Electric Mirror, LLC v. ERIC REAO
Claim Number: FA1510001643238
Complainant is Electric Mirror, LLC (“Complainant”), represented by Debra Wachter of Electric Mirror, Washington, USA. Respondent is ERIC REAO (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <electricmirror.org>, registered with eNom, Inc. (sometimes referred to herein as the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2015; the Forum received payment on October 20, 2015.
On October 21, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <electricmirror.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@electricmirror.org. Also on October 22, 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 November 7, 2015.
On November 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 is a manufacturer of “Lighted Mirrors” and “Mirror TVs” with worldwide distribution of its products.
Complainant has registered the ELECTRIC MIRROR trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,953,432, registered May 3, 2011) [the “Complainant’s Mark”]. This mark is used in connection with the sale of mirrors, namely wall-mounter mirrors.
The <electricmirror.org> domain name is confusingly similar to the ELECTRIC MIRROR trademark because the Disputed Domain Name contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, as demonstrated by the available WHOIS information. Additionally, Respondent is not a licensee of Complainant. Furthermore, Respondent is using the domain name to run a competing business, which does not consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent is operating a competing business, namely the sale of wall mounted mirrors. The sale of wall mounted mirrors is by way of a website to which the Disputed Domain Name directs [Respondent’s Website”]. This website presents a large number of photographs and videos of wall mounted mirrors, many of which are photographs and videos of mirrors sold by Complainant. By running a competing business, Respondent is disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Respondent is also attempting to commercially profit from a likelihood of confusion, which amounts to bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent is using the terms “electric” and “mirror” to describe goods for sale on Respondent’s Website in accordance with 15 U.S.C. § 1115(b)(4). Respondent is in no way using the terms to identify with Complaint’s Mark. Respondent is using these generic terms in accordance with the common dictionary definitions of these words.
All photographs on Respondent’s Website are being used with the permission of the appropriate owners thereof; all images on Respondent’s Website have been sourced from Amazon in accordance with their Terms of Use, and these terms specially convey permission from the images’ owners to Respondent for use on Respondent’s Website. Further, all videos on Respondent’s Website are used in accordance with Youtube’s Terms of Service. These terms specifically convey permission from Complainant to Respondent use the videos in question.
Respondent has rights to and legitimate interests in the Disputed Domain Name because it is using the Disputed Domain Name to make a bona fide offering of goods.
Respondent has not engaged in bad faith registration or use because Respondent is using the domain name in connection with a legitimate business, which precludes a finding of bad faith.
Complainant is the owner of the trademark ELECTRIC MIRROR. This trademark was registered on May 3, 2011 and was registered in connection with “Mirrors, namely wall mounted mirrors.”
Respondent is the registrant of the Disputed Domain Name, <electricmirror.org>, with dNom, Inc. (as “Whois Privacy Protection Service, Inc.”), and the Disputed Domain Name was registered on April 30, 2015.
Respondent offers wall mounted mirrors for sale to the public through Respondent’s Website. Respondent’s website displays many photographs and several videos showing wall mounted mirrors.
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.
The Disputed Domain Name contains the entirety of Complainant’s Mark and differs only by the addition of the gTLD “.org.” As a general rule, a gTLD cannot distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, because the domain name contains no other alterations, the Panel finds that the <electricmirror.org> domain name is identical to the ELECTRIC MIRROR mark according to Policy ¶ 4(a)(i).
As such, Complainant has established the first element of the Policy.
As a general rule, the 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.”).
Complainant has demonstrated that it has not given permission to Respondent to use Complainant’s Mark.
Respondent’s name is not “Electric Mirror” as indicated by the relevant WHOIS LOOKUP, and nothing in the record suggests otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was 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.”)
Complainant asserts and supports the contention that Respondent’s use of the Disputed Domain Name is in bad faith, as is further discussed below.
As such, Complainant has made the required prima facie case.
Respondent argues that it does have rights to and legitimate interests in the Disputed Domain Name because it is using it in connection with a bona fides sales of products through Respondent’s Website, and it is doing so without violating Complainant’s trademark rights.
The Panel finds that Respondent is not using the Disputed Domain Name in connection with a bona fides offering of goods under Policy paragraph 4(c)(i).
Policy paragraph 4(c)(i) reads in pertinent part:
“Any of the following circumstances…if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purpose of Paragraph 4(a)(ii): …before any notice to [the respondent] of the dispute, [the respondent’s] use of…the domain name…in connection with a bona fide offering of goods…”
Whereas the sale of mirrors on the internet is a legitimate commercial activity and, in the vernacular sense, is a bona fides activity, Panels have routinely held that for purposes of the Policy a use of a disputed domain name that is in bad faith under Policy ¶ 4(b) precludes a finding in favor of a respondent with respect to rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(i). See Wilden Pump & Engineering LLC v. Tara Low, FA 598361 (Nat. Arb. Forum March 17, 2015) (“Whereas it can be appropriate to generate click-through revenues from a website, it is not a bona fides offering of goods or services under the Policy to do so using another’s trademark in bad faith.”) See also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds 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).”); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the Disputed Domain Name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
As is discussed below, Respondent’s use of the Disputed Domain Name is in bad faith.
As such, Complainant has established the second element of the policy.
Under Policy ¶ 4(b)(i), bad faith exists when, among other things, a Disputed Domain Name is used by a respondent to “…intentionally attract, for commercial gain, Internet users to [the respondent’s] web site…by creating a likelihood of confusion with the complaints’ mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site…or of a product or service on [the respondent’s] web site…”
Respondent’s website is intended for Respondent’s commercial gain. Respondent admits to such when it argues that it is using the Disputed Domain Name is in connection with a bona fide offering of goods.
Respondent is intentionally attempting to attract Internet users to Respondent’s Website. No reason would otherwise exist for a website on which Respondent offers lighted mirrors for sale to the public.
Respondent is intentionally attempting to create a likelihood of confusion with Complainant’s Mark. As a purveyor of products within the same market it is inconceivable that Respondent would not know about Complainant and its products.
Respondent argues that it is not using Complainant’s Mark, but rather is merely using the generic words “electric” and “mirror” in according to their dictionary definitions and as accurate descriptors for Respondent’s products. In some situations the addition of one or more generic words to a trademark can create a meaningful distinction, and in these instances the generic word(s) tend to conceptually lead away from the involved complainant and its products. Such is not the case here. The words “electric” and “mirror” constitute the entirety of Complainant’s Mark, and their use tends to conceptually lead toward Complainant and not away from Complainant.
Both Complainant and Respondent focus on the issue of Respondent’s use of photographs and videos of a number of Complainant’s products as installed in various physical locations. Complainant argues that this is strong evidence of bad faith, and the Respondent argues that it has permission from Amazon and Youtube to use these images and videos. However, this issue need not be resolved here. It is sufficient for purposes of this decision that Respondent is selling competing products and that Respondent’s Website contains numerous pictures of competing products, whatever the source of these pictures and whatever the propriety thereof from a copyright standpoint.
As such, Complainant has established the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <electricmirror.org> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: November 24, 2015
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