Allison’s Workwear, LLC v. Elite Recreation
Claim Number: FA1310001523730
Complainant is Allison’s Workwear, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Elite Recreation (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allisonsworkwear.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2013; the National Arbitration Forum received payment on October 10, 2013.
On October 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <allisonsworkwear.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2013 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@allisonsworkwear.com. Also on October 10, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions
1. Complainant, Allison’s Workwear, LLC, offers supplies for professional in the medical community, including scrubs, latex gloves, and medical implements.
2. Complainant has established secondary meaning in the mark ALLISON’S WORKWEAR. As a result of its manhours and expenditures of considerable sums of money on advertising, promotional activities, and design, Complainant has built the ALLISON’S WORKWEAR mark into the distinctive identifier of Complainant’s services.
3. The disputed domain name is not only confusingly similar to, but identical to, the mark ALLISON’S WORKWEAR. The disputed domain name incorporates the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent shares the same phone number as “Ryan Griffith,” a competitor of Complainant. Complainant has never authorized, licensed, or otherwise permitted Respondent to use its marks nor allowed Respondent to associate itself with Complainant in any way.
ii. The disputed domain name directs to <thefreedictionary.com/betrayed>, which contains a dictionary definition of the word “betrayed.” Previously, Respondent has directed the disputed domain to other websites, including one entitled “The Little Traitor.” Respondent is upset and trying to retaliate against Complainant for competing with Respondent in the same St. George, Utah, market, as well as for Complainant’s decision to hire a former employee of Respondent.
5. Respondent registered and is using the disputed domain name in bad faith.
i. Respondent has been making use of the domain to redirect the domain to a competitor’s website. Respondent’s competitor, Ryan Griffith, runs a competing business called “Uniform Center II” in St. George, Utah.
ii. Respondent uses the domain to link to a competitor’s website.
iii. Respondent registered the disputed domain name with actual or constructive knowledge that the disputed domain name was identical to Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
On October 30, 2013, the Forum received an email from Respondent stating: “I received the attached notice of complaint today, but I have not yet received a copy of the complaint. The deadline to respond is listed as today, and I wish to respond but it’s unclear what I am responding to. Will you please provide a copy of the complaint and a copy of the rules referenced in this letter.”
FINDINGS
1.Complainant offers supplies for professionals in the medical community, including scrubs, latex gloves and medical implements and related goods and services.
2. Complainant has established common law trademark rights in the mark ALLISON’S WORKWEAR.
3.Respondent registered the <allisonsworkwear.com> domain name on or about December 20, 2012.
4.Respondent uses the disputed domain name in a manner calculated to disrupt Complainant’s business and to create a link to the website of a competitor.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. The Panel notes that Complainant has not registered the ALLISON’S WORKWEAR mark with a trademark agency. However, the Panel finds that Policy ¶ 4(a)(i) does not require a complainant to register its mark with a trademark agency, so long as it establishes common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that it offers supplies for professional in the medical community, including scrubs, latex gloves, and medical implements. Complainant alleges that it has established secondary meaning in the mark ALLISON’S WORKWEAR. Complainant asserts that as a result of its manhours and expenditures of considerable sums of money on advertising, promotional activities, and design, it has built the ALLISON’S WORKWEAR mark into the distinctive identifier of Complainant’s services. Complainant argues that it aggressively advertises its products online and through print services, including backlinks on other popular websites, cost-per-click advertising, affiliated advertising programs, web portals, banner ads, and emails. Complainant claims that evidence of its use of the mark includes its corporate registration (Annex B), Facebook announcements (Annex D), a screenshot of Complainant’s website (Annex E), a postcard mailed in November of 2013 (Annex F), and an EIN number from the IRS (Annex G). Complainant contends that additional evidence of Complainant’s common law trademark rights includes various invoices from third-parties referencing Complainant by the ALLISON’S WORKWEAR mark (Annex H), a supplier’s sales resale certificate (Annex I), various communications of third-party suppliers and customers with Complainant (Annex J), an insurance policy making use of the mark (Annex K), signage shown displayed prominently outside of Complainant’s brick and mortar office (Annex L), and a permit from the City of St. George authorizing the display of signage (Annex M). In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel held that “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.” Accordingly, the Panel finds that Complainant has established secondary meaning in its ALLISON’S WORKWEAR mark, showing common law rights in the mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ALLISON’S WORKWEAR mark. Complainant contends that Respondent’s <allisonsworkwear.com> domain name is not only confusingly similar to, but identical to, the mark ALLISON’S WORKWEAR. Complainant claims that the disputed domain name adds the gTLD “.com” to Complainant’s mark in the disputed domain name. The Panel notes that Respondent also removes the space and punctuation in Complainant’s ALLISON’S WORKWEAR mark in its disputed domain name. Previous panels have held that a respondent’s removal of punctuation and spaces, and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel concludes that Respondent’s <allisonsworkwear.com> domain name is identical to Complainant’s ALLISON’S WORKWEAR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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) (holding that the 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s ALLISON’S WORKWEAR trademark and to use it in its domain name, making no substantive alterations to it;
(b)Respondent has linked the disputed domain name to various websites to damage Complainant and its business and has then linked it to the website of a competitor of Complainant;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant asserts that it has never authorized, licensed, or otherwise permitted Respondent to use its marks nor allowed Respondent to associate itself with Complainant in any way. The Panel observes that the WHOIS information lists “Elite Recreation” as the registrant of the disputed domain name. See Annex N. Complainant suggests that Respondent shares the same phone number as “Ryan Griffith,” a competitor of Complainant. The Panel notes that Respondent fails to provide evidence that it is otherwise known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <allisonsworkwear.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant asserts that Respondent’s <allisonsworkwear.com> domain name has been directed to <thefreedictionary.com/betrayed>, which contains a dictionary definition of the word “betrayed.” See Annex O. Complainant argues that previously, Respondent has directed the disputed domain to other websites, including one promoting a film called “The Little Traitor.” See Annex P. Complainant contends that Respondent has also used the domain to link to a competitor’s website. Complainant further asserts that the true identity of Respondent is Ryan Griffith, Respondent’s competitor who runs a competing business called “Uniform Center II” in St. George, Utah. The Panel notes that Respondent currently has used the domain name to link to “Uniform Center II,” a shop that purports to sell competing medical uniform products. See Annex O. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel found that “capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Consequently, the Panel finds that Respondent is not using the <allisonsworkwear.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, when the domain name has resolved to nothing more than a website associated with a directly competing enterprise.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a formal Response, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has been making use of the domain to redirect the domain to a competitor’s website. Complainant claims that Respondent’s competitor, Ryan Griffith, runs a competing business called “Uniform Center II” in St. George, Utah. The Panel notes that Respondent’s disputed domain name appears to resolve to a webpage titled “Uniform Center II,” a webpage that purports to sell medical uniforms and other medical products. See Annex O. Prior panels have determined that a respondent’s use of a disputed domain name to provide a competing business shows bad faith 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).”). The evidence is also to the effect that the domain name has been linked to other websites and is currently linked to one of them and that doing so is apparently designed to disparage Complainant and those associated with it. Therefore, the Panel finds that Respondent registered and is using the <allisonsworkwear.com> domain name, a domain name that is identical to Complainant’s mark, to disrupt Complainant’s own business in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent has used the <allisonsworkwear.com> domain name to redirect to a competitor’s website. The Panel observes that Respondent’s domain name has resolved to a website for “Uniform Center II,” which appears to sell medical uniforms and other medical products. See Annex O. The Panel agrees that Respondent must be presumed to benefit commercially from its sale of medical uniforms and other products. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant. Consequently, the Panel finds that Respondent registered and has been using the disputed domain name to attract users to its own website for commercial gain, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv).
Thirdly, Complainant asserts that Respondent registered the <allisonsworkwear.com> domain name with actual or constructive knowledge that the disputed domain name was identical to Complainant’s mark. Complainant contends that Respondent’s true identity, as shown by the telephone number in the WHOIS report, is Ryan Griffith, who runs a competing business called “Uniform Center II” in St. George, Utah, the same area Complainant is located in. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s status as a local competitor of Complainant, Respondent had actual knowledge of the mark and Complainant's rights. Therefore, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ALLISON’S WORKWEAR mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allisonsworkwear.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 7, 2013
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