Farberware Licensing Company, LLC v. The Pfaltzgraff Co. c/o Lifetime Hoan Corporation
Claim Number: FA0603000655015
Complainant is Farberware Licensing Company, LLC (“Complainant”), represented by Jeffrey E. Francis, of Sullivan & Worcester LLP, One Post Office Square, Boston, MA 02109. Respondent is The Pfaltzgraff Co. c/o Lifetime Hoan Corporation (“Respondent”), represented by Roger R. Crane, of Nixon Peabody LLP, 437 Madison Avenue, New York, NY 10022.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <farberware.com>, registered with Bulkregister, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 17, 2006.
On March 10, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <farberware.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC 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 March 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2006 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@farberware.com by e-mail.
A timely Response was received and determined to be complete on April 14, 2006.
An Additional Submission from Complainant was received by the National Arbitration Forum on April 20, 2006 and determined not to be in compliance with Supplemental Rule #7, for it was received after the deadline for submissions and paid late.
On April 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
A timely Additional Submission from Respondent was received by the National Arbitration Forum on April 24, 2006 and determined to be complete.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. Complainant alleges that it has rights and legitimate interests with respect to the FARBERWARE mark and that the <farberware.com> domain name at issue is identical to or confusingly similar to Complainant’s FARBERWARE mark.
2. Complainant alleges that Respondent has no rights or legitimate interests in
respect to the FARBERWARE mark or the domain name at issue.
3. Complainant finally alleges that Respondent registered and has used the domain name at issue in bad faith.
B. Respondent
1. Respondent does not deny that the domain name at issue is identical or confusingly similar to Complainant’s mark.
2. Respondent claims that it is a long time seller of FARBERWARE products, pursuant to various licensing agreements between itself and Complainant and Complainant’s predecessor in interest. Accordingly, Respondent claims rights and legitimate interests in respect to the FARBERWARE mark and the domain name at issue.
3. Respondent denies that it registered and has used the domain name at issue in bad faith.
C. Additional Submissions
Both parties filed Additional Submissions which essentially underscored their respective best arguments. Notwithstanding the failure to timely file by Complainant, both were taken into consideration in rendering this Decision.
FINDINGS
Complainant has
established rights in the FARBERWARE mark by by virtue of the registration of
the mark (by its predecessor in interest) with the United States Patent and
Trademark Office (“USPTO”) (including Reg. No. 601,591 issued February 1, 1955;
Reg. No. 806,655 issued April 5, 1966; Reg. No. 804,130 issued February 22,
1966).
Respondent does not
dispute the fact that the <farberware.com> domain name at issue is
identical or confusingly similar to the FARBERWARE mark which was purchased by
Complainant from Farberware, Inc. (“FINC”) on December 31, 2001.
With respect to
rights and legitimate interests on the part of Respondent in the FARBERWARE
mark and in the domain name at issue, there is sharp disagreement. Complainant notes that it purchased the domain
name at at issue and all of the other intellectual property of FINC, its
predecessor in interest, pursuant to the Intellectual Property Assignment
Agreement dated December 31, 2001.
Respondent was not a party to that instrument. Relevant portions read as follows:
WHEREAS, Assignor has adopted,
used or acquired certain domain names (or other uniform resource locators on
the Internet), including, but not limited to, the domain names set forth on Schedule
C attached hereto and made a part hereof, (said domain names, including all
registrations and applications for registrations thereof, being collectively
referred to herein as the "Assigned Domain Names").
NOW, THEREFORE, in consideration of and in exchange for the sum of Ten Dollars ($10.00) and other good and valuable consideration, the receipt of which is hereby acknowledged, Assignor hereby sells, assigns, transfers and sets over to Assignee all of its right, title and interest in and to Seller's Intellectual Property Rights, Assigned Marks, Assigned Patents, Assigned Domain Names and any other marks or intellectual property rights which it may have acquired related to the Farberware Business (as that term is defined in the Acquisition Agreement), all together with the goodwill of the Farberware Business in connection with which the Assigned Marks, Assigned Patents and Assigned Domain Names are used, and with any and all renewals and extensions of the registrations for the Assigned Marks, Assigned Patents and Assigned Domain Names that may be secured under the laws now or hereafter in effect in the United States or any other country or countries.
The domain name at issue is listed on Schedule C of the Intellectual Property Assignment Agreement.
Respondent fires back with the claim that, through an affiliate company, it has sold products bearing the FARBERWARE mark since long before registration of the domain name at issue and that, in 1996, it entered into a 200-year royalty-free joint venture with FINC which included the establishment of Respondent’s right to use the FARBERWARE mark. Respondent has provided documentation to support these claims. Accordingly, there is some evidence that Respondent has at least co-extensive rights in the FARBERWARE mark and the right to continued use of the domain name at issue in support of its legitimate interests.
With respect to Complainant’s claim that Respondent registered and used the domain name at issue in bad faith, the evidence supports the proposition that NEITHER party to this proceeding registered the <farberware.com> domain name. Rather, it was registered in 1995 by an entity called EWORKS (apparently at the behest of FINC), and the website has been managed by Respondent ever since.
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.
Complainant has
established rights in the FARBERWARE mark by virtue of FINC’s registration of
the mark with the United States Patent and Trademark Office (“USPTO”)
(including Reg. No. 601,591 issued February 1, 1955; Reg. No. 806,655 issued
April 5, 1966; Reg. No. 804,130 issued February 22, 1966). See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”); see also U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not
empowered to nor should it disturb that determination.”).
Respondent does not dispute that
the domain name at issue is identical or confusingly similar to the FARBERWARE
mark in which Complainant has rights or interests.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
While the Complainant may have established a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), the factual allegations and proofs of the Respondent clearly establish a series of fact issues as to whether Respondent had continuing interests in respect of the domain name at issue following the Intellectual Property Assignment Agreement dated December 31, 2001. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Complainant’s predecessor, FINC, apparently authorized EWORKS to register the <farberware.com> domain name and use it to establish a website for Complainant. Respondent has ever since then operated the website for the purpose of promoting Complainant’s FARBERWARE products. Respondent’s use of the disputed domain name to promote and sell Complainant’s products constitutes a bona fide offering of goods or services, satisfying Policy ¶ 4(c)(i). See Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (finding a bona fide sale of goods under the domain name <drawtite.com> where the respondent used the website to sell the complainant’s towing equipment and trailer accessories); see also Grobet File Co. of Am., Inc. v. Exch. Jewelry Supply, FA 94960 (Nat. Arb. Forum July 14, 2000) (“Within its rights as a distributor, therefore, Respondent registered the domain name and sold Complainant's legitimate goods online. In sum, Respondent has successfully shown that it was using the <grobet.com> domain name and web site in connection with the bona fide offering of goods and services, before any notice of the dispute.”).
The Panel finds that Policy ¶ 4(a)(ii) has NOT been satisfied. Another forum will need to resolve the factual and legal disputes surrounding the ownership and use of the domain name at issue.
In light of Complainant’s failure to satisfy Policy ¶ 4(a)(ii), it is not necessary to consider whether Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody,
Esq., Panelist
Dated: May 5, 2006
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