Coles Pen Company Limited v. Cole, Samantha / Coles of London
Claim Number: FA1702001717458
Complainant is Coles Pen Company Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, Great Britain. Respondent is Cole, Samantha / Coles of London (“Respondent”), represented by Tony Catterall of Taylors Solicitors, Blackburn, Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <penheaven.com>, registered with NameSecure L.L.C.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2017; the Forum received payment on February 15, 2017.
On February 15, 2017, NameSecure L.L.C. confirmed by e-mail to the Forum that the <penheaven.com> domain name is registered with NameSecure L.L.C. and that Respondent is the current registrant of the name. NameSecure L.L.C. has verified that Respondent is bound by the NameSecure L.L.C. 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 February 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2017 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@penheaven.com. Also on February 16, 2017, 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 March 8, 2017.
Complainant’s Additional Submission was received on March 10, 2017 and determined to be in compliance with the Rules.
On March 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi 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 argues that Respondent’s <penheaven.com>, domain name is identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that
· it has rights in the PEN HEAVEN mark in respect of its registration with the trademark authority of Great Britain and Northern Ireland (Registry No. 2,557,609, first use Jan. 2006, registered Sept. 3, 2010);
· its retail business trades under its registered trademark “Pen Heaven” with its website located at www.penheaven.co.uk which was registered on 25 October 2005;
· it also has common law rights in the mark;
· Respondent’s <penheaven.com> is identical to the PEN HEAVEN mark by eliminating the space between the words of the mark and merely adding the “.com” generic top-level domain (“gTLD”).
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· Respondent is not commonly known by <penheaven.com>;
· and has not received any authorization or license from Complainant to use the PEN HEAVEN mark in connection with domain name registrations or in any other context;
· Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use;
· Respondent has failed to make any active use of the domain name since its registration in 2008.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent has listed the domain name for sale on <sedo.com>;
· Respondent offered to sell the domain name for £30,000 to the Complainant;
· Respondent registered the domain name primarily to disrupt the business of Complainant by registering the domain name after leaving the employ of Complainant’s business, and causing the resolving website to promote affiliate links and bolster Respondent’s business which sells writing instruments online;
· Respondent attempts to confuse Internet users for commercial gain;
· Respondent clearly had actual or constructive knowledge of the Complainant’s mark.
B. Respondent
Respondent argues that she has rights and legitimate interests in the domain name. In support of this Respondent contends that
· the domain name is relevant and appropriate to the Respondent's business, which owns and operates a legitimate pen company in the USA;
· Complainant’s business is based in the UK and Respondent’s is based in the USA;
· Complainant does not allege rights to the PEN HEAVEN mark in the USA;
· Further, Respondent’s registration of the domain name predates the registration of Complainant’s UK trademark by more than 2 years;
· she does not accept Complainant’s allegation of common law rights;
· Complainant has failed to address the crucial question: the extent of sales/advertising/etc. under the trademark;
· she owns Coles of London LLC, a distribution company that supplies retail stores in the USA;
· she opened the company in November 2006, and has not competed with Complainant in any way with respect to the geographic disparity and the brands offered;
· she chose the domain name from a list available pen related domain names because she simply liked the 'Pen Heaven' name the most;
· the domain name has an attractive name that is relevant her business;
· she has managed the domain name with integrity and has not yet built a website, and does not sell competing pens through the domain name;
· she never had an intention of selling the domain name—Complainant is the one who approached Respondent to buy the domain.
Respondent argues that she did not register and use the disputed domain name in bad faith. In support of this Respondent contends that
· she disputes the contention that she offered the domain name for purchase in the amount of £30,000;
· the listing on <sedo.com> was not at her behest, and confirmed with the site administrator that the listing has been removed;
· she did not intend to disrupt the business of Complainant by registering the domain name;
· the fact that she has kept the domain for over 8 years bears against Complainant’s argument that it is harmed or disrupted by it;
· predating precludes any inference of bad faith;
· Complainant has not explained the unconscionable 8 year delay in bringing this dispute.
C. Additional Submissions
Complainant
In the additional submission Complainant argues that
· the prior relationship with Respondent show the an intent of Respondent to trade off the goodwill associated with Complainant’s mark and to harm Complainant;
· Respondent is the son and daughter-in-law of a director of Complainant who worked with the PEN HEAVEN brand during their employment and now operate a competing business;
· Respondent cannot argue that they were unaware of Complainant’s PEN HEAVEN trademark;
· Complainant and Respondent are competitors, and Respondent’s evidence only supports this assertion;
· Respondent’s use amounts to inactive holding, as Respondent admits it has not developed a website since its creation.
Respondent
In the additional submission, Respondent objects to Complainant’s additional submission on the ground that ICANN Rules make no provision for such submissions.
In the additional submission, Respondent asserts that
· she and her husband left the Complainant in June 2006;
· was not aware of the trademark because it did not exist;
· does not deny that she was aware of Complainant, but use of a name does not of itself give rise to any rights and at the point she left Complainant;
· she became pregnant in around May 2008 and 15 month later with the second child and by late 2016 they resurrected their plans to develop the <penhaven.com> website;
· she never traded in the UK.
The domain name <penheaven.co.uk> was registered by Complainant on 25 October 2005.
The <penheaven.com> domain name was registered by Respondent on May 2, 2008.
The PEN HEAVEN mark was registered by Complainant on September 3, 2010.
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.
Preliminary Issue: Complainant’s and Respondents additional submission
Respondent objects to Complainant’s additional submission on the ground that ICANN Rules make no provision for such submissions.
The Panel finds that Complainant’s additional submission is admissible under
Supplemental Rule 7(a) (“A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum . . . .”).
Respondent’s additional submission was received after the deadline for submissions because the submission was not in compliance with Supplemental Rule #7, never the less the Panel decided to consider it along with the other materials.
Preliminary Issue: Doctrine of Laches
Respondent contends Complainant has not explained the unconscionable 8 year delay in bringing this dispute where as any company upon finding that the ‘.com’ domain essential to those plans was already registered would have acted swiftly to ensure that the ‘.com’ domain could be obtained.
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard this possible defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Complainant claims it has rights in the PEN HEAVEN mark in respect of its registration with the trademark authority of Great Britain and Northern Ireland The Panel finds that evidence of a valid registration with a governmental authority is sufficient in establishing rights in a mark for the purposes of Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Accordingly, the Panel may agree that Complainant has supported its rights in the PEN HEAVEN mark under Policy ¶ 4(a)(i).
While Respondent argues that its registration of <penheaven.com> predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Further, Complainant argues that Respondent’s <penheaven.com> is identical to the PEN HEAVEN mark by eliminating the space between the words of the mark and merely adding the “.com” gTLD. The Panel finds that such alterations do not create distinction, therefore, the Respondent’s <penheaven.com> is identical to the PEN HEAVEN mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
As to the second element, 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 (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 (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 argues that Respondent has no rights or legitimate interests in or to <penheaven.com>. First, Complainant argues that Respondent is not commonly known by <penheaven.com>, and has not received any authorization or license from Complainant to use the PEN HEAVEN mark in connection with domain name registrations or in any other context. Since Respondent does not allege that she has been commonly known by the name comprised in the domain name, the Panel finds that Respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Further, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use. The Panel finds that failing to make active use of the domain name for 8 years does not constitute a bona fide offering of goods or services. Panel notes that parked pages may not confer rights or legitimate interests. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). See Air Mauritius Ltd v. Anne c/o Anne FA 1398938 (Forum August 17, 2011) (“Therefore, this Panel finds that failing to make an active use of the disputed domain names does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy”).
Panel also finds that competing hyperlinks also bear against a finding of rights for a Respondent. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Based on the above the Panel concludes that Respondent has caused the resolving website to display hyperlinks that lead to Complainant’s competitors and therefore there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered or used <penheaven.com> in bad faith. First, Complainant contends that Respondent has listed the domain name for sale on <sedo.com>, imputing bad faith under Policy ¶ 4(b)(i), especially when coupled with correspondence with Respondent in which the domain name was offered for £30,000.
The Panel finds that the circumstances of the domain registration and events that have transpired since indicate (such as offers for sale, even though it was by initiated Complainant, but Respondent made several counter-offers) that Respondent intends to profit in excess of out-of-pocket costs in bad faith under Policy ¶ 4(b)(i). See Bear River Mutual Insurance Company v. Dzone Inc., FA1311001528522 (Forum Dec. 11, 2013) (concluding that the respondent’s offer to sell the disputed domain name to the general public and to the complainant in the form of counter-offers demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)).
Complainant argues that Respondent registered the domain name primarily to disrupt the business of Complainant by registering the domain name after leaving the employ of Complainant’s business, and causing the resolving website to promote affiliate links and bolster Respondent’s business which sells writing instruments online in an attempt to confuse Internet users for commercial gain under both Policy ¶¶ 4(b)(iii) and (iv). Use of competing hyperlinks has been found in bad faith under both prongs of the Policy. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Based on the evidence submitted by Complainant displaying several competing hyperlinks, the Panel finds that this is bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the PEN HEAVEN mark prior to registration of the domain names because of Complainant's registration of its mark and its prior relationship with Respondent. Due to the fact that Respondent did not refute their prior close personal and business relationship with Complainant the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Lastly the Panel finds that failing to make active use of the domain name for 8 years constitutes bad faith under Policy ¶ 4(a)(iii). See Air Mauritius Ltd v. Anne c/o Anne FA 1398938 (Forum August 17, 2011) (“Previous panels have determined that failing to use a disputed domain name can satisfy the requirement of bad faith registration”).
Accordingly, this Panel finds that there is sufficient evidence to conclude Respondent’s use and registration of the disputed domain names constitutes bad faith per 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 <penheaven.com> domain name be TRANSFERRED from Respondent to Complainant.
dr. Katalin Szamosi, Panelist
Dated: March 30, 2017
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