BluMarble, LLC v. Steve Cherry / GENERAL DELIVERY
Claim Number: FA1406001562590
Complainant is BluMarble, LLC (“Complainant”), represented by Brianna Dahlberg, Los Angeles, California, USA. Respondent is Steve Cherry (“Respondent”), represented by Jeffrey M. Rosenfeld, San Francisco, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bottlehood.com> and <bottlehoods.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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2014; the National Arbitration Forum received payment on June 3, 2014.
On June 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bottlehood.com> and <bottlehoods.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 June 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2014 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@bottlehood.com and postmaster@bottlehoods.com. Also on June 4, 2014, 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 June 24, 2014.
An Additional Submission from Complainant was received on June 30, 2014.
On July 3, 2014, 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.
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.
A. Complainant
Complainant contends that:
i. it is engaged in the business of creating and selling vases, drinking glasses, serving trays, lighting fixtures, and other household goods made from recycled beer, wine, and liquor bottles,
ii. it owns a Trademark Registration with the United States Patent and Trademark Office (“USPTO”) for the BOTTLEHOOD mark (Reg. No. 4,261,484, registered December 18, 2012),
iii. it also has common law rights in the BOTTLEHOOD mark.
iv. the <bottlehood.com> domain name is identical to Complainant’s BOTTLEHOOD mark,
v. the <bottlehoods.com> domain name is confusingly similar to Complainant’s BOTTLEHOOD mark,
vi. Respondent has no rights or legitimate interests in the disputed domain names,
vii. Respondent is not commonly known by the disputed domain names,
viii. Respondent is using the disputed domain names to sell infringing/ counterfeit goods,
ix. Respondent has registered and is using the disputed domain names in bad faith,
x. Respondent is disrupting the business activities of Complainant,
xi. Respondent is using the disputed domain names to attract consumers to his own website to sell his directly competing glassware goods,
xii. Respondent is a former employee of Complainant, and
xiii. Respondent knew of the BOTTLEHOOD mark at the time of the Registration of the disputed domain names.
B. Respondent
Respondent contends that:
i. he began using the BOTTLEHOOD mark in connection with his glassware business in 2009,
ii. he is not using the disputed domain names to disrupt Complainant’s business, nor to derive commercial benefit from any consumer confusion,
iii. he is using the disputed domain names to advertise his recycled bottle and wood products, and
iv. he registered the <bottlehood.com> domain name on September 17, 2009 and the <bottlehoods.com> domain name on February 15, 2012.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Names are identical and/or 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 respectof the Domain Names.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Names have been registered and is being used in bad faith.
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.
Procedural Issue: Court Proceedings
Respondent argues that certain intellectual property rights including the rights to the two disputed domain names Complaint and two it its predecessors are currently being litigated in the San Diego County Superior Court. Complainant makes no mention of the pending proceedings in its Complaint, but its Additional Submission contends it is not a party to that litigation. Respondent does not dispute that fact and no court document provided indicates that Complainant is a party to any such litigation.
Complainant argues that there is no “business dispute” here, and Respondent’s California state court litigation against third parties can have no impact on ownership of the disputed domain names. The Panel agrees.
In situations where concurrent court proceedings are pending, some panels have chosen to proceed where the concurrent court case only tangentially touches on the issues in the UDRP case. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”).
However, other panels have chosen not to proceed because of pending litigation, particularly where the court could rule on the same issue, making the UDRP proceeding moot, duplicative, conflicting or where the court could make a factual finding or legal determination that could change the outcome of the UDRP case. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
There is no court proceeding wherein the rights of Complainant versus those of Respondent to these disputed domain names will be adjudicated. Accordingly, the Panel will consider the contentions of Complainant and Respondent and proceed to decide this dispute.
Complainant is engaged in the business of creating and selling vases, drinking glasses, serving trays, lighting fixtures, and other household goods made from recycled beer, wine, and liquor bottles. Complainant has a Trademark Registration with the USPTO for the BOTTLEHOOD mark (Reg. No. 4,261,484, registered December 18, 2012). The Panel concludes that Complainant has established rights in the mark under Policy ¶ 4(a)(i) through Registration of the mark with the USPTO. Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005). The Panel notes that Respondent registered the <bottlehood.com> domain name in September of 2009, predating Complainant’s USPTO Registration of the BOTTLEHOOD mark in 2012. It is not necessary that Complainant have a valid Trademark Registration prior to Respondent’s Registration of the disputed domain names, so long as it can show common law rights in the mark pursuant to Policy ¶ 4(a)(i). 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 alleges that it has common law rights in the BOTTLEHOOD mark. Complainant argues that the mark has used in commerce since November 7, 2009, currently by Complainant and previously by its predecessor, BottleHood, Inc. Complainant lists its First Use of the BOTTLEHOOD mark on September 20, 2009, and lists its First Use In Commerce of the BOTTLEHOOD mark as November 7, 2009. The Panel finds that Complainant has used the mark continuously since 2009, and that Complainant has common law rights as early as September 20, 2009. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Respondent neither disputes these facts, nor provides evidence of his use in commerce of any such mark specifically prior to September 20, 2009 or even November 7, 2009.
Complainant claims that Respondent’s <bottlehood.com> domain name is identical to Complainant’s BOTTLEHOOD mark. Respondent uses the BOTTLEHOOD mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Respondent’s <bottlehood.com> domain name is identical to Complainant’s BOTTLEHOOD mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <bottlehoods.com> second domain name is confusingly similar to Complainant’s BOTTLEHOOD mark. Respondent merely adds the letter “s” to the end of Complainant’s BOTTLEHOOD mark in the disputed domain name. Respondent’s inclusion of a letter “s” to the mark does nothing to eliminate confusing similarity under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a Registered Trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Respondent adds the gTLD “.com” to the disputed domain name. The Panel holds that Respondent’s inclusion of a gTLD does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Consequently, the Panel concludes that Respondent’s <bottlehoods.com> domain name is confusingly similar to Complainant’s BOTTLEHOOD mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶4(a)(i), nor does he dispute any of the factual claims made by Complainant and now found by the Panel.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
Complainant asserts that Respondent is not commonly known by the <bottlehood.com> and <bottlehoods.com> domain names. Complainant argues that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the BOTTLEHOOD mark in a domain name or in any other manner. Respondent does not claim to the contrary. He is listed as “Steve Cherry / GENERAL DELIVERY” in the WHOIS information. Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), [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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark.] Respondent does not dispute these claims. Accordingly, the Panel finds that Respondent is not commonly known under the <bottlehood.com> and <bottlehoods.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <bottlehood.com> and <bottlehoods.com> domain names to sell infringing/ counterfeit goods. Respondent uses the disputed domain names to sell competing, unauthorized goods bearing Complainant’s Trademark on glassware goods. The Panel holds that Respondent’s sale of competing goods bearing Complainant’s mark is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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 Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Complainant has shown that Respondent has no rights and Respondent has not shown that it does.
Complainant asserts that Respondent is disrupting its business activities. Respondent uses the disputed domain names to sell competing glassware goods. A respondent’s use of a domain name to sell competing and counterfeit products disrupts a complainant’s business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Therefore, the Panel finds that Respondent has registered and is using the <bottlehood.com> and <bottlehoods.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is using the <bottlehood.com> and <bottlehoods.com> domain names to attract consumers to his own website which he uses to sell his directly competing glassware goods. Respondent is using the disputed domain names to sell competing or counterfeit glassware goods. Respondent is diverting Internet users to its own site to sell competing or counterfeit products for which it commercially benefits. Thus, the Panel concludes that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant argues that as a former employee of Complainant, Respondent knew of the BOTTLEHOOD mark at the time of the registration of the <bottlehood.com> and <bottlehoods.com> domain names. The Panel finds that Respondent had actual knowledge of Complainant's BOTTLEHOOD mark and rights and therefore determines that Respondent registered the <bottlehood.com> and <bottlehoods.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bottlehood.com> and <bottlehoods.com> domain names be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: July 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page