Stinkbug Naturals LLC v. Jason Curry / Mighty Blood LLC
Claim Number: FA1311001529100
Complainant is Stinkbug Naturals LLC (“Complainant”), represented by Philip J. Foret of Dilworth Paxson LLP, Pennsylvania, USA. Respondent is Jason Curry / Mighty Blood LLC (“Respondent”), represented by Samuel I. Yamron, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com>, registered with GODADDY.COM, LLC.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@stinkbugnatural.com, postmaster@stinkbugnaturals.com, and postmaster@stinkbugdeodorant.com. Also on November 13, 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.
A timely Response was received and determined to be complete on December 3, 2013.
On December 9, 2013, a timely Additional Submission to the case was made by Complainant, which complies with Supplemental Rule 7. Therefore, the Panel proceeds with studying the same along with the other evidences presented in this case.
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson as Panelist.
In response to the additional submission made by Complainant, on December 14, 2013, Respondent made his additional submission, which complies with Supplemental Rule 7. Therefore, the Panel is also taking this record into account.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
i. Complainant, Stinkbug Naturals LLC, offers its products bearing the STINKBUG mark in twenty-four stores, across seven states, and offers products nationally through online websites.
ii. Complainant has exclusively and continuously used the STINKBUG mark to identify every facet of their business including, on their labels, in their promotions and advertising, and as the name of the company—Stinkbug Naturals LLC.
iii. The domain names <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com> are confusingly similar to the STINKBUG mark and Complainant’s company name. The inclusion of the descriptive term “naturals,” “natural,” “deodorant,” and the generic top-level domain (“gTLD”) “.com” does not permit use of <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com>.
i. Respondent should be considered as having no rights or legitimate interests with respect to the disputed domain names.
ii. Respondent is not commonly known as any of the disputed domain names or as Complainant’s protected STINKBUG mark.
iii. Respondent’s <stinkbugnatural.com> domain name resolves to an active website discussing Complainant’s goods.
iv. Respondent has parked the <stinkbugnaturals.com> and <stinkbugdeodorant.com> domain names.
i. Respondent engaged in a pattern of registering additional domain names.
ii. Respondent’s control of the disputed <stinkbugnatural.com> domain name is disrupting Complainant’s business by convincing consumers that Respondent’s disputed domain name is owned by Complainant.
iii. Respondent’s use of the disputed <stinkbugnatural.com> domain name creates a likelihood of confusion with Complainant’s STINKBUG mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
iv. Respondent’s status as a former contractor of Complainant does not give it free reign to hold onto the domain names that infringe on the STINKBUG mark.
v. Respondent parked <stinkbugnaturals.com> and <stinkbugdeodorant.com>.
vi. Respondent had actual knowledge of Complainant’s mark prior to registration of the disputed domain names.
B. Respondent
According to Respondent, the case does not fall under the UDRP policies since the dispute of the subject domain names is a contractual dispute.
In respect of meeting the three elements of the UDRP Policy, Respondent contends as follows:
1. Policy ¶ 4(a)(i)
i. Complainant fails to meet the first element, because it does not have trademark rights commensurate with the ability to sustain an action under common law against Respondent.
2. Policy ¶ 4(a)(ii)
i. Respondent makes no contentions with regards to Policy ¶ 4(a)(ii), but notes that its rights in the domain names give rise to non-UDRP legal claims.
3. Policy ¶ 4(a)(iii)
i. It is not a bad faith registration or bad faith use to request out-of-pocket costs related to the registration of a domain name, as this amount is owed to Respondent by Complainant and is not a random solicitation or demand.
C. Additional Submissions
Complainant
Complainant notes that despite Respondent’s contentions, this UDRP proceeding is not a contract dispute.
In its Additional Submission, Complainant addresses Respondent’s allegations that there is compensation owning to Respondent. Particularly, Complainant stresses that the issue addressed to the Panel is not related to resolution of a contract dispute since the contract itself is not in dispute.
According to Complainant, Respondent expressly admitted that Complainant has rights in the STINKBUG mark in his response. Moreover, Respondent failed to establish rights or legitimate interest in the disputed domains; and bad faith is expressed clearly in Respondent’s response.
Respondent
Respondent further alleges that the case is outside of the UDRP policies; that Complainant had refused to offer to cooperate in providing satisfactory compensation to Respondent for the branding, website design, construction and other services provided.
Respondent further questions sufficiency of common law rights to establish the first element of a UDRP claim.
Furthermore, Respondent stresses that the issue of determination of his rights and interests in the disputed domain names requires the application of law, which is outside the scope of the UDRP.
According to Respondent, the third element of the UDRP policies has not been established by Complainant since Respondent acted on Complaint’s behalf and at his request when he registered the disputed domain names, which can not be qualified as bad faith.
The STINKBUG mark was first placed into use by Complainant on or around September 12, 2011 by branding this mark on the deodorant offered for sale at Scholl’s Bicycle Center and Harmony Emporium in Pennsylvania. The supporting evidences include orders for labels, placed by Complainant with Fedex/Kinkos, provided as Exhibit A to the Complaint.
On or about September 16, 2011, Complainant began offering the STINKBUG brand deodorant for sale on the Internet through the ETSY online shopping forum (Exhibit B to the Complaint).
In December 2011 – January 2012, Complainant engaged Respondent as an independent consultant to assist in developing a marketing strategy and a website for the deodorant and related products.
As follows from the exchange of correspondence between the parties at this stage (Exhibit F to the Complaint), the parties exchanged ideas as to the domain name. Complainant suggested that the suggested name exactly matches the name of their company. There is no direct order from Complainant to have the domain name registered in the name of Respondent.
On February 17, 2012, the first disputed domain name <stinkbunatural.com> was registered in the name of Respondent.
On February 23 2012, the engagement was formalized in an agreement with the Respondent’s company Road Trip Studios.
According to Section 3 of the Agreement, all property shall be owned by the client (Complainant) as a work-for-hire, with Road Trip Studios retaining a non-exclusive license to use the work product for his advertising and/or portfolio.
On February 28, 2012, Stinkbug Naturals LLC was incorporated. Stinkbug Naturals LLC owns all rights in the STINKBUG mark.
On May 27, 2012, Respondent contacted Complainant via e-mail stating that their company had not been paid for the provided services and asking for a feedback on the proposed changes to the website.
On or about June 9, 2012 Complainant forwarded a check to Respondent in order to pay him for services rendered under the General Service Agreement.
On June 9, 2012 Respondent sent an e-mail to Complainant refusing to accept the payment (Exhibits A and B to Complainant’s Additional Submission).
On November 15, 2012, Respondent contacted Complainant via Facebook with an offer to have the disputed domain name transferred to Complainant. Complainant responded in affirmative, but did not receive a response from Respondent.
Complainant considers the General Service Agreement terminated as of July 21, 2012.
On July 30, 2013, Respondent registered <stinkbugnaturals.com> and <stinkbugdeodorant.com> domain names in his own name with now request and/or authorization from Complainant.
On August 19, 2013 Complainant contacted Respondent with an offer to pay for the transfer of one of the disputed domain names and did not receive a reply from Respondent. See Exhibit C to Complainant’s Additional Submission.
Following subsequent correspondence between attorneys of the parties, Respondent continues to have sole control of electronic log-in information for Twitter, e-commerce sites and email accounts of Complainant.
Respondent admits that the domain names were registered as “proactive protective means”.
Respondent further admits through its website and submissions made within these proceedings that they developed and redesigned a new logo and brand package for StinkBug, which included a new logo, typeface and color schemes for branding.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel does not argue that there may be a purely contractual dispute between the parties over compensation, particularly its adequacy, and other proceeds form the commercial deal. However, this does not preclude the existence of circumstances, which the Panel finds to be duly proven by evidences presented by the Parties, which makes this case fall within the UDRP policies. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
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.
Complainant contends that it offers its products bearing the STINKBUG mark in twenty-four stores, across seven states, and offers personal care products nationally through online websites. Complainant claims that it first adopted the STINKBUG mark in September of 2011. Complainant also asserts that it recently filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the STINKBUG mark.
While Complainant does not show evidence of a trademark registration, the Panel holds that a trademark registration is not necessary to prove rights in a mark under Policy ¶ 4(a)(i), so long as Complainant can establish common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that since its first adoption in September, 2011, it has exclusively and continuously used the STINKBUG mark to identify every facet of their business including, on their labels, in their promotions and advertising, and as the name of the company—Stinkbug Naturals LLC. Furthermore, Complainant claims that every product sold by Complainant has been labeled with the STINKBUG mark, and as such, the consuming public, as well as competitors, identify with the STINKBUG mark with Complainant. All this constitutes bona fide uses.
The Complainant’s priority of use of this mark, as well as the fact of its bona fide use by Complainant in commerce is not challenged by Respondent. Thus, Complainant holds the right of prior use of the subject mark.
Complainant has also made a prima facie showing of common law trademark rights in the word “Stinkbug”. According to the established court practices followed by UDRP forums, to establish such rights, Complainant would need to show that the name "Stinkbug" has achieved secondary meaning or association with Complainant.
However, the Panel agrees with Complainant that the name “stinkbug”, in view of its use for cosmetic products, is inherently distinctive being “fanciful” and “arbitrary”. The previous UDRP Panels followed judicial precedents in US trademark law, which recognize distinct bases for the establishment of common law trademark rights. This is particularly relevant since both parties are based and operating in the United States.
In order to establish common law trademark rights in terms which are “suggestive”, “fanciful” or “arbitrary”, a party asserting common law rights need only show that the terms have been used in commerce in association with the goods or services. So-called “inherently distinctive” marks do not require a demonstration of secondary meaning. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). There is nothing to preclude the establishment of common law rights in an inherently distinctive trademark promptly upon use in commerce in the United States. See Reveille LLC v. Theodore Lazier, D2011-0601 (WIPO May 15, 2011).
Thus, the Panel finds that Complainant holds common law rights in unregistered trademark STINKBUG.
Since the disputed domain names <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com> comprise the Complainant’s STINKBUG trademark and company name in their entirety with purely descriptive terms, such as “natural”, “naturals” and “deodorant” added, indicating the type and properties of the goods bearing this mark, this does not negate a finding of confusing similarity under Policy 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel also finds that Respondent’s inclusion of a gTLD to the disputed domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Thus, Complainant has satisfied Policy 4(a)(i).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, shall be evidence of the Respondent’s rights or legitimate interests in respect of the Domain Name. However, the primary burden of Complainant is to make a prima facie case showing that Respondent has no such rights or legitimate interests.
The circumstances and the records of the case show that Respondent was well aware of the fact that “Stinkbug” was the name of Complainant, which is further affirmed by Respondent’s admittance that the “STINKBUG mark is of a level of distinctiveness that it can be used to represent the Complainant’s goodwill in the market”. This means that the domain names in dispute can not be associated with Respondent or its business.
Furthermore, the WHOIS records identify “Jason Curry” as the registrant. The records of the case further show that Complainant did not authorize, license or permit Respondent to retain the domain name in his own name as a registrant.
The Panel thus holds that Respondent is not commonly known by the <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (Respondent is not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
It should be further noted that Respondent’s <stinkbugnatural.com> domain name provides consumers with information on Complainant’s STINKBUG products but does not allow consumers to purchase Complainant’s STINKBUG products. See Appendix C, Exhibit H.
Therefore, the Panel finds that Respondent is not using the <stinkbugnatural.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.
The latter is further affirmed by the fact that Respondent has parked the other two domain names, <stinkbugnaturals.com> and <stinkbugdeodorant.com>. Particularly, the Respondent’s <stinkbugnaturals.com> and <stinkbugdeodorant.com> domain names resolve to a website stating: “Security risk blocked for your protection. Reason: This Websense category is filtered: Parked Domain.” See Appendix D, Exhibit D. In Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel held that respondent’s parking of a domain name containing complainant’s mark for respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Therefore, the Panel holds that Complainant has made a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domains, and Respondent has not proven to the contrary.
Thus, Policy 4(a)(ii) has been satisfied.
As already noted, Respondent had actual knowledge of Complainant’s mark prior to registration of the disputed domain names, and therefore registration of the disputed domain names by Respondent constitutes bad faith. See 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).
Moreover, Respondent is using the <stinkbugnatural.com> domain name in connection with a website that provides information on Complainant’s STINKBUG products, but does not sell the products. See Appendix C, Exhibit H. Previous panels have found bad faith disruption when a domain name is used to create the impression that the website will provide Complainant’s customers with information and/or options to buy products. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Respectively, the Panel finds such a conduct as disruptive, and thus constituting using the <stinkbugnatural.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Such a type of conduct and other evidence on the record of the case leads the Panel to a conclusion that registration of an additional two domain names, <stinkbugnaturals.com> and <stinkbugdeodorant.com>, a year and a half after first registering the <stinkbugnatural.com> domain name reveal a serial pattern of bad faith registrations pursuant to Policy 4(b)(ii) since such subsequent registrations were clearly made for the purpose of preventing Complainant from registering domain names incorporating their trademark. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Furthermore, bad faith conduct by Respondent is further demonstrated by the fact that Respondent parked <stinkbugnaturals.com> and <stinkbugdeodorant.com> domain names. As already noted, <stinkbugnaturals.com> and <stinkbugdeodorant.com> domain names resolve to a website stating: “Security risk blocked for your protection. Reason: This Websense category is filtered: Parked Domain.” See Appendix D, Exhibit D.
The Panelist agrees with previous panels that held that a respondent’s use of a domain name to provide parked websites demonstrates bad faith use and registration under Policy ¶ 4(a)(iii). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Therefore, the Panel finds that Respondent has registered and is using the three disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stinkbugnatural.com>, <stinkbugnaturals.com>, and <stinkbugdeodorant.com> domain names be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: January 8, 2014
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