Cartridge World Pty. Ltd. v. Bobby Garza
Claim Number: FA0608000783541
PARTIES
Complainant is Cartridge World Pty. Ltd. (“Complainant”), represented by Antonio R. Sarabia, of IP Business Law Group, Inc., 3463 Tanglewood Lane, Rolling Hills Estates, CA 90274. Respondent is Bobby Garza (“Respondent”), represented by Ray K. Harris, 3003 North Central Ave., Suite 2600, Phoenix, AZ 85012.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cartridge-world.net>
(the “Domain Name”), registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 23, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 24, 2006.
On August 29, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <cartridge-world.net> domain name
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 27, 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@cartridge-world.net by e-mail.
A timely Response was received and determined to be complete on September
18, 2006.
On September 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be cancelled.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it owns U.S. trademark registrations, the
oldest of which was registered October 8, 2002, for the mark CARTRIDGE WORLD,
and that Respondent’s mark “Cartridge World” as used in the Domain Name is
confusingly similar to Complainant’s mark and is used in connection with a
similar business, namely the sale of toner cartridges, ink cartridges, and
related products.
B. Respondent
Respondent contends that he began doing business under the mark and
name “Cartridge World” in 1998, long before Complainant’s trademark
registrations took effect, and that he registered his trade name in the State
of Arizona in 2001, also prior to Complainant’s registrations. Accordingly, he contends that Complainant
cannot have any priority of right, and that Respondent has established rights
or legitimate interests in the Domain Name.
Respondent has supplied evidence proving that he has done such business
under the said name since at least as early as 1999.
FINDINGS
The Panel finds that Respondent has
established rights or legitimate interests in the Domain Name and accordingly
that Complainant has failed to establish that the Domain Name should be
cancelled.
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
asserts rights in the CARTRIDGE WORLD mark through several registrations with
the United States Patent and Trademark Office (“USPTO”) (the earliest of which,
Reg. No. 2,631,733, issued on October 8, 2002).
The Panel
finds that Complainant has established rights in the CARTRIDGE WORLD mark
through this registration under Policy ¶ 4(a)(i). Previous panels have found that registration with the USPTO is a
trademark determination that should not be contested. See 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.”).
Complainant contends that Respondent’s <cartridge-world.net> domain name is confusingly similar to Complainant’s CARTRIDGE WORLD mark. The Panel finds that the addition of a hyphen between the two words in Complainant’s mark is not enough to negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark. See Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar).
In sum, the Panel finds that Complainant has,
through its federal registrations, made a prima facie showing of rights
in the mark CARTRIDGE WORLD. The Panel
further finds that the mark and the Domain Name are identical or confusingly
similar, in that the only difference between the two is the addition of a hyphen
and of the functional top-level domain name “.net.”
Complainant has failed
to establish facts sufficient to create a prima facie case that
Respondent lacks rights or legitimate interests in the Domain Name pursuant to
Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb.
Forum Jan. 13, 2001) (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 Complainant
fails to meet its burden of proof).
Respondent asserts that it is
commonly known by the disputed domain name, and that it has used the CARTRIDGE
WORLD mark in connection with its bona fide offering of goods and
services since at least 1998.
Respondent registered its trade name as “Cartridge World” in the State
of Arizona in 2001. Additionally,
Respondent has provided evidence in the form of tax returns showing substantial
use of the mark in connection with his business since at least as early as
1999. Accordingly, Respondent has
established trademark use, and therefore common-law trademark rights, going
back at least to 1999.
Complainant’s trademark rights
date back at least to issuance of its registration in 2002, and may extend back
as far as the filing date of the registration, which was October 11, 2000. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see
also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965) (registration on the Principal Register is prima facie
proof of continual use of the mark, dating back to the filing date of the
application for registration).
Complainant has offered no evidence (or even allegation) that its rights
extend further back than that filing date.
The Panel accordingly finds that
Respondent is making a bona fide offering of goods and services under
Policy ¶ 4(c)(i). See AmeriCares
Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (finding that the
<americare.org> domain name was used in a bona fide manner since
respondent registered the domain name on behalf of AmeriCare MedServices, which
had been using the “AmeriCare” name in business for seven years prior to the
dispute); see also Russell & Miller, Inc. v. Dismar Corp., FA 353039
(Nat. Arb. Forum Dec. 20, 2004) (finding
that the respondent used the <salesigns.com> domain name for a bona
fide offering of goods or services, which was established by the
respondent’s “longstanding involvement in the ‘sale sign’ market and its use of
a descriptive domain name to further its competition in that market”).
Because Complainant has failed to meet the second required element of proof, there is no need for the Panel to reach the issue of bad faith registration and use. See Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of the domain name at issue, there is no need to decide the issue of bad faith.”).
The Panel notes, however, that Complainant has in any event failed to
provide evidence of bad faith registration or use. At most, Complainant has shown that two different entities are
operating under similar trademarks.
From the facts discussed above it would appear that Respondent, rather
than Complainant, may have priority of rights.
Accordingly, Respondent did not act in bad faith. See Lee Procurement Solutions Co.
v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005)
(“Respondent's rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(a)(ii), allow a finding that there was no bad faith
registration or use under Policy ¶ 4(a)(iii).”);
DECISION
Complainant having
failed to establish two of the three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: October 12, 2006
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