Vitamin Shoppe Industries, Inc. v. Kosher Vitamin Express
Claim Number: FA1210001466844
Complainant is Vitamin Shoppe Industries, Inc. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Kosher Vitamin Express (“Respondent”), represented by Martin Schwimmer of Leason Ellis LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <koshervitaminshoppe.com> (“the Domain Name”), registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Karl V. Fink, Professor David E. Sorkin and Alan L. Limbury as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012. The National Arbitration Forum received payment on October 11, 2012.
On October 11, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the Domain 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 October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2012 for any Response. On October 31, 2012, Respondent requested an additional 20 days to respond to the Complaint. Complainant consented to the request and on October 31, 2012 the Forum issued (via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@koshervitaminshoppe.com) an approval order that extended to November 21, 2012 the deadline by which Respondent could file a Response to the Complaint. Also on October 12, 2012, 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.
On November 21, 2012, Respondent submitted a Response to these proceedings.
On November 26, 2012, Complainant submitted an Additional Submission that was deemed to be in compliance with Supplemental Rule 7.
On December 3, 2012, Respondent submitted an Additional Submission that was deemed to be in compliance with Supplemental Rule 7.
On December 10, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink, Professor David E. Sorkin and Alan L. Limbury as Panelists.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant has rights in many countries in the trademark THE VITAMIN SHOPPE, which it first registered on August 28, 2001 (United States registration No. 2,481,906, filed December 2, 1999). A related entity to Complainant registered the domain name <vitaminshoppe.com> in 1996.
Complainant’s rights in the mark, which it first used in 1977, predate the April 29, 1999 registration of the Domain Name, which is nearly identical and confusingly similar to Complainant’s mark. Merely replacing the word “THE” in the mark with the generic term “kosher” (for goods that conform to the regulations of Jewish Halakhic law) does not distinguish the Domain Name from the mark because consumers would believe that Complainant is the source of the Domain Name and the goods and services associated therewith: Eli Lily and Co. v. Igor Palchikov, FA1388612 (Nat. Arb. Forum June 15, 2011), Sanofi-Aventis v. Patterson, D2008-1028 (WIPO Aug. 28, 2008).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has never authorized Respondent to use the mark. There is no evidence that Respondent has ever been commonly known by the term “Vitamin Shoppe”, THE VITAMIN SHOPPE, or the Domain Name. Respondent, a competitor of Complainant, automatically redirects the Domain Name to its <koshervitamins.com> website, which advertises that it sells kosher supplements, kosher vitamins and kosher nutrients, for its own commercial gain. This is not a legitimate noncommercial use or fair use pursuant to Policy ¶ 4(c)(i).
Respondent has registered and used the Domain Name in bad faith. Complainant’s rights in the mark existed before Respondent registered the Domain Name. Respondent is using the Domain Name to create confusion as to Complainant’s support of Respondent and its services. Such conduct is evidence of bad faith registration and use under Policy ¶ 4(b)(iv): RueLaLa, Inc., v. WebRelate, LLC, FA 1430797 (Nat. Arb. Forum Mar. 28, 2012). It also constitutes trademark infringement and unfair competition.
Complainant seeks transfer to it of the Domain Name.
B. Respondent
Complainant’s first registered trademark (US Registration No. 2,481,906) was registered under Section 2(f) of the Trademark Act, which requires a showing of secondary meaning, indicating that the mark was not inherently registrable at the time of filing on December 2, 1999 and that Complainant had made the showing sometime later. Therefore Complainant cannot show that its mark possessed secondary meaning giving rise to trademark rights prior to Respondent’s registration of the Domain Name on April 29, 1999.
While descriptive words are to be disregarded when compared to a protectable mark, here the mark consists solely of three weak terms. The word VITAMIN was disclaimed in registration No. 2,481,906. Further, the spelling of SHOPPE is not distinctive, being included in 238 live registrations on the U.S. registry. The pairing of the terms “Kosher” and “Vitamin” is somewhat incongruous (since vitamins are not thought of necessarily as food, so the notion of kosher vitamins may strike some as unusual) and thus creates a new distinctive mark. Hence “Koshervitaminshoppe” is not similar to “The Vitamin Shoppe.”
Respondent has sold kosher vitamins since 1974 and has done so online since 1998, initially using the domain names <koshervitamin.com> and <koshervitamins.com>. Respondent obtained both the Domain Name and the domain name <koshervitaminshop.com> on the same day in 1999 to act as additional “doors” for its online shop at <www.koshervitamins.com>. Hence it has made a bona fide offering of goods under the Domain Name for 13 years and over that time has become associated with the Domain Name, as a result of its promotion of the Domain Name in online directories.
Because of Complainant’s 13 year delay in bringing this Complaint, Respondent has been prejudiced in its ability to document its early efforts in promoting and offering its services under the Domain Name. Nevertheless it has been able to locate some results of such efforts.
Respondent could not have been on notice of Complainant’s rights in 1999 when Respondent registered the Domain Name as Complainant did not own any protectable trademark registrations at that time. Respondent obtained the generic Domain Name to reflect its offerings of kosher vitamins.
While the UDRP does not specifically recognize the defense of laches, panels have applied it in practice: New York Times Co. v. Name Admin. Inc. (BVI), FA 1009001249045 (2010). The equities demand that Respondent retain the Domain Name since Respondent has used it for 13 years for a bona fide offering of goods and would be greatly prejudiced if Complainant were to obtain it.
Since the Complaint fails on all three prongs, Respondent seeks from the Panel a finding of Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant
As evidenced by Complainant’s trademark registrations, Complainant has consistently used the trademark THE VITAMIN SHOPPE since 1977. A copy of a mail order catalog from 1988 is submitted. Complainant has also registered and continuously used the <vitaminshoppe.com> domain name since 1996 to offer and sell its vitamins and related goods and services. In addition to the trademarks mentioned in the Complaint, Complainant had at least three United States trademark registrations at the time when the Domain Name was created (since cancelled), namely:
No. 1,875,772 FRESH & NEW THE VITAMIN SHOPPE (design plus words, letters and/or numbers), registered on January 24, 1995;
No. 1,510,646 THE VITAMIN SHOPPE (design including a representation of a capsule plus words, letters and/or numbers), registered on November 1, 1988, with a disclaimer of the exclusive right to use “VITAMIN” and the representation of the capsule apart from the mark as shown; and
No. 1,506,651 THE VITAMIN SHOPPE (design plus words, letters and/or numbers), registered on September 27, 1988, with a disclaimer of the exclusive right to use “VITAMIN SHOPPE” apart from the mark as shown.
Complainant’s registration of THE VITAMIN SHOPPE under section 2(f) is not an admission that the mark is descriptive but is evidence that the USPTO has found the mark to have at least acquired distinctiveness: Candid Color Systems, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1399989 (Nat. Arb. Forum Sept 6, 2011).
Evidence exists that at the time the Domain Name was registered, consumers associated the trademark THE VITAMIN SHOPPE with Complainant. In 1999, Complainant had total sales of $174,902,141 and spent $11,898,762 in advertising. By 2011 Complainant had net sales of $856.6 million. It has used the <vitaminshoppe.com> domain name since 1996.
Respondent and Complainant are both located in New York, thereby putting Respondent on notice of Complainant and its rights in the mark.
Respondent's use of the Domain Name to redirect users automatically to the <koshervitamins.com> domain name is not bona fide offering of goods or services under Policy ¶4(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) ("Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).").
The minimal evidence provided by Respondent, especially in light of Respondent's current use of the Domain Name and its failure to use the term "shoppe" anywhere on the website for <koshervitamins.com>, is far from concrete evidence that establishes Respondent is commonly known by the Domain Name.
As to bad faith, Respondent's use and registration of the Domain Name in 1999 occurred well after Complainant established rights in THE VITAMIN SHOPPE.
Respondent's use of the Domain Name to cause confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name for Respondent's own commercial benefit is evidence of bad faith registration and use under the Policy ¶4(b)(iv) and is trademark infringement.
Assuming that Respondent was not aware of Complainant and its rights in its mark, Respondent's willful blindness will not absolve it from a finding of bad faith registration and use. Had Respondent performed a search through the USPTO for "VITAMIN SHOPPE" at the time it registered the Domain Name, it would have uncovered that Complainant had three trademark registrations covering this mark.
Also, it is likely that Respondent would have located Complainant through a search on search engines like Google or Yahoo! because Complainant has offered goods and services through the <vitaminshoppe.com> domain name since 1996. As such, Respondent's failure to explore third party rights in the trademark THE VITAMIN SHOPPE at the time it registered the Domain Name, especially in light of the fact that these two competitors both operate out of the East Coast, will not prevent a finding of bad faith registration and use. See Mobile Communication Service, D2005-1304 (WIPO Feb. 24, 2006) ("the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark."); see also Media General Comms., Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006).
Complainant’s claims are not barred by the doctrine of laches. Respondent’s renewal of the Domain Name in 2012 provided another opportunity to establish that Respondent registered and used the Domain Name in bad faith. Panels have held that a domain name holder is under a duty at the time of renewal to ensure that its domain name did not infringe upon someone else’s trademark rights. See Octogen Pharmacal Co. v. Domains By Proxy, Inc., D2009-0786 (WIPO Aug. 19, 2009) see also City Views Ltd. v. Moniker Privacy Srvs./Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009); Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (date of Respondent's last renewal is the date on which to measure whether the disputed domain name was registered and used in bad faith).
At the time Respondent renewed the Domain Name in 2012, Complainant owned numerous trademark registrations for THE VITAMIN SHOPPE trademark, had expansive sales, advertising and a strong Internet presence. Thus, Respondent ignored its duty under ¶2 and ¶4(b)(iv) of the Policy by renewing the Domain Name in 2012 despite Complainant's current rights in THE VITAMIN SHOPPE trademark.
UDRP panelists are not unanimous in their acceptance of the doctrine of laches in a UDRP proceeding. Even if this equitable defense were available, there is no evidence that Complainant knew of Respondent’s use of the Domain Name until this year, thereby preventing a finding that Complainant failed to bring a timely Complaint.
Respondent is not prejudiced from Complainant’s Complaint being brought at the present time.
Respondent
Complainant’s proffer of new evidence does not establish that it had a mark protectable under the Policy when Respondent registered the Domain Name. This failure (or a holding that Complainant had at best a weak mark with a thin layer of protection), dictates failure under Prongs two and three of the Policy as well. Furthermore, Complainant has offered no compelling excuse for its delay in bringing this proceeding. The Complaint should be denied.
Complainant has failed to establish all elements required to entitle it to transfer or cancellation of the Domain Name.
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 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into account unsolicited submissions received outside those time limits: Darice, Inc. v. Texas International Property Associates - NA NA, FA1082320, (Nat. Arb. Forum 16 November, 2007). In this case the Panel has taken both parties’ Additional Submissions into account.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the 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.
Policy ¶4(a)(i) does not require Complainant to demonstrate that it had trademark rights prior to Respondent’s registration of the Domain Name because the Policy refers to the complainant’s ownership of trademark rights in the present tense. See PC Mall, Inc. v. Pygmy Computer Systems, Inc., D2004-0437 (WIPO Aug. 25, 2004). Accordingly, for the purposes of Policy ¶4(a)(i), a complainant can have rights in a trademark or service mark corresponding to the disputed domain name even where those rights first arose after the registration of the domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001); Kangwon Land, Inc. v. Chun (K.W.L. Inc), D2003-0320 (WIPO July 4, 2003); AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003); Iogen Corp. v. Iogen, D2003-0544 (WIPO Sept. 7, 2003); Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO Sept. 8, 2003).
Nevertheless, the question whether or not Complainant’s trademark rights predated the registration of the Domain Name is indeed relevant for purposes of Policy ¶ 4(a)(ii) and ¶ 4(a)(iii). See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., D2004-0399 (WIPO Aug. 23, 2004); Valve Corp. v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, D2005-0038 (WIPO Mar. 9, 2005). Accordingly, that question is addressed below.
The Panel is satisfied that, at the time it filed its Complaint, Complainant had registered trademark rights in THE VITAMIN SHOPPE.
Given the presence of the word “kosher” and the absence of the word “the”, the Domain Name is not identical to Complainant’s trademark.
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, D2006‑0812 (WIPO Sept. 20, 2006). The top level domain “.com” is to be disregarded because top-level domains are a required element of every domain name: Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, D2007‑0648 (WIPO July 11, 2007).
In finding confusing similarity, many Panels have found that the mere addition of a descriptive term by way of prefix to a complainant’s mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy ¶4(a)(i). See Wal-Mart Stores, Inc. v. Senker, D2006‑0211 (WIPO June 9, 2006) (finding <competewithwalmart.com> confusingly similar to WAL-MART); HSBC Holdings Plc v. Gold, D2001‑0343 (WIPO May 25, 2001) (finding <bankwithhsbc.com> confusingly similar to HSBC); F. Hoffmann-La Roche AG v. Whois Defender, Inc., D2006‑0717 (WIPO Aug. 8, 2006) (finding <weightlosswithxenicalinfo.info> confusingly similar to XENICAL) and Leno v. Hintz, D2009‑0569 (WIPO June 26, 2009) (finding <weeknightswithjayleno.com> confusingly similar to JAY LENO). In each of these cases, the trademark was distinctive and comprised an invented word or, as in the last mentioned case, a famous name.
The two cases cited by Complainant in support of its contention of confusing similarity also concerned distinctive trademarks comprising invented words, namely CIALIS (Eli Lily and Co. v. Igor Palchikov, FA1388612 (Nat. Arb. Forum June 15, 2011)) and AMBIEN (Sanofi-Aventis v. Patterson, D2008-1028 (WIPO Aug. 28, 2008)).
Here, Complainant’s trademark is composed of the common and wholly descriptive words, arranged in their usually encountered order, “the”, “vitamin” and “shoppe”, the latter being an archaic but nevertheless commonly used spelling of the word “shop”.
The presence in the Domain Name of the word “kosher”, especially as the first word (which does not form part of Complainant’s trademark) and the absence of the word “the” (which does form part of Complainant’s trademark) would not, in the Panel’s opinion, lead Internet users to wonder whether there is an association between the Domain Name and Complainant or its mark. Hence the Panel finds that the Domain Name <koshervitaminshoppe.com> is not confusingly similar to Complainant’s THE VITAMIN SHOPPE mark under Policy ¶ 4(a)(i). See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”).
Complainant has failed to establish this element of its case, which must therefore be dismissed. However, because Respondent seeks a finding of Reverse Domain Name Hijacking, it is necessary for the Panel to consider the other two elements.
The Domain Name comprises common and wholly descriptive words and, as the Panel has found, is not confusingly similar to Complainant’s mark. It is common ground that Respondent has used the Domain Name to sell, through its <koshervitamins.com> website, goods of the kind that the Domain Name describes. Under these circumstances, this case is distinguishable from Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), cited by Complainant, because the Panel is not persuaded that the automatic redirection from the Domain Name to the <koshervitamins.com> website was intended to divert Internet users seeking Complainant's website. Accordingly the automatic redirection does not prevent a finding that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Respondent’s use of the Domain Name to be a bona fide offering of goods under Policy ¶4(c)(i). Complainant has failed to establish this element.
Respondent contends that it could not have been on notice of Complainant’s rights in 1999 when Respondent registered the Domain Name as Complainant did not then own any protectable trademark registrations and produced no evidence of secondary meaning at that time.
In reply, Complainant:
(i) asserts that its trademark registrations show that it has used the trademark THE VITAMIN SHOPPE since 1977;
(ii) annexes a mail order catalog dated 1988 , asserts advertising expenditure in 1999 and thereafter and refers to its use of the <vitaminshoppe.com> domain name since 1996;
(iii) refers to three United States trademark registrations that pre-dated the registration of the Domain Name; and
(iv) asserts that in obtaining its first registration for the word mark THE VITAMIN SHOPPE on August 28, 2001 under section 2(f), Registration No. 2,481,906 , it demonstrated acquired distinctiveness, citing Candid Color Systems, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1399989 (Nat. Arb. Forum Sept 6, 2011).
As to (i), the Panel notes that Complainant’s first trademark registration for the words THE VITAMIN SHOPPE (No. 2,481,906), while claiming first use in1977, claims first use in commerce in 1981.
As to (ii), relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition: Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO May 3, 2001). The Panel finds the material relied upon by Complainant insufficient, given the descriptiveness of the mark and the corresponding need for convincing evidence of the kind just described, to establish that its mark had acquired secondary meaning by the time Respondent registered the Domain Name.
As to (iii), none of those marks demonstrate trademark rights in the words THE VITAMIN SHOPPE, standing alone.
As to (iv), the Panel accepts that Complainant satisfied the examiner that, as at the date of filing of its application, December 2, 1999, some 8 months after Respondent registered the Domain Name, it had acquired distinctiveness in the combination of words THE VITAMIN SHOPPE (with disclaimer as to the word VITAMIN).
The Panel concludes that Complainant has failed to show that it had acquired trademark rights in the words THE VITAMIN SHOPPE prior to April 29, 1999 when Respondent registered the Domain Name. It is therefore unlikely that Respondent had Complainant’s trademark in mind when registering the Domain Name. Given, as the Panel has found, that the Domain Name is not confusingly similar to Complainant’s mark, even if Complainant’s mark had acquired distinctiveness prior to registration of the Domain Name and even if Respondent had been aware of Complainant’s mark at that time, the Panel is not satisfied that Respondent registered the Domain Name in bad faith under Policy ¶ 4(a)(iii). Respondent’s use of the Domain Name to describe the goods it sells supports this finding.
As to use, Complainant cites RueLaLa, Inc., v. WebRelate, LLC, FA 1430797 (Nat. Arb. Forum Mar. 28, 2012), a case in which the domain name incorporated the distinctive mark RUELALA, so its use to redirect Internet users to the Amazon website was found to be confusing and in bad faith. Here, as the Panel has already found, Internet users have not been shown to be likely to be confused by the Domain Name into wondering whether they are going to Complainant’s website or otherwise dealing with Complainant or with an entity sponsored or approved by Complainant, so the automatic redirection from the Domain Name to Respondent’s website, which offers goods of the kind described by the Domain Name, is not use in bad faith.
The following passage from the Australian High Court decision in Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd (1978) 140 C.L.R. 216 at 229 is apposite here:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds)”.
Complainant has failed to establish this element.
Doctrine of laches
Since Complainant has failed to establish any of the elements necessary to entitle it to relief, it is unnecessary for the Panel to consider this issue.
Renewal
The reasoning in the line of cases on which Complainant relies, Octogen Pharmacal Co. v. Domains By Proxy, Inc., D2009-0786 (WIPO Aug. 19, 2009), City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO 2008) and Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO Mar. 1, 2010) has been rejected in numerous subsequent cases. See Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011and the cases there cited. This Panel does not accept that the date of renewal should be regarded as the relevant date at which to determine the issue of bad faith registration.
Reverse domain name hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e). To prevail on such a claim, a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Nov. 8, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000‑1151 (Jan. 8, 2001); or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 21, 2000); or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Zuckerman v. Peeris, DBIZ2002‑00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).
Here, although Complainant has failed to establish any of the elements required to entitle it to relief, the Panel considers that Complainant probably held a genuine, albeit misguided belief that its mark had become distinctive before the Domain Name was registered and that Respondent, a competitor, had registered the Domain Name in order to divert Internet traffic to its <koshervitamins.com> website. The Panel is not convinced that Complainant knew its case was hopeless and accordingly declines to make a finding of Reverse Domain Name Hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury
Presiding Panelist
Honorable Karl V. Fink Professor David E. Sorkin
Panelist Panelist
Dated: December 22, 2012
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