BIRDSAFE.COM, Incorporated v MY SAFE BIRD STORE

national arbitration forum

DECISION

BIRDSAFE.COM, Inc. v. MY SAFE BIRD STORE
Claim Number: FA1010001355009

PARTIES

Complainant is BIRDSAFE.COM, Inc. (“Complainant”), represented by Paul E. Parker, Esquire of Bowles Rice McDavid Graff & Love LLP, West Virginia, USA. Respondent is MY SAFE BIRD STORE (“Respondent”), represented by Kathie Hahn, Esquire, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mybirdsafestore.com>, registered with GoDaddy.com, 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.

M. Kelly Tillery, Esquire as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2010; the National Arbitration Forum received payment on October 27, 2010.

On October 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mybirdsafestore.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2010 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@mybirdsafestore.com. Also on November 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 15, 2010.

Additional timely submissions were received from Complainant on December 20, 2010 and from Respondent on December 29, 2010.

On December 20, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

1. it was chartered by the Commonwealth of Virginia on April 20, 2000 and has operated continuously, without interruption, in commerce since that time;

2. it acquired the domain names <birdsafe.com> on January 31, 2000 and <birdsafestore.com> on February 23, 2001 and both are currently active, and have been continuously so since they were acquired;

3. it has used the common law service mark THE BIRDSAFE STORE continuously, without interruption, in commerce since 2000 to identify it is the source of its on-line retail store outlet for bird supplies, accessories, toys and related products, and reference materials and programs promoting awareness of and providing education related to bird health and safety issues through its websites;

4. it has common law rights in and to the service mark;

5. it has actively used and successfully promoted the mark in commerce, and has established a prominent and leading position in the marketplace as is amply demonstrated by evidence of substantial sales and orders, website visitors, advertising expenditures, links to affiliate rescue organizations, awards, publications of its principal, clinic management, and recognition by industry professionals;

6. it has used THE BIRDSAFE STORE mark for more than ten (10) years continuously and without interruption, it achieved substantial sales (over $2.37 million dollars since 2006 alone) on orders of over 29,000 (since only 2007) from a customer base extending throughout the United States and abroad, has spent over $10,000 in various media to promote its services all under the common law mark;

7. the THE BIRDSAFE STORE mark has acquired a secondary meaning within the marketplace, and is a common law mark entitled to the full protection offered by the UDRP;

8. The disputed domain name, <mybirdsafestore.com> is identical to, or confusingly similar to, Complainant’s mark THE BIRDSAFE STORE;

9. The disputed domain name incorporates the entirety of Complainant’s mark, creates the same commercial impression as Complainant’s mark, and is essentially identical to Complainant’s mark; the goods and services offered by Respondent are identical or nearly identical to those offered by Complainant, directed to the same pool of customers, and are offered in the same channels of trade;

10. it has evidence of at least 6 instances of actual confusion created by Respondent’s use of the disputed domain name;

11. it has not granted Respondent any right to use its mark in any manner for any purpose whatsoever;

12. Respondent has not been commonly known by the disputed domain name;

13. it’s mark, THE BIRDSAFE STORE, had been in use for over ten (10) years before Respondent registered and began use of the disputed domain name;

B. Respondent

Respondent contends that:

1. it has been involved in the exotic bird community for many years and had never heard of Complainant prior to receiving an e-mail from him in August 2010;

2. Complainant has never registered either Birdsafe or The Birdsafe Store and is trying to claim exclusive rights in a commonly used phrase in the avian community;

3. Complainant’s $10,000.00 in advertising over a 10 year period is extremely minimal;

4. Respondent is well-known throughout the avian community;

5. the marks are certainly not identical due to the descriptive nature of the words “bird” and “safe,” and the weakness of any mark using such terms in the field of bird safe products, the word “My” is sufficient to distinguish the two names;

6. the home page and site design of <birdsafe.com> and the home page of mybirdsafestore.com> clearly shows a totally different website;

7. the evidence of actual confusion is weak and, even so, a few isolated incidents do not prove likelihood of confusion;

8. the disputed domain name incorporates common words in which anyone would have a legitimate interest;

9. before any notice to the Respondent of the dispute, Respondent began use of the domain name in connection with a bona fide offering of goods and services in connection with Respondent’s website;

10. Respondent has a legitimate interest in selling “bird safe” products to consumers interested in purchasing such products;

11. there was never any malice or intent by Respondent to steal Complainant’s customers and there remains no malice or intent to do so.

FINDINGS

1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is confusingly similar to a trademark in which Complainant has rights.

2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.

3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name has been registered and is being used in bad faith.

DISCUSSION

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.

Identical and/or Confusingly Similar

Although Complainant does not yet own a Federal or state trademark registration for its THE BIRDSAFE STORE mark, such is not required to establish rights under Policy ¶ 4(a)(i), as long as it can demonstrate common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (Rules do not require mark be registered for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (Complainant need not own trademark registration to demonstrate its rights in mark).

Complainant, a corporation chartered by the Commonwealth of Virginia on April 20, 2000, alleges that it has operated a business continuously in commerce since that time under its THE BIRDSAFE STORE mark. It acquired the domain names <birdsafe.com> and <birdsafestore.com> on January 31, 2000 and February 23, 2001, respectively and contends that it has continuously used both domain names in the course of its business. Complainant claims that it uses its THE BIRDSAFE STORE mark in connection with online retail of bird supplies, accessories, toys and related products, and reference materials and programs promoting awareness of bird health and safety issues.

Complainant argues that it had revenues associated with its domain names and THE BIRDSAFE STORE mark of $395,388 in 2006, $425,311 in 2007, $474,992 in 2008, $609,811 in 2009, and $471,990 in 2010 to September 30. Complainant asserts that it has received orders from all fifty states and at least twenty foreign countries. Complainant provides Google Analytics reports that show an average of 5,500 Internet users visit Complainant’s websites a month. Since its first use of the mark in 2000, Complainant contends that it has spent $10,000 in advertising on the Internet and in print media. Complainant also provides evidence of awards it has received in both 2009 and 2010. Complainant claims that THE BIRDSAFE STORE mark has established national recognition and has become known and associated with Complainant.

Respondent argues that it is active in the avian community and never heard of Complainant, but does not offer any evidence to counter the evidence of substantial online use by Complainant of the Mark for over ten years. Further, while the Mark is certainly descriptive, it is not possible, on this limited record, to find, as Complainant also argues, that it is generic.

The Panel finds that Complainant’s THE BIRDSAFE STORE mark has acquired secondary meaning, and finds that Complainant owns common law rights in the mark and has established rights in THE BIRDSAFE STORE mark under Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (Complainant established common law rights in the mark through continuous use of the mark since 1995); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (Complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights through continuous and extensive use of the mark since 2003).

Complainant argues that Respondent’s <mybirdsafestore.com> domain name is confusingly similar to Complainant’s THE BIRDSAFE STORE mark. The only differences between Complainant’s mark and the disputed domain name is the removal of the space separating the terms of Complainant’s mark, the exchange of the term “the” with the term “my,” and the addition of a generic top-level domain (“gTLD”) “.com.” Such alterations fail to adequately distinguish the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (<westjets.com> domain name is confusingly similar to the Complainant’s mark, where the Complainant holds the WEST JET AIR CENTER mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <mybirdsafestore.com> domain name is confusingly similar to Complainant’s THE BIRDSAFE STORE mark under Policy ¶ 4(a)(i).

While Respondent may be correct that Complainant’s evidence of actual confusion is anecdotal, at best, insubstantial and/or inadmissible, such evidence is not required to find confusing similarity or likelihood of confusion.

Although neither party has raised the issue, the Panel may take ‘judicial’ notice of matters of public record, including those in the records of the U.S. Patent and Trademark Office (uspto.gov). The USPTO records indicate that Complainant filed a Federal Trademark Application for “The Birdsafe Store” mark on August 12, 2010 and it was approved by the examining attorney, Rebecca Miles Eisinger, Esquire for publication for opposition with a disclaimer of the word “store.” While approval for publication is not the same as registration, as Respondent and/or others may still challenge same, it does constitute some additional evidence that Complainant has rights in the mark.

In fact, the records of the USPTO also include numerous registrations for marks consisting of “The ________ Store”. Complainant has presented substantial, credible evidence of use of the mark for over ten years both on and off the Internet. The limitations of this forum preclude a more in depth and critical analysis of that evidence which might lead to a different conclusion on this factor.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (Complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant argues that Respondent is not commonly known by <mybirdsafestore.com>. Complainant has not granted Respondent any right to use its THE BIRDSAFE STORE mark and Respondent has no authority by agreement, license, or otherwise to use Complainant’s mark.

While the WHOIS information, identifies the domain name registrant as “MY SAFE BIRD STORE,” Respondent is not commonly known by the disputed domain name absent further evidence. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). Consequently, the Panel finds that Respondent is not commonly known by the <mybirdsafestore.com> domain name pursuant to Policy ¶ 4(c)(ii). While Respondent does use a corporate name which incorporates four of the words of the domain name, such use alone is insufficient to establish that it is “commonly known” by the domain name.

Complainant claims that Respondent’s <mybirdsafestore.com> domain name resolves to a website that offers competing bird-related products and services. Such use in direct competition with Complainant, long after Complainant’s first use, of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

Registration and Use in Bad Faith

The Panel concludes that Respondent’s use of the disputed domain name disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the Complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the Complainant’s business and create user confusion).

Respondent’s use of the <mybirdsafestore.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the Complainant were in the same line of business and the respondent was using a domain name confusingly similar to the Complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the Complainant’s famous mark).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. The domain name will not, however, be transferred to Complainant, but rather will be cancelled. There is no reason why in addition to surely disrupting Respondent’s business for a time, the Complainant should gain the windfall benefit of value built-up by Respondent.

Accordingly, it is Ordered that the <mybirdsafestore.com> domain name be CANCELLED.

M. Kelly Tillery, Panelist
Dated: January 6, 2011