DECISION

 

The Tan Factory c/o Jeff D'Alessio v. DefaultData.com c/o Brian Wick

Claim Number: FA0409000327674

 

PARTIES

Complainant is The Tan Factory c/o Jeff D'Alessio (“Complainant”), 5067 S. Arville St., Las Vegas, NV 89118.  Respondent is DefaultData.com c/o Brian Wick (“Respondent”), P.O. Box 481002, Denver, CO 80248.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tanfactory.com>, registered with Enom, Inc.

 

PANEL

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.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 14, 2004; the Forum received a hard copy of the Complaint on September 15, 2004.

 

On September 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <tanfactory.com> is registered with Enom, Inc. and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tanfactory.com by e-mail.  The Commencement Notification set a deadline of October 12, 2004 by which Respondent could file a Response to the Complaint.

 

A timely Response was received and determined to be complete on October 12, 2004.

 

On October 18, 2004, Complainant timely filed an additional submission in accordance with NAF Supplemental Rule 7(A). 

 

On October 19, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist. 

 

Shortly thereafter, also on October 19, 2004, Respondent timely filed a response to this additional submission, in accordance with NA Supplemental Rule 7(C).

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.  INITIAL SUBMISSIONS

 

Complainant

 

Complainant asserts that it has satisfied the three elements required under the Policy.

 

First, Complainant asserts that it possesses trademark or service mark rights that are identical or confusingly similar to the domain name.  Complainant states that it has a federal trademark registration for “The Tan Factory,” that it has done business as a tanning salon under the name “The Tan Factory, LLC” since 1997 and that it uses “Tan Factory” in its advertising. 

 

Second, Complainant alleges that Respondent lacks rights or a legitimate interest in the domain name.  Complainant alleges that Respondent does not use the domain name in connection with a bona fide offering of goods or services; that Respondent has not been commonly known by the domain name; that Respondent holds the registration of the domain name for the sole purpose of reselling it; and that Respondent holds no trademark registration for “Tan Factory.”

 

With respect to the third element required under the Policy, the Complaint states in its entirety:  “[T]here are circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.”

 

Respondent

 

Respondent contests all of Complainant’s assertions.  As to the first element, Respondent contends that Complainant’s ownership of a registration for the mark “The Tan Factory” should not give it rights.  In summary, Respondent argues: 1) “Tan Factory” is a generic term or, if descriptive, it cannot be protected as a trademark without a showing of secondary meaning, and Complainant has not shown and cannot show that “Tan Factory” has acquired secondary meaning; 2) other businesses use the name “Tan Factory;” 3) Complainant acquired the trademark registration for “The Tan Factory” mark through an assignment on August 8, 2004, which constitutes bad faith “trademark borrowing”; 4) Complainant did not file its own application to register “Tan Factory” until August 9, 2004; 5) Respondent used the domain name prior to the Complainant’s August 9, 2004 trademark application; and 6) recognizing rights of Complainant to this generic term will allow Complainant to gain control over a group of similar domain names.

 

Turning to the second element, Respondent claims that it has made bona fide use of the domain name.  First, Respondent claims use of the domain name in a “third party sponsored results advertising capacity (i.e. Pay-Per-Click using Google Overture or Findwhat),” and argues that such use was recognized as a bona fide use by the panel in carsales.com.au Limited v. Alton L. Flanders, D2004-0047 (WIPO Apr. 8, 2004).  Second, Respondent claims to be developing a “‘yellow page’ forum” for its domains similar to <tanfactory.com>.  Third, Respondent observed, “Google, Overture and other advertising aggregators rely on and compete heavily for use of generic or common use domains – demonstrating that even ‘potential’ Internet user type-in traffic alone is a bona-fide use – regardless of how the domain is currently used, if at all.”

 

Respondent answered Complainant’s assertions as to the third element required under the Policy by arguing that Complainant had offered no evidence of Respondent’s bad faith.

 

B.  ADDITIONAL SUBMISSIONS

 

Complainant

 

In its additional submission, Complainant responded to the points made by Respondent.

 

In regard to the dispute over the first element required under the Policy, Complainant countered that, under 15 U.S.C. § 1115(a), federal registration of a mark is prima facie evidence of the registrant’s exclusive right to use the mark in connection with the goods and services specified in the registration, and that Respondent has not overcome this prima facie evidence of Complainant’s right to the mark.  Moreover, Respondent’s failure to seek cancellation of its “The Tan Factory” registration, or to oppose its pending applications, shows that Respondent has conceded that the registration is valid.  Complainant observed as well that the registration states a date of first use of the mark of February 1, 2001, more than a year prior to Respondent’s registration of the domain name.  In addition, Complainant argues, the fact that it acquired the registration through assignment is irrelevant to the issue of ownership.

 

In regard to the dispute over the second element required under the Policy, Complainant asserts that Respondent is profiting by providing advertising links for competitive tanning salon services,[1] but that Respondent does not provide its own tanning salon services.  Complainant also states that the high number of domain names owned by Respondent proves it is guilty of cybersquatting.

 

In regard to the dispute over the third element required under the Policy, Complainant countered by stating that, after Complainant challenged Respondent’s registration of the domain name, Respondent asked Complainant to submit an offer to purchase the domain name, and that this evidences Respondent’s bad faith in registration.[2]

 

Respondent

 

Respondent submitted a response to Complainant’s additional submission.  Among its many arguments, Respondent asserts that his position on the first factor is supported by the NAF decision in Men's Wearhouse Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), in which the panel found “suit warehouse” generic.

 

PROCEDURAL RULING

This Panel has frequently written on the subject of additional submissions.  Although there are limited circumstances in which such additional submissions may be warranted, e.g., Top Driver, Inc. v. Schaengold, Case No. D2002-0972 (WIPO Jan. 7, 2003) (submitting new, pertinent facts that did not arise until after submission of Complaint); Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000) (submitting new, relevant legal authority); Radan Corp. v. Rabazzini Winery, Case No. D2003-0353 (WIPO July 28, 2003) (submitting evidence to rebut factual arguments that could not have been anticipated in Complaint), and although the National Arbitration Forum Supplemental Rules provide a procedure for such submissions, NAF Supp. Rule 7, such submissions should be the exception rather than the rule, and should only be filed when necessary to bring new facts or law to the Panel’s attention or to rebut an unexpected argument.  Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000).

 

Parties, however, appear to believe that routine replies and sur-replies are appropriate, much as is expressly permitted in some litigations.  Not only are such routine responses inconsistent with the Rules as promulgated by ICANN, World Wrestling Federation Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (supplemental submissions showed not be used to reargue issues already submitted), but also they drive up costs (both for the parties and the panelists) and can delay the conclusion of a process that is supposed to be as inexpensive and efficient as possible, within due process constraints.  See AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (saving parties expense of unnecessary supplemental briefing because request for leave to file supplemental submissions denied).

 

Most of Complainant’s additional submission did nothing but react to Respondent’s arguments, many of which could have been anticipated or were so lacking in merit as to require no response.  The bad faith section, though, did more:  In an effort to remedy the obvious deficiency of the initial pleading (as quoted above), it alleged facts (regarding an offer to sell) that could and should have been asserted in the initial Complaint.  This is improper.

 

In this case, it makes no difference because, as discussed in footnote number 2, supra, even the facts Complainant now alleges fail to prove bad faith registration and use.  That said, it is essential that Complainants put all relevant and necessary allegations in the Complaint, as specifically required by the Rules.  Rule 3(ix).  Otherwise, Respondents will not have fair notice of the allegations and a fair chance to respond to those allegations in the Response.  When complainants include new allegations in their replies, it can constitute sandbagging (though, in this case, it appears to be more from incompetence than malice) and forces respondents to incur additional costs in preparing sur-replies.  The prejudice is even greater in NAF cases, where respondents have to pay a filing fee for the right to file a sur-reply.

 

Because Complainant’s supplemental submission was improper, the Panel will disregard it.  In light of that ruling, Respondent’s supplemental submission is moot and also will be disregarded.

 

FINDINGS

Having carefully reviewed the evidence and the parties’ arguments, the Panel concludes that Complainant has failed to prove that the domain name was registered in bad faith.  Accordingly, the Panel denies the request that it transfer the domain name to the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

The parties do not dispute that Complainant owns a federal registration for the service mark “The Tan Factory”.  The only difference between that registered mark and the domain name is the word “the” and the gTLD “.com” – two elements with no trademark significance.  Because these minor differences are immaterial for purposes of the Policy, see EAuto, LLC v. Available-Domain-Names.com, D2000-0120 (WIPO Apr. 13, 2000) (finding trademark “EAUTO” confusingly similar to e-auto-parts.com), the Panel concludes that the domain name is confusingly similar to the Complainant’s mark.

 

Respondent, though, argues that Complainant has no trademark rights (citing Men's Wearhouse Inc. v. Wick).  In that case, the Complainant owned a design mark containing the the words “suit” and “warehouse,” but both of those words were disclaimed (reflecting a PTO view that those words were either generic or merely descriptive).  In this case, the word “tan” is disclaimed, but not “factory.”  This suggests that the PTO believed “factory” to be, at the minimum, suggestive of salon services, rather than descriptive (a conclusion that seems right to this Panel on the limited record submitted).  This fact distinguishes this case from the Men's Wearhouse Inc. v. Wick decision.

 

Complainant’s ownership of this federal registration is thus prima facie evidence of ownership of a valid trademark.  See Commerce LLC v. Charles M. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002).  Although Respondent argues that the mark is generic or merely descriptive and that Complainant has failed to submit evidence of secondary meaning, a panel should not overturn the presumption of validity absent compelling evidence.  Elec. Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 1, 2000).  Because Respondent has not submitted any such compelling evidence in this case, the Panel concludes (for purposes of this proceeding) that Complainant owns valid trademark rights in the TAN FACTORY mark. 

 

Respondent’s final attack under the first factor is an argument that Complainant has engaged in bad faith “trademark borrowing.”  The Panel in this case need not make any findings as to whether Complainant has engaged in any such bad faith conduct.  Here, it is clear that Complainant (with common law trademark rights going back to at least 1997) currently owns trademark rights in the TAN FACTORY mark; that is all that is required under the first factor.  Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004).  Allegations concerning “trademark borrowing” may be relevant in considering whether Complainant has proven bad faith registration and use, but as discussed below, the Panel finds no such bad faith and thus need not consider whether Complainant has engaged in “trademark borrowing” and whether any such conduct is relevant in a UDRP proceeding.

 

Rights or Legitimate Interests

 

Complainant has made a prima facie showing that Respondent lacks rights to the domain name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent has never been known by the domain name, does not use the domain name for any bona fide offering of goods or services, and has not demonstrated preparations for such use.  These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.

 

Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the burden of production shifts to the Respondent to come forward with evidence of its rights to or legitimate interests in the domain name.  As explained in Document Techs., Inc. v. Int’l Elec. Communications Inc., D2000-0270 (WIPO June 6, 2000):

 

This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.” Policy, ¶ 4(a).

 

According to Paragraph 4(c) of the Policy, Respondent may demonstrate its rights to or legitimate interests in the Domain Name by showing any of the following circumstances:

 

(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent has not come forward with sufficient evidence to demonstrate that it has a legitimate interest in the domain name.  Its bald claim, unsupported by any documentary evidence, that it seeks to provide “third party sponsored results advertising” is insufficient to show a legitimate interest.  That is especially true given that the Panel’s review of the website does not show any content related to tanning services or tanning factories; to the contrary, the only links provided are to irrelevant “factoring” and lending services (and even there, it is not clear whether these links are “third party . . . advertising”).  It cannot be a legitimate use of the domain name <tanfactory.com> to supply links to other webpages that have no rational connection to tanning or factories.

 

Nor has Respondent met its burden of coming forward with evidence showing demonstrable preparations toward operating a “a zip code based ‘yellow page’ forum for its generic and common use domains, like TanFactory.com.”  Even if such a “forum” would constitute a legitimate interest (an issue on which this Panel need not rule), the absence of any evidence of “demonstrable preparations” is fatal to Respondent’s contention.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Mere assertions of preparations to make a legitimate use are not enough.”).

 

Accordingly, on this admittedly skimpy record, Complainant has succeeded in showing that Respondent lacks a legitimate interest in the <tanfactory.com> domain name.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

 

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of  documented out-of-pocket costs directly related to the domain name; or

 (ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

 (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.

 

In this case, Complainant has failed to demonstrate that Respondent registered the domain name in bad faith. 

 

As discussed above, the Complaint is utterly devoid of any facts proving that Respondent registered and used the domain name in bad faith.  Parroting the legal standard (as the Complaint does) without providing any facts to substantiate the claim of bad faith is grossly insufficient.  For this reason alone, the Panel finds that Complainant has failed to carry is burden of proof under the third factor.  See Commerce LLC v. Charles M. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002).

 

Another reason to find no bad faith registration is Respondent’s certified claim that, at the time of registration, it was not aware of Complainant.  Given that Complainant appears to have had only a single “Tan Factory” salon location at the time, that assertion appears to be credible.  If Respondent was not aware of Complainant and its mark at the time it registered the domain name, the registration cannot have been in bad faith vis-à-vis Complainant.  Experimental Aircraft Assoc. v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003).

 

DECISION

Because Complainant has not demonstrated all three elements required under the ICANN Policy, the Panel DENIES the Complaint.

 

 

David H. Bernstein, Panelist
Dated:  November 3, 2004

 

 

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