and the practical effect of its registering the domain name in dispute is that it is likely to benefit from the Complainant’s goodwill. It is not for this Panel to decide if we are here in a situation of trademark infringement under US laws. Under the Policy, the question then is whether the Respondent “had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website”. In other words did the Respondent intend to divert Internet users. See International Business Publishers, Inc. v. The Center for Business Intelligence, LLC, WIPO Case No. D2001-0181.

Applying the test accepted in other UDRP decisions that “knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free ride of the Complainant’s goodwill), is the proper test”. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. This Panel finds that, in the absence of plausible explanation by Respondent, the latter intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark.

Paragraph 4(b)(ii) of the Policy cited above states that a pattern of conduct is found if one has registered the domain name in order to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. In this regard that Complainant may rely on a pattern of Respondent’s conduct. Respondent has commented on Complainant’s allegations without showing in what respect this registration differs from its past registrations.

For these reasons, the Panel does find that the domain name in dispute has been registered and used in bad faith and finds that Complainant has met the third criterion.

7. Decision

The Panel concludes that:

(a) the domain name <lifetimeproducts.com> is confusingly similar to the Complainant’s LIFETIME PRODUCTS trademark;

(b) the Respondent has no rights nor legitimate interests in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lifetimeproducts.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: November 12, 2004