NATIONAL ARBITRATION FORUM

 

DECISION

 

Party Maniacs, Inc. v. Michael Kuklinski

Claim Number: FA0904001258597

 

PARTIES

Complainant is Party Maniacs, Inc. (“Complainant”), represented by Christopher Kelly, of Wiley Rein LLP, Washington, D.C., USA.  Respondent is Michael Kuklinski (“Respondent”), of We Do Parties LLC, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thepartymaniacs.com>, registered with Melbourne IT.

 

PANEL

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

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 20, 2009; the Forum received a hard copy of the Complaint on April 21, 2009.

 

On April 22, 2009, Melbourne IT confirmed by e-mail to the Forum that the domain name <thepartymaniacs.com> is registered with Melbourne IT and that the Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 April 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2009 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@thepartymaniacs.com by e-mail.

 

A timely Response was received and determined to be complete on May 14, 2009.

 

On May 21, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist.

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

·        Complainant is the owner of the common law trademark PARTY MANIACS, which is the mark it uses in connection with its party entertainment services in the state of New Jersey.

·        Complainant has continuously used the mark to market and identify its services since at least 1996.

·        Complainant uses the mark in the Internet domain name <partymaniacsnj.com> and receives a significant portion of its business from the site located at that domain name.

·        The disputed domain name <thepartymaniacs.com> is confusingly similar to Complainant’s PARTY MANIACS mark. The only difference between the domain name and Complainant’s common law mark is the addition of the article “the” and the generic top-level domain “.com.”

·        Respondent has no rights or legitimate interests in the disputed domain name. Respondent uses the domain name to market the services of We Do Parties LLC, a competitor of Complainant. Respondent was an employee of Complainant from 2000 to 2004, and was therefore fully aware of Complainant’s rights in the PARTY MANIACS mark at the time he registered the domain name in 2006.

·        Respondent registered and is using the disputed domain name in bad faith. Respondent uses the mark to compete directly with Complainant by diverting internet users to Respondent’s website. Respondent is intentionally using the mark to mislead Complainant’s customers for its own commercial gain. Potential customers who encounter the domain name are likely to believe that Respondent is somehow affiliated with or endorsed by Complainant as a result of the use of the mark.

·        Complainant’s counsel sent Respondent a cease-and-desist letter dated March 6, 2009. Respondent has not offered a substantive response to the letter.

 

B. Respondent

 

Respondent contends that:

 

·        Respondent has a legitimate interest in using the domain name <thepartymaniacs.com>. The term PARTY MANIACS is a generic term related to the general class of party entertainment services, and therefore the Complainant does not have exclusive rights in the mark.

·        To prove the mark’s generic nature, Respondent claims that he has found more than five other companies using the PARTY MANIACS name. Respondent also claims to have found a dictionary definition for the term.

·        Respondent has over 10,000 customers nationwide and even outside the country, whereas Complainant provides services which are limited both in geographic scope and in the number of services offered.

·        Complainant’s mark is not well known and there is no immediate association in the minds of consumers between the term PARTY MANIACS and the Complainant’s services.

·        Complainant only commenced using a website in early 2008, after the Respondent registered the disputed domain name to market the We Do Parties LLC services.

·        Respondent did not register or use the disputed domain name in bad faith. The domain name was legally registered and is not being offered for sale. Respondent does not intend to create confusion, and Respondent’s use of the term PARTY MANIACS in the domain name is not confusing to consumers because the We Do Parties LLC website clearly identifies the company name, phone number, and address. Instead, Complainant is engaging in reverse domain hijacking to acquire the domain name after the Respondent refused to sell it.

 

FINDINGS

 

The Panel finds that:

 

·        Complainant has acquired common law rights in the mark PARTY MANIACS through continuous use of the mark in connection with the sale and marketing of its services.

·        The disputed domain name <thepartymaniacs.com> is confusingly similar to the Complainant’s mark.

·        Respondent has failed to rebut Complainant’s showing that Respondent lacks rights or a legitimate interest in the disputed domain name.

·        Respondent registered and is using the disputed domain name in bad faith as defined by the Policy.

 

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 to a Mark in which Complainant has Rights

 

Complainant has used the term PARTY MANIACS to identify its party entertainment services in New Jersey since 1996. At common law, trademark rights are acquired through continuous use in commerce, and these rights exist independent of registration. See Uitgerverij Crux v. Isler, D2000-0575 (WIPO Oct. 30, 2000) (finding business use of an unregistered mark for three years sufficient to create common law rights); see also Capotosto v. Steebar Corp., FA 135597 (Nat. Arb. Forum Jan. 16, 2003) (upholding common law rights in a mark based on its long-term use to sell and market products). It is well established that the ICANN Policy protects common law trademarks as well as registered marks. See, e.g., Universal City Studios Inc. v. Burns, D2001-0784 (WIPO Oct. 1, 2000).

 

To establish rights in a common law mark, the Complainant must provide evidence that the mark at issue has secondary meaning. A fundamental part of proving secondary meaning is evidence that the mark has become a distinctive identifier associated with the Complainant’s goods or services. See Imperial Coll. v. Dessimoz, D2004-0322 (WIPO June 30, 2004) (“[T]he Panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself.”). Such evidence can come in a variety of forms. See Bd. of Regents of the Univ. of Wis. Sys. v. NUCOM, D2002-0981 (WIPO Dec. 31, 2002) (identifying as relevant evidence prominent usage of the mark on the complainant’s webpage, the use of the mark in other hard copy publications, the use of a mark on specific goods, and the volume and extent of those uses); see also Amsec Enters. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (stating that secondary meaning can be proven by the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition). Here, Complainant has provided evidence of its use of the mark on business cards, flyers, pay records, and more recently, its own website. It has done business with more than 5,000 customers in the state over a period of thirteen years, and it has provided evidence that consumers in New Jersey use the name to recommend Complainant’s services. Complainant has demonstrated that the common law mark PARTY MANIACS has acquired sufficient public recognition and secondary meaning in its marketing area to warrant protection.

 

Respondent contends that PARTY MANIACS is a generic term, and thus can not be protected as a common law mark regardless of secondary meaning. However, even if the component words of a mark or phrase may be generic or common, in combination, they may still form a protectable mark. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”) Although “party” would be a generic term when applied to party-related services, the phrase PARTY MANIACS as a whole is not. Respondent erroneously treats the more common idiom “party animal” as interchangeable with “party maniac.” Not only does Respondent’s proof of the term’s ubiquity incorporate statistics relating to both terms, but the alleged dictionary definition which Respondent claims to have found for “party maniac” is actually the definition for “party animal.” “Party maniac” is not in the dictionary cited, further indicating that the combination of the component words is uncommon and not generic.

 

The disputed domain name is identical or confusingly similar to the Complainant’s mark. It is different only in that it contains the article “the” and the generic top-level domain “.com,” neither of which are sufficient additions to distinguish the domain name from the PARTY MANIACS mark. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the generic word “the” to the beginning of the domain names fails to make them separate and distinct.”); see also Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO Jul. 7, 2000) (finding that the addition of a generic top-level domain is “not relevant” to determining similarity, since it is required, necessary, and functional). Though this alone is sufficient proof of similarity to satisfy the requirements of the Policy, the finding is further supported both by the evidence that the parties are in the same industry and the Complainant’s proof of actual consumer confusion due to the disputed domain name. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (using the parties’ status as competitors as evidence of confusing similarity in a UDRP proceeding); see also Japan Airlines Co. v. TransHost Assocs. et al., D2000-0573 (WIPO Aug. 21, 2000) (using e-mail evidence of actual consumer confusion to support a finding of confusing similarity).

 

The Panel finds that Complainant has shown that the disputed domain name is confusingly similar to its mark under ICANN Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent has no rights or legitimate interests in the disputed domain name. N.A.F. panels require that a complainant first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show that it does have rights or legitimate interests in the name. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

Complainant has met its burden by demonstrating that Respondent is not commonly known by the PARTY MANIACS name and that the Respondent, as a former employee of Complainant, was aware of the Complainant’s rights in the mark. Respondent has failed to adequately rebut these claims under Policy ¶ 4(c). The Policy states that respondents can prove their rights and interests in a domain name in a number of ways, including but not limited to proving their use of the mark in connection with a bona fide offering of goods and services, proving that they have been commonly known by the domain name, or proving that they are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain or to divert consumers.

 

Respondent is not using the mark in connection with a bona fide offering of goods or services. Using a third party’s trademark to advertise one’s own services can never be a bona fide offering of services, even though the party entertainment services offered by We Do Parties LLC may be legitimate in other respects. State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000). Respondent did not prove that We Do Parties LLC is commonly known by the PARTY MANIACS domain name, nor do the words even appear on the Respondent’s business page. Moreover, because PARTY MANIACS is not a generic term, Respondent’s other arguments are unavailing. Respondent’s claim that he is trying to profit from the generic value of the words rather than Complainant’s goodwill and reputation is not credible. The Panel concludes that Respondent intentionally chose these words to divert Internet consumers away from Complainant’s site and services. See GlobalRx, Inc. v. Global Internet MKTG, FA 247953 (Nat. Arb. Forum Mar. 30, 2009) (finding that respondent selected domain name comprising “global” and “rx” to interfere with complainant’s business and did not randomly choose the terms for their generic value).

 

Respondent also claims an interest in the term PARTY MANIACS because it is an international provider of party services whereas Complainant’s use of the mark is narrow and geographically limited. However, the Policy makes no distinction between widespread and localized trademark rights, and a complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy. Austl. Trade Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002). Though Respondent alleges that it provides some different services and conducts business in multiple regions, the image Respondent provides as Exhibit 3 states that We Do Parties LLC services “the New Jersey and Metropltan [sic] Area” and identifies the company as the “#1 New Jersey Enterainment [sic] Option.” It is clear that the two businesses are direct competitors for party entertainment services in the same geographic region.

 

The Panel finds that Respondent has no rights or legitimate interests in the domain name under ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent registered and uses the disputed domain name in bad faith. Respondent has engaged in conduct that constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Though Respondent makes much of the fact that he never tried to sell the domain name to Complainant, this is only one of the many types of behavior which can indicate bad faith. The factors most relevant to this case are outlined in Policy ¶¶ 4(b)(iii) and 4(b)(iv), which support a finding of bad faith when the respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” or if the respondent has “intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

 

Respondent has clearly registered and used the domain name with the intention of disrupting Complainant’s business. Although Respondent’s page at <thepartymaniacs.com> bears the We Do Parties LLC name, phone number, and address, the use of the PARTY MANIACS mark in the disputed domain name creates sufficient initial interest confusion to warrant a finding of bad faith, particularly because the two parties are close competitors in the same geographic area and cater to the same consumers. See Tall Oaks Publ’g, Inc. v. Nat’l Trade Publ’ns, Inc., FA 94346 (Nat. Arb. Forum May 5, 2000) (finding initial interest confusion even when the site at the domain name containing complainant’s mark prominently displayed respondent’s own name, because parties were direct competitors in the same industry and the mark was being used to lure complainant’s potential traffic). In sum, the Panel finds that the Respondent chose the disputed domain name to create confusion about the affiliation of his party entertainment services with those offered by the Complainant, and to divert users seeking party services to his page using the goodwill and reputation associated with Complainant’s mark.

 

Additionally, as a former employee, Respondent was undoubtedly aware of the Complainant’s use and promotion of the PARTY MANIACS mark in connection with entertainment services in the New Jersey area. Although the disputed domain name was registered and used before Complainant obtained its web site at another address, the disputed domain name was not registered until two years after the Respondent’s employment at Complainant’s company ceased, and ten years after Complainant began using the mark. Registration of a domain name containing a former employer’s mark has often been held indicative of bad faith within the scope of Policy ¶ 4(a)(iii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (“Respondent's registration of the company name of his former employer as a domain name is an act of bad faith.”); see also William Hill Org. Ltd. v. Fulfillment Mgmt. Serv. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name”).

 

The Panel finds that Respondent has registered and used the domain name in bad faith under ICANN Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

 

Michael Albert, Panelist
Dated: June 2, 2009

 

 

 

 

 

 

NATIONAL ARBITRATION FORUM