Scribe Opco, Inc., d/b/a Koozie Group v. The No Company Inc.
Claim Number: FA2204001994308
Complainant is Scribe Opco, Inc., d/b/a Koozie Group (“Complainant”), represented by Jonathan G. Polak of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is The No Company Inc. (“Respondent”), represented by John A. Beam, III of Equitus Law Alliance, PLLC, Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coffeecoozies.com>, registered with Network Solutions, LLC.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.
On May 3, 2022, Network Solutions, Llc confirmed by e-mail to the Forum that the <coffeecoozies.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2022 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 postmaster@coffeecoozies.com. Also on May 6, 2022, 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 26, 2022.
On June 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
After receiving the case file, the Complainant submitted a Reply to
Respondent’s Answer dated June 6, 2022.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Scribe Opco, Inc., sells insulated beverage containers as well as bags, chairs, coolers, and more. The term KOOZIE is a coined term that was originally registered with the United States Patent and Trademark Office (USPTO) on December 16, 1980 (Registration No. 1143428), and was owned by Concept Enterprises, Inc., later known as Radio Cap Company, Inc. That registration was subsequently cancelled in 2001. Through a series of corporate transactions involving Complainant’s predecessor-in-interest, Norwood Operating Company (“Norwood”), an application for registration with the USPTO for the KOOZIE mark in connection with insulated containers was filed in connection with beverages claiming a first use date in 1979. See Reg. No. 3,240,989, registered May 15, 2007. Today the KOOZIE Trademarks are registered in association with Bags, chairs, custom imprinting and portable coolers. Complainant’s products are offered through Amazon.com as well as through www.koozie.com and www.kooziegroup.com.
Respondent’s <coffeecoozies.com> domain name is confusingly similar to Complainant’s KOOZIE mark as it incorporates the mark while replacing the “k” with a “c”, which has the same phonetic sound, and adding an “s” at the end of the mark, as well as the term “coffee”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interest in the <coffeecoozies.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed respondent to use its KOOZIE mark in the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to divert users for competing commercial use and create confusion as to the source and affiliation of Respondent’s website.
Respondent registered and uses the <coffeecoozies.com> domain name in bad faith because Respondent uses the disputed domain name to divert users for competing use and create confusion as to the source and affiliation of its website. More specifically, Respondent uses the dispute domain name to sell products including insulated beverage containers in competition with Complainant.
B. Respondent
Respondent’s <coffeecoozies.com> domain name is the registered domain name of The NO Company, Inc. The disputed domain name was registered on November 14, 2021.
Respondent claims that the term “Koozie” or “Coozie” is derived from the term “cozy” which is “a padded covering especially for a teapot to keep the contents hot.” Respondent uses the term “Coozie” for its products because his products are intended to keep coffee hot or cold and claims that numerous other manufacturers use the word “cozies” as a generic description for drinkware to keep beverages hot or cold.
The <coffeecoozies.com> domain name is not confusingly similar to Complainant’s mark because Respondent’s domain name adds the word “coffee” and is not merely a misspelling. Additionally, Respondent finds no record of Complainant trademarking coffee products or tumblers. Finally, the term “coozie” is commonly used. In addition, Respondent claims that there are several patents used in connection with beverages that contain the term “Coozie” in their titles.
Respondent has rights and legitimate interests in the <coffeecoozies.com> domain name because Respondent owns insulated design patents for can cooler and tumblers. It claims that Claimant is violating its patent rights by selling a stainless steel can cooler product that appears to infringe on Respondent’s patented tumbler product.
Respondent has registered and uses the <coffeecoozies.com> domain name in good faith because Respondent is using a term that is widespread in combination with the word “coffee”.
C. Additional Submissions
Complainant submitted a reply to Respondent’s answer on June 6, 2022 to correct what it believes as factual inaccuracies in the Respondent’s filing. Because those alleged inaccuracies are not relevant to the Panel’s determination in this matter, the Panel does not need to accept that filing.
Under the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel does not need to accept the Complainant’s additional submission as it does not change the findings in this case as demonstrated below.
Respondent, in its answer, makes a number of legal arguments regarding the trademark rights of Complainant to the KOOZIE trademarks under US Trademark law. For example, Respondent argues that the Complainant’s KOOZIE marks are generic and unprotectable under United States law. It does this by going into a discussion of what it believes is the origin of the KOOZIE marks and therefore tries to suggest that the mark is descriptive of the goods/services provided. Further, it attempts to use precedents established under the United States Lanham Act which are generally not applicable under the UDRP. The UDRP is not a policy that determines whether there is trademark infringement under the Lanham Act, but rather whether a domain name has been registered and used in bad faith. This will be discussed in more detail in the Discussion section below. Suffice it to say that although parties are free to litigate these issues under Policy ¶ 4(k) in a national court system, those arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements.
In addition, Respondent makes a number of affirmative defenses / counter claims asserting that the Complainant has infringed its patents with respect to Complainant’s products. This too is beyond the scope of a UDRP proceeding and is best handled in a court of competent jurisdiction.
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to U.S. trademark or patent law.
In accordance with UDRP Rule 3(b)(xii), Complainant states that it will submit to the jurisdiction of the location of the principal office of the concerned registrar with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name. Respondent, however, states that it denies Complainant’s choice of jurisdiction and states that it will submit to the jurisdiction of the United States District Court for the Middle District of Tennessee where its principal office is located.
According to the UDRP Rules, a Complainant is the only party that needs to submit to mutual jurisdiction in either where the registrar is located or where the registrant is located. That choice is at the sole discretion of the Complainant. In essence, the UDRP requires that a Complainant agree to personal jurisdiction in either of those jurisdictions. Although Respondent is free to file litigation in any jurisdiction it sees fit at any time, if it does so, it must establish personal jurisdiction over the Complainant. If the Respondent chooses a location other than where the Complainant has consented to jurisdiction, it files that litigation at its own risk and must demonstrate to the court that the jurisdiction in which it filed was proper. That said, a Respondent may not “deny” the location of jurisdiction chosen by the Complainant and substitute its own proposal for jurisdiction.
1. Complainant has been using the KOOZIE mark (“Mark”) in connection with insulated containers for beverages since at least as early as 1979. Complainant owns numerous registered trademarks globally all of which are valid and in full force and effect.
2. The disputed domain name <coffeecoozies.com> is identical or confusingly similar to the Mark under the Policy.
3. Complainant has not licensed or otherwise authorized Respondent to use its Mark, nor is Respondent commonly known by the Mark. In addition, Respondent is not using the domain name in connection with a bona fide offering of goods or services under the Policy.
4. Complainant has established that the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In addition to demonstrating that that the Disputed Domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <coffeecoozies.com> domain name. Under Policy ¶ 4(c)(i) and (iii), relevant WHOIS Information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of information demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name”). In addition, Complainant rightfully points out that for the purpose of determining whether a Respondent is commonly known by the disputed domain name, the Respondent must have been commonly known by that domain name at the time it registered the disputed domain name under Policy 4(c)(ii). See Neteller plc v. Prostoprom D2007-1717 (WIPO January 23, 2008)(“It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operated a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii)”).
The Panel agrees with Complainant that there is no evidence in the record that establishes that the Respondent was commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”) at the time it registered the disputed domain name. The WHOIS of record, along with response, identifies Respondent as “The NO Company and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its KOOZIE mark in the disputed domain name. Therefore, if the Panel agrees, it may find Respondent is not commonly known by the disputed domain name under Policy ¶ 4(a)(i).
Once a prima facie case has been made, the burden shifts to the Respondent to demonstrate that it does in fact have rights or legitimate interests in the Disputed Domains. A Respondent can do this under Policy ¶ 4(c) by establishing one of the following non-exclusive defenses:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent 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.
Complainant argues that Respondent does not use the <coffeecoozies.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent, however, claims that it has legitimate rights in the domain name because it actually uses the website on the disputed domain name to sell what it calls Coffee Coozies. Further it contends that it has a legitimate right to use the <coffeecozies.com> domain name because Respondent was granted patent protection on a “can cooler” and a “tumbler” and provides a copy of pages from a third party’s patent (No. 4,293,015) as an Exhibit to its Answer. A review of the patent documentation does show that the owner of that patent (who is not the Respondent) used the term “insulated beverage cozy” to describe its invention. Although Respondent states that it is the owner of Patents numbered D829,056 and D828,724, the Respondent itself is not listed as the Inventor of those patents, though like all patents it lists individual inventors as opposed to the entities in which they are employed.
Regardless of whether the Respondent does own the two patents referenced in its Answer, terms that are used in patent applications do not confer any trademark rights in the words that are used to describe the patents. Patent examiners review many aspects of a patent application; however, they do not review whether an applicant has trademark rights in each of the terms that are used to describe its invention. In the United States, trademark examiners perform that function. Although both patent examiners and trademark examiners both are employed by the same governmental agency, their roles are very different. Thus, the terms one uses in a patent application are not relevant for the purposes of establishing whether a Respondent has rights or a legitimate interest in the disputed domain name under the Policy.
In addition, it is also worth noting that Respondent attempts to demonstrate it has legitimate rights to the disputed domain name by arguing that the terms “Coozie”, “Koozie” and “Cozy” are all generic terms used to describe insulated beverage containers. As evidence, Respondent submits an article entitled “Is it Coozie, Koozie or Cozy? – Mystery Solved” dated April 10, 2021, written by Dane Wilson and published at SoundBrewery.com. Respondent provides no information about the credibility of the source of this article, nor does it describe why the Panel should consider this article authoritative on the subject matter of this dispute. That said, in a section of the article entitled “Is Koozie Trademarked?”, the author does acknowledge that the Complainant is in fact the owner of the Koozie trademark. Despite the author admitting that it is not a trademark lawyer and that it knows “next to nothing about trademarks,” the author then claims that “the term “Koozie” has become a de facto terminology [sic.] for something that you use to keep your beer or drink cool by wrapping it in some form of insulation.”
As stated in Preliminary Issue No. 2 above, it is not for a UDRP Panelist to determine whether a trademark issued by a national trademark office, especially a national trademark office that performs a substantive review of all trademark applications, either (i) erred in granting a trademark registration to the Complainant or (ii) that a registered trademark has become generic (thereby causing the trademark owner to lose the ability to enforce its trademark rights). That can only be decided in courts of competent jurisdiction. A UDRP panelist must generally assume the validity of such trademarks and that such rights are enforceable. Thought it is true that a panelist can weigh the strength of a mark in its analysis of the second and third elements of the policy, a panelist cannot declare a mark invalid based on descriptiveness or genericness.
Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users to a competing website for commercial use does not constitute a bona fide offering of goods or services. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant further argues that Respondent does not use the <coffeecoozies.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because it diverts internet users and creates a false sense of affiliation with Complainant. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users and create a false sense of affiliation or confusion as to the source of a website does not constitute a bona fide offering of goods or services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, where Respondent sells products in competition with Complainant’s goods and the disputed domain name adds the term “coffee”, uses a phonetically identical spelling, and adds an “s” for plurality. See Compl. Exs. K, L, and M.
Therefore, based on the evidence submitted, the Panel agrees with Complainant that based on the evidence submitted the Complainant has demonstrated that Respondent neither has rights nor a legitimate interest in the disputed domain name nor is it using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). This is further discussed below.
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
Complainant argues that Respondent registered and uses the <coffeecoozies.com> domain name in bad faith by using the disputed domain name’s resolving website in competition with Complainant. Under Policy ¶ 4(b)(iii), using a disputed domain name for competing use demonstrates bad faith registration and use. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Complainant also argues that Respondent registered and uses the <coffeecoozies.com> domain name in bad faith by creating confusion as to the source and false sense affiliation with Complainant’s mark. Under Policy ¶ 4(b)(iv), using a disputed domain name to create a false sense of affiliation and confusion among users is evidence of bad faith registration and use. See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In the present dispute, the evidence clearly establishes that Respondent was fully aware of the term Koozie when it registered the disputed domain name in November 2021. The fact that Respondent may have believed that the term Koozie was descriptive or generic for use in connection with providing insulation to keep beverages hot or cold cannot serve as a defense to the claim that the domain name was registered in bad faith under the Policy. This is especially the case where the dominant portion of the disputed domain name was a coined term by a predecessor in interest to the Complainant and where the domain name is being used to sell products that compete with the Complainant.
The evidence also clearly establishes that the domain name is being used in bad faith under the Policy by Respondent to compete with the Complainant and to divert Internet users to its own website for commercial gain and to purchase Respondent’s products. Respondent has continued to use the disputed domain name despite applying for trademark protection for the term “Coffee Coozie” with the USPTO and having that application rejected on the basis that it created a likelihood of confusion with Complainant’s KOOZIE Trademarks. The Respondent itself submitted evidence to this UDRP dispute that concedes that the term KOOZIE is in fact a trademark owned by Complainant. Although that evidence also states that the term KOOZIE (and its phonetic equivalents) is the standard de facto terminology used to describe insulated beverage coverings, the author admits to “not knowing anything about trademarks.”
The Respondent has every right to litigate in a court of competent jurisdiction whether the terms KOOZIE and COOZIE are descriptive or generic. However, unless and until a court or competent jurisdiction determines that the terms are in fact generic or descriptive, the Panel must accept Complainant’s rights in connection with its registered trademarks. Therefore, the Panel finds that under the Policy the Respondent has indeed registered and used the domain name <coffeecoozies.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coffeecoozies.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: June 21, 2022
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