National Arbitration Forum

 

DECISION

 

Telebrands Corporation v. Adeel Khalid c/o Controlled Quality Hosts

Claim Number: FA0504000467079

 

PARTIES

Complainant is Telebrands Corporation (“Complainant”), represented by Peter D. Murray, of Cooper & Dunham LLP, 1185 Avenue of the Americas, New York, NY 10036.  Respondent is Adeel Khalid c/o Controlled Quality Hosts (“Respondent”), represented by Mobeen-Ur-Rehman, House No. 1-A, Street No. 22, F-8/2, Islamabad, Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <telebrandspakistan.com>, registered with Onlinenic, 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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2005.

 

On April 25, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <telebrandspakistan.com> is registered with Onlinenic, Inc. and that the Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 April 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 18, 2005 by which Respondent could file a Response to the Complaint, 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@telebrandspakistan.com by e-mail.

 

A timely Response was received and determined to be complete on May 18, 2005.

 

A timely Additional Submission by Complainant was received on May 25, 2005.

 

On May 19, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.            Complainant commenced its business with the name and mark TELEBRANDS in 1991.  The TELEBRANDS mark is registered in the United States for retail mail and telephone order services and department store services in the field of eyewear, personal care products, appliances, kitchen utensils, clothing, and electronic equipment (USPTO Reg. No. 1,811,677 issued December 14, 1993).  Its TELEBRANDS mark is also registered in twenty-three countries.

 

2.            Complainant has grown to be one of the recognized leaders in the direct marketing industry.  Complainant sells its products through direct response advertising, including through retail, television, print, Internet, and mail and telephone order services and through national retail stores such as Target, Wal-Mart, Bed, Bath and Beyond and Walgreen’s.

 

3.            Complainant’s success is based in part upon a marketing plan by which Complainant spends a large amount of money advertising products on television for direct response orders.  The television advertising also creates a demand for the product among consumers who then purchase the product in retail stores.  Complainant’s products are sold at retail in the “As Seen On TV” product category.

 

4.            Complainant’s marketing of its products extends throughout the world. It licenses its successful television infomercials to distributors worldwide who then are supplied with Complainant products.

 

5.            Complainant does business on the Internet at <telebrands.com>.  Consumers may purchase products directly from Complainant through direct response television and print advertising.  Presently, consumers may purchase on the Internet via the Invention Channel, a website operated by Complainant.  The home page for the Invention Channel, <inventionchannel.com>, is directly linked to <telebrands.com>.

 

6.            The disputed domain name, <telebrandspakistan.com>, is used by Respondent as a home page for telemarketing in Pakistan and other countries.  The home page offers for sale unauthorized versions of Complainant’s products, including the Silhouette Slimmer, and the Air Press Massager.

 

7.            The disputed domain name is identical or confusingly similar to the TELEBRANDS name and mark.  The <telebrandspakistan.com> domain name wholly appropriates the TELEBRANDS mark.  The addition of the suffix “pakistan” to the TELEBRANDS mark does not detract from the overall presence of the domain name, which is Complainant’s mark.

 

8.            “Pakistan” is a geographic descriptive term, and its addition does not distinguish the domain name from Complainant’s TELEBRANDS mark.  The mere addition of a geographic prefix or suffix to a registered mark does not prevent the domain name from being found to be confusingly similar.

 

9.            Complainant has not licensed or otherwise permitted Respondent to use its mark or to register a domain name incorporating Complainant’s mark, and has no rights or a legitimate interest in the disputed domain name.

 

10.            The disputed domain name, <telebrandspakistan.com>, was registered by Respondent on January 30, 2004, more than 12 years after Complainant first used the TELEBRANDS name and mark.

 

11.            Respondent is not using <telebrandspakistan.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because its domain name is confusingly similar to the TELEBRANDS registered mark and diverts users to an Internet site that features offers for sale of, inter alia, products not originating with Complainant.

 

12.            Respondent is not known by the disputed domain name.  Respondent’s WHOIS information does not imply that it is “commonly known by” <telebrandspakistan.com>.  Respondent also is not a licensee of Complainant, nor has it received (or ever applied for) permission from Complainant to use TELEBRANDS in its domain name.

 

13.            Respondent’s registration of the disputed domain name involving Complainant’s TELEBRANDS establishes that Respondent registered the domain name in bad faith, for the purpose of intentionally attempting to attract for commercial gain Internet users to the <telebrandspakistan.com> website by creating a likelihood of confusion with the TELEBRANDS mark, as to source, sponsorship, affiliation or endorsement of Respondent’s website or of services to be offered there.

 

14.            Respondent clearly was aware of Complainant’s mark at the time it registered the disputed domain name, as the <telebrandspakistan.com> website offers for sale unauthorized or counterfeit TELEBRANDS products.

 

B. Respondent

 

1.            TELE BRANDS PAKISTAN is the registered trademark of Respondent’s organization under Registration Number 207,682 allotted to Respondent by the Trade Mark Office, Government of Pakistan.

 

2.            Respondent’s logo and company is registered under the Copy Rights ordinance 1962 with the Government of Pakistan.

 

3.            At the time of establishment of Respondent’s organization, it confirmed its proposed name (i.e., Tele Brands Pakistan) through the Securities and Exchange Commission of Pakistan.  The proposed name was published in newspapers before application for trademark and copyright registration, and the registration process was initiated only after learning that no company with a similar name existed.

 

4.            The availability of the disputed domain name was confirmed by the domain registrar, which evidenced that no company with Respondent’s proposed domain name existed.

 

5.            Respondent’s logo is entirely different from that of Complainant.

 

6.            Respondent’s products are entirely different from those of Complainant’s company for which Respondent has distribution rights for Pakistan.

 

7.            Respondent has no intention of selling the disputed domain name to Complainant or to a competitor of Complainant.

 

8.            The use of the disputed domain name by Respondent does not disrupt the business of Complainant as primarily both companies are dealing in different products.  Respondent’s main products are Gym Form, Yoko Height, Velfor Hair Grow Oil, Sauna Belt; and Touch Me in which Respondent has dealt with since the inception of Respondent’s organization with exclusive distribution rights for Pakistan. None of these products are similar to Complainant’s products.  Moreover, similarity of five percent products cannot be claimed to be vital as companies working the field of “As See On TV Products” always have resemblance in products to some extent.

 

9.            The use of the disputed domain name does not attract Internet users or create a likelihood of confusion with Complainant’s domain name because each company is marketing different products.  Therefore, consumers (believed to be rational) will not be misled.  Moreover, each company clearly mentions its website name in its electronic as well as print campaigns, and the probability of mistakes/confusion does not exist.

 

10.            The use of the disputed domain name in Pakistan by Respondent is so well known that customers believe it to be champion of creative, innovative and high quality products.  Respondent’s annual turnover is above Rs. 600 million and sale of its main products as mentioned is in thousands since Respondent’s inception.

 

11.            Respondent’s advertisement budget is above Rs. 120 million and Respondent uses 375 hours of television time monthly for its advertisements.

 

12.            The Complaint is without merit and should be dismissed.

 

C. Additional Submission By Complainant

 

1.            Respondent asserts that it has registered TELE BRANDS PAKISTAN as a trademark, logo and organization entity with the Government of Pakistan.  Respondent, however, fails to provide any evidentiary proof with documents and/or certified copies of registration, and its claim is unsubstantiated.

 

2.            Respondent asserts that its logo is “entirely different from that of the [C]omplainant’s company” and provides graphics as alleged proof.  Respondent’s argument is misplaced.  This proceeding was initiated by Complainant because of Respondent’s unauthorized use of the TELEBRANDS mark.  Respondent has no right to use Complainant’s registered TELEBRANDS mark.  Stylization of logo aside, the spelling and pronunciation of the word “Telebrands” on Respondent’s website is still identical to that of Complainant’s TELEBRANDS mark, and this fact is likely to cause consumer confusion.

 

3.            On its website, Respondent is selling unauthorized or counterfeit versions of Complainant’s products, specifically the Air Press Massager and the Tummy Trimmer.  Consumers attempting to search for Complainant’s authorized products are likely to find Respondent’s website instead.  Consumers are likely then to buy products offered on Respondent’s site instead of searching for products offered for sale on <telebrands.com>.  By offering even a few unauthorized or counterfeit versions of Complainant’s products, Respondent is intentionally confusing consumers and diverting business away from Complainant.

 

4.            As of May 20, 2005, content from the <telebrandspakistan.com> domain name has been removed and transferred to a new domain name, <telebrandspakistan.com.pk>.  The Pakistani Shared Registry System shows that the domain name <telebrandspakistan.com.pk> was created on April 28, 2005, the same day this proceeding was commenced by Complainant against Respondent.  Such action does not support Respondent’s argument that it registered <telebrandspakistan.com> with a bona fide intent.  Rather, such action by Respondent supports Complainant’s allegation that Respondent has no rights or legitimate interests in the disputed domain name because it appears that Respondent is trying to prevent Complainant from policing its mark and, thus, avoid liability for unauthorized use of Complainant’s TELEBRANDS mark.

 

FINDINGS AND DETERMINATIONS

 

PROCEDURAL ISSUES

 

There are procedural issues to be resolved before turning to the merits.

 

Respondent’s Response was not submitted in hard copy as required by ICANN Rule 5(b).  Thus, the Panelist must decide whether or not to consider Respondent’s deficient Response.  This Panelist believes that matters so important to the parties should be considered on the merits, and this matter will be.  See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.”).

 

Complainant asserts that it has established rights in the TELEBRANDS mark through registration of the mark in the United States, while Respondent contends that it has rights in the TELE BRANDS PAKISTAN mark as it has registered that mark in Pakistan.  Some Panels have held that such actions create a legitimate trademark dispute and are outside the scope of the UDRP.  See Stevenson Idus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum April 24, 2002) (determining that Complainant bears the burden of proof under the UDRP in stating “[i]f the existence of  [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding”); see also Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’”  Cases where registered domain names are subject to legitimate disputes re relegated to the courts.).

 

Again, the Panelist believes it would be unfair and costly to the parties to perceive this proceeding simply as a trademark dispute.  Such a concern is not the gravamen of this proceeding.  Rather, the issue is the alleged misuse of the disputed domain name.  Accordingly, the Panelist will now turn to the merits.

 

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

 

There can be no question but that the disputed domain name, <telebrandspakistan.com>, is confusingly similar to Complainant’s mark.

 

This is because the only difference is the addition of the geographic term “Pakistan,” which does not significantly distinguish the domain name from the mark.  See Hewlett-Packard Company v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (finding confusing similarity between complainant’s HP mark and the disputed domain name <hpdubai.com> where the respondent added the geographical term “Dubai” to complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to complainant’s CMGI mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).[1]

 

The first element required of Complainant by Policy ¶4(a)(i) has been established.

 

Rights or Legitimate Interests

 

To this Panelist, it was of crucial importance to note that while Respondent claims that it sells ninety-five percent of its products which differ from Complainant’s products, it does admit that there could be similarity to as much as five percent of the products.  Even more striking, however, is Complainant’s evidence that at least two of the products, the Air Press Massager and the Tummy Trimmer, are not merely similar, but are identical.

 

Not only are the products themselves identical, but they are advertised with identical pictures, descriptions, and uses.

 

Obviously, Respondent is selling Complainant’s genuine products without authority, or even worse, it is selling counterfeit products.  In either, or in both events, it has plagiarized Complainant’s pictures and language.

 

It thus appears to this Panelist that the ultimate decision in this matter will rest on whether the Panelist will accept Respondent’s purported excuse:  “If I have sinned at all, I have sinned only a little.”

 

Such reasoning simply is not acceptable.

 

It is found and determined that Respondent is using the confusingly similar domain name to operate a website that sells Complainant’s products or counterfeit products.  Such use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIP Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of the complainant).

The second element required of Complainant by Policy ¶4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

For the reasons above set forth, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website and the unauthorized or counterfeit products there on sale.  Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).  See the far less culpable activity in Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).

 

Finally, it is found and determined that Respondent registered the <telebrandspakistan.com> domain name with actual knowledge of Complainant’s rights in the TELEBRANDS mark by virtue of the obvious connection between the kind of products marketed on Respondent’s website and Complainant’s business.  The registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to Policy ¶4(a)(iii)  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about complainant’s mark when it registered the subject domain name”).

 

Complainant has established the third element required by Policy ¶4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <telebrandspakistan.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  May 31, 2005

 

 

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