Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp.
Claim Number: FA1412001597388
Complainant is Tristar Products, Inc. (“Complainant”), represented by Daniel J. Holmander of Barlow, Josephs & Holmes Ltd., Rhode Island, USA. Respondent is Domain Administrator / Telebrands, Corp. (“Respondent”), represented by Robert T. Maldonado of Cooper & Dunham LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anklegenie.com>, registered with CSC Corporate Domains, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2014; the National Arbitration Forum received payment on December 30, 2014.
On January 2, 2015, CSC Corporate Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <anklegenie.com> domain name is registered with CSC Corporate Domains, Inc. and that Respondent is the current registrant of the name. CSC Corporate Domains, Inc. has verified that Respondent is bound by the CSC Corporate Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@anklegenie.com. Also on January 5, 2015, 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 January 26, 2015.
An additional submission was filed by Complainant on February 2, 2015. It was timely. An additional submission was submitted by Respondent on February 9, 2015. It was also timely.
On February 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s business is that of the infomercial—products are described in persuasive yet detailed television segments and consumers buy the products during the telecast. Complainant uses GENIE to promote and sell feminine apparel such as lingerie, leotards, hosiery, nightgowns, undergarments, as well as shapewear shorts and briefs. There has been USPTO registration for this GENIE mark (Reg. No. 4,467,559, registered Jan. 14, 2014, filed Oct. 11, 2012). This registration dates Complainant’s rights back at least until the filing date of the USPTO registration.
Respondent has no rights or legitimate interests in this domain name. Respondent is not known by the <anklegenie.com> domain name and has no right to use the GENIE mark in domain names. Further, the <anklegenie.com> domain name is being held by Complainant’s competitor in the infomercial trade. Both Complainant and Respondent both were finalists in an Electronic Retail Association award for marketing efforts. The USPTO has expressly refused registration of Respondent’s ANKLE GENIE mark. Respondent is using the <anklegenie.com> domain name to pass itself off as Complainant and the GENIE line of goods. The domain name is confusingly similar to the trademark.
Respondent registered and is using the <anklegenie.com> domain name in bad faith. Respondent is intentionally disrupting Complainant’s commercial operations by hosting this domain name and selling competing goods. Further, Respondent is capitalizing on the likelihood Internet users will mistakenly associate the <anklegenie.com> domain name’s offerings with the GENIE mark. Finally, Respondent is a chief competitor and paramount rival in the infomercial business and thus had to have known of the GENIE mark prior to registering and using the <anklegenie.com> domain name.
B. Respondent
Respondent’s <anklegenie.com> domain name combines the common term “genie” with the term “ankle.” There are other outstanding trademark registrations that include the term “genie” yet are used in third-party offerings.
Respondent’s goods are not competitive to Complainant’s goods. Respondent’s goods are outer wear that are placed over socks. Complainant’s goods are worn inside other clothing and are generally hidden. Respondent has sold over $5.8 million in goods in 2014 under the ANKLE GENIE mark. In January 2014 alone over 50,000 units were sold to consumers.
Respondent has not acted in bad faith at all here. Respondent’s goods are clearly distinct from Complainant’s own goods. The fact stands that there is low strength in a GENIE mark as the term is a common one and not one devised completely by Complainant. Further, there is no evidence to suggest that Respondent “intentionally” sought to profit from a likelihood of confusion—intent being a requirement of Policy ¶ 4(b)(iv). Complainant already sells ankle-wear under a COPPER WEAR mark, and has never used GENIE to identify such goods.
Respondent notes that as of January 21, 2015, Respondent is presently contesting the USPTO’s denial of its trademark registration for likelihood of confusion.
C. Additional Submissions
Complainant.
In its additional submission, Complainant asserts the potential for actual confusion exists and that the record shows “initial interest” confusion caused by Respondent’s marketing. Complainant alleges that its registration and status as direct competitor of Respondent demonstrate that Respondent knew or should have known of Complainant’s prior rights at the time of Respondent’s registration of its mark and that Respondent intended by the registration to disrupt Complainant’s business and to attract Internet users to its website for commercial gain. Complainant contends Respondent’s bad faith demonstrates its lack of legitimate interest in the disputed domain name.
Respondent.
In its additional submission, Respondent challenges Complainant’s additional contentions. Respondent contends the parties’ market to different consumers, that its ankle sleeve does not compete with any product of Complainant marketed as a genie-branded product, that all of the authorities relied on by Complainant are distinguishable, that Complainant is playing language games and that no evidence exists of actual confusion. Respondent distinguishes the cases relied on by Complainant in expending its contention of bad faith registration and contends no basis exists for constructive notice, nor does any evidence exist of business disruption or causing confusion to mislead Internet users. Respondent points out that the USPTO has not made a final decision regarding Respondent’s effort at trademark registration and that no evidence exists that Respondent was aware of Complainant’s asserted marks when it registered the disputed domain name.
No evidence exists that Respondent had actual knowledge of Complainant’s trademark registration on November 21, 2013 when it registered the disputed domain name. Respondent plainly identifies itself on its website, and the record contains no evidence that Respondent registered its domain name to mislead consumers to purchase its compression stocking rather than a compression stocking marketed by Complainant that Complainant does not market under its “genie-brand.” No evidence exists that Respondent sought or received commercial gain by causing or benefiting from any potential confusion with Complainant’s marks caused by its use of the word “genie” in its domain name. No evidence exists that Respondent either intended to disrupt or actually did disrupt Complainant’s business in the use of its domain name in marketing its compression stocking.
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.
Because the panel finds that Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith, the panel does not find it necessary to determine whether the domain name is confusingly similar to Complainant’s marks.
Because the panel finds that Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith, the panel does not find it necessary to determine whether Respondent had rights or legitimate interests in the domain name.
Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). The record is devoid of supporting facts. Respondent has not attempted to disrupt Complainant’s business, is not seeking to disrupt Complainant’s business, and is not using the domain name to divert Internet users to its website for commercial gain. Respondent has not been shown to have engaged in any conduct that would violate Policy 4(a)(iii) or 4(b). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). Complainant has failed to meet its burden of proof to establish that Respondent registered and used the domain name in bad faith.
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <anklegenie.com> domain name REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: February 16, 2015
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