Bar Products.com, Inc. v.
RegisterFly.com - Ref-R# 44488698
Claim Number: FA0610000829161
PARTIES
Complainant is Bar Products.com, Inc. (“Complainant”), represented by William
C. Guerrant Jr., of Hill, Ward & Henderson, P.A.,
Respondent, who appears to have
registered the domain name through a privacy service, is listed in the
Registrar’s WHOIS records as RegisterFly.com - Ref-R# 44488698 (“Respondent”). The actual party in interest appears to be Cantina
Bar Products, Inc., of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liteleash.com> (the “Domain Name”)
and is registered with Registerfly.com, Inc. (the “Registrar”).
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 October 30, 2006;
the National Arbitration Forum received a hard copy of the Complaint on October 30, 2006.
On November 7, 2006, the Regstrar confirmed by e-mail to the Forum
that the Domain Name is registered with the Registrar and that the Respondent
is the current registrant of the Domain Name.
The Registrar has verified that Respondent is
bound by the Registrar’s 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 November 10, 2006, the Forum notified the Complainant of certain
deficiencies in the Complaint. On
November 13, 2006, Complainant filed an Amended Complaint, which the Forum
determined was still deficient; because of these continuing deficiencies, the
Amended Complaint was not forwarded to the Respondent and has not been
considered by the Panel. On November 15,
2006, Complainant filed a “Second Amended Complaint,” which finally resolved
the deficiencies identified by the Forum.
On November 15, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 5, 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@liteleash.com by
e-mail.
A timely Response was received on December
5, 2006. However, Respondent did
not include in the Response the certification required by Rule 5(b)(viii). Because Respondent is pro
se, if the statements in the Response would have made a material difference
to the Panel’s decision, the Panel would have given the Respondent an
opportunity to cure this procedural deficiency and resubmit its Response with
the necessary certification. Visual Gis
Engineering S.L. v. Nitin Tripathi, D2006-0079 (WIPO
March 23, 2006). Here, though, even if the Response included
the necessary certification, it would not have changed the Panel’s
decision. Accordingly, in order to prevent further delay, the Panel has completed
its decision without requiring the Respondent to supplement its Response. Ryanair Ltd. v. Coulston, D2006‑1194
(WIPO Dec. 12, 2006).
On December 11, 2006, the Forum received an additional Submission from
Complainant. Pursuant to the Forum’s Supplemental Rule 7, the submission was
timely. However, for the reasons
discussed below, the Panel has disregarded this supplemental submission.
Respondent did not reply to Complainant’s Additional Submission.
On December 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David H. Bernstein as Panelist.
Pursuant to Rule 10(c), the Panel extended the date for expected
decision to January 9, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant is the owner of a federal trademark registration for the
mark LIGHTER LEASH (Reg. No. 3,079,442, granted April 11, 2006). Complainant maintains the website
<lighterleash.com> to advertise and market its Lighter Leash products,
which are retractable cords to which disposable cigarette lighters can be
attached. Complainant asserts that it
has used the mark in commerce and on its website since March 1, 2001.
Complainant asserts that the <liteleash.com> Domain Name
is confusingly similar to its LIGHTER LEASH mark. It claims that the LIGHTER LEASH mark is
distinctive, as evidenced by its federal trademark registration. Citing similarity in sight, sound and
appearance, Complainant claims that the Domain Name is confusingly similar and
that, “[e]ven without the compelling evidence of bad faith present here,
panelists have routinely transferred, domain names that, like the one at issue
here, are confusingly similar to a prior and rightful owner’s domain
name.”
Complainant further alleges that Respondent has no rights or legitimate
interests in the Domain Name.
Complainant asserts that Respondent acquired the Domain Name after
Complainant commenced use and registered its domain name, and that Respondent
did so “for the sole purpose of infringing on Complainant’s mark by creating
confusion in the marketplace as to the source of goods.” The Complaint further states that, “[o]nce
the Respondent became aware of Complainant’s Lighter Leash mark and site,
Respondent began using the “Lite Leash” mark, and domain name, and simply
shamelessly copied Complainant’s website.”
The Complaint alleges that the Domain Name was registered and is being
used in bad faith. According to the
Complaint, Respondent marks a similar competing product, which was originally
“referred to by Respondent as “Bumby BIK.”
According to the Complaint, “[a]fter Complainant activated its
<lighterleash.com> site and began actively marketing and selling the
Lighter Leash, Respondent changed the name of its product from ‘Bumby BIK’ to
‘Lite Leash’ and created and activated the subject Lite Leash domain name and
website.”
According to Complainant, “Respondent then simply copied the content of
Complainant’s site.” Complainant states
that source code of the “Testimonial” sections
was reproduced exactly and that, “though Respondent made some slight
changes, it neglected to even change the words “lighter leash” in the first
testimonial.” Additionally, Complainant
argues that the intent to confuse is “self evident from a review of the sites,”
referencing the similar young blond models dressed in a white top and blue
jeans on both sites, and the use of Complainant’s graphic demonstrations of the
use of the product.
Respondent currently markets a competing product as “Lite Leash.” Respondent states that it is the rightful
owner of the LIGHTER LEASH name. It
claims that it initially worked with Complainant, starting in 1998, but that
Complainant thereafter stole many of Respondent’s “proprietary ideas, concepts,
names and products,” including the LIGHTER LEASH name. Respondent states that it will be challenging
Complainant’s trademark registration for the mark LIGHTER LEASH, though the
Panel notes that Respondent has not submitted any evidence of any cancellation
proceeding and there is no indication on the U.S. Patent and Trademark Website
that any cancellation proceeding has been filed. Respondent also states that it will be
challenging Complainant’s design patent registration, which covers a competing
design for a lighter holder, but again, it has submitted no evidence that any
challenge to that design patent has been filed.
Respondent alleges that Complainant has a history of stealing
proprietary ideas from vendors, and that there are multiple suppliers that will
testify to Complainant’s conduct.
Respondent has not, however, submitted any statements, declarations or
affidavits from any other vendors.
Respondent acknowledged that its employee charged with designing its
website – whom it describes as “a young and energetic apprentice that basically
worked as a part time artist and also was . . . a part time student” –
duplicated the <lighterleash.com> website, but states that this conduct
was unauthorized. Respondent claims that
the employee “was not asked to copy pictures or copy verbatim or mimic any of
those sites. He was asked to make them
look like those sites even though they would obviously appear to be similar to
the general person. Even
though they were not. Since these
products look a lot like each other, he must of misunderstood what we wanted
and designed the website his way.”
Respondent further states that, after receipt of a letter from
Complainant challenging the copying, Respondent removed the offending graphics,
redesigned its website, and terminated the employee responsible. Respondent concludes: “As for the intentional
copying, we have apologized for the error, people have been disciplined, terminated
and websites have been completely 100% changed.”
Respondent urges the Panel to refrain from issuing a decision on these
issues because there is reasonable doubt based on the minimal proof
provided. Instead, Respondent urges the
Panel to wait until a Florida Court can decide the claim. Respondent does not, however, indicate that
any case has been filed in the state of
In its Reply, Complainant contends that the majority of the Response is
“entirely false” and “irrelevant.”
Complainant asserts that Respondent has not denied or rebutted the
confusing similarity of the marks and admits that “that it chose the domain
name <liteleash.com> because of its similarity to
<lighterleash.com>.” It further
claims that Respondent’s admission of “deliberate mimicking” establishes bad
faith. Complainant further alleges that
the bad faith cannot be attributed merely to a rogue employee and that
Respondent has a history of copying its websites.
Complainant’s Reply adds nothing of any substance to the record. It merely seeks to rebut the arguments made by Respondent. Because the Reply does not add any new facts or arguments that were not available to Complainant at the time of its Complaint, and because the Reply does not address any arguments of Respondent that could not have been anticipated by the Complainant, the Panel declines to consider Complainant’s Reply. See Parfums Christian Dior S.A. v. Jadore, D2000-0938 (WIPO Nov. 3, 2000) (no right to file a reply absent exceptional circumstances); see also Eskimos, Inc. v. Phillips, FA 105950 (Nat. Arb. Forum May 13, 2002) (even though the NAF “supplemental rules . . . may permit the filing of such [supplemental] pleadings, they cannot mandate that the Panel consider such submissions”); Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000) (panel refused to accept supplemental submission because NAF Supplemental Rules cannot trump ICANN’s UDRP Rules, which generally contemplates only a complaint and a response and gives only the panel the right to request additional submissions).
FINDINGS
On the narrow issue before the Panel, based on the limited information
available in this UDRP proceeding, the Panel finds that
(1) Respondent’s <liteleash.com> Domain Name is confusingly similar to a trademark in which the Complainant has rights;
(1) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(2) the Domain Name was registered and is being used in bad
faith.
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 the
Complainant to 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.
In deciding
this matter, the Panel is constrained to consider only the evidence in the
record and to apply the Policy to the facts, as alleged. Thus, although Respondent makes claims of
design patent infringement, thievery, and even fraud, the narrow issue before
this Panel is whether, under the Policy, Complainant has proven, by a
preponderance of the evidence, sufficient facts to justify transfer of the
Domain Name.
Although
Respondent’s submission referred to additional evidence that it could have
submitted or additional legal challenges that it might file in the future, that
evidence is not before the Panel and thus the Panel has not considered any of
that additional evidence or the prospect of any other legal proceedings. However, if Respondent believes that a fuller
examination of the underlying facts would change the result, it is welcome to
file suit in the court of mutual jurisdiction and provide the Registrar with a
file-stamped copy of its complaint within ten business days of this decision,
in which case, under Paragraph 4(k) of the Policy, the Domain Name will not be
transferred, except as ordered by the court or otherwise provided in Paragraph
4(k). Moreover, in any such proceeding,
Respondent will have the opportunity to take discovery and cross-examine
Complainant’s witnesses, and the court will be able to make credibility
determinations (an opportunity that is not available to the Panel, which makes
it difficult to assess the parties’ dueling allegations against each other). See generally Electronic Commerce Media Inc. v. Taos Mountain, FA
95344 (Nat. Arb. Forum Oct. 11, 2000) (“The Panel is mindful of the fact
that these are truncated proceedings, and that the parties and the Panel do not
have the benefit of discovery and cross-examination to support a searing search
for the truth.”); Lopez v. Irish Realty
Corp., FA 94906 (Nat. Arb. Forum Aug. 8, 2000).
However,
based on the limited information available to the Panel, for the reasons
detailed below, the Panel finds that Complainant has satisfied its burden.
Complainant has trademark rights in the LIGHTER LEASH mark by virtue of
its U.S. Trademark Registration for the mark LIGHTER LEASH. Despite Respondent’s insistence that the
registration was improperly granted and that Respondent is the true owner of
this trademark, for the purpose of this proceeding, a federal registration is prima facie evidence of ownership of a
valid mark. See, e.g., Electronic Commerce Media Inc. v. Taos Mountain, FA 95344 (Nat.
Arb. Forum Oct. 11, 2000) (refusing to find registered mark generic or
descriptive absent compelling evidence); see
also Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary
meaning.”). As Complainant has failed to
present compelling evidence that it is the true owner of this trademark (such as
conclusive proof that it sold LIGHTER LEASH products prior to the Respondent’s
claimed date of first use and has continuously done so), the trademark
registration, and Complainant’s ownership thereof, is entitled to a presumption
of validity.
There appears to no dispute that the Domain Name <liteleash.com>
is confusingly similar to the LIGHTER LEASH mark. Respondent admits that it chose the <liteleash.com>
Domain Name because of its similarity to <lighterleash.com>. Even without this admission, though, the
Domain Name is indisputably similar to the mark in terms of sight, sound,
appearance and meaning. See, e.g., Pixar v. Tom Romkey, FA 104133 (Nat.
Arb. Forum May 13, 2002) (finding <pixr.com>
phonetically similar to PIXAR); America Online, Inc. v. Peppler, FA
103437 (Nat. Arb. Forum Feb. 22, 2002) (finding words “quest” and
“crest” to be similar in sound and, thus, that
Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).
The Panel finds that the Complainant has
satisfied its burden of showing that the Respondent does not have rights or
legitimate interests in the <liteleash.com> Domain Name.
Although Respondent claims that it has the
prior rights in the LIGHT LEASH mark, it has not specified facts that would
establish said trademark rights.
Respondent states that it used the name internally and was in the “final
stages of patenting and trade mark[ing] this product” when it was working with
Complainant. However, Respondent makes
no representations that it ever used the name LIGHT LEASH in commerce, as to
actually acquire any common law trademark rights prior to learning of
Complainant’s use of the LIGHTER LEASH mark.
Similarly, the fact that Respondent may have senior patent rights in the
design of the product itself, does not create rights to the LIGHT LEASH
trademark.
Although Respondent is using and was using
the domain name to make an offering of
goods or services, the critical question under the Policy is not whether
there was a prior offering of goods, but whether the offering was “bona fide.” Policy ¶ 4(c)(i); See Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife
Health Co. Ltd., FA 149188 (Nat. Arb. Forum July 19, 2003)
At the time that Respondent registered the
Domain Name and when it later began offering LITE LEASH products on its <liteleash.com>
website, it had actual knowledge of Complainant’s LIGHTER LEASH mark. From the parties’ submissions, it also
appears that Respondent adopted the Domain name only after learning of the
Complainant’s <lighterleash.com> website.
Because Respondent’s use of the LITE LEASH mark appears to infringe
Complainant’s registered trademark (assuming solely for purposes of this proceeding the validity of that registration), registration
and use of the Domain Name is not a bona fide use under the Policy.
On the record submitted, the Panel finds that
the Domain Name was registered and is being used in bad faith. Under the Policy, the use of a confusingly
similar website to sell competing goods is evidence of bad faith. Policy ¶4(b)(iv) (“by
using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your 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 your web site or location
or of a product or service on your web site or location.”).
As discussed above, Respondent had actual
knowledge of the Complainant’s website at the time it registered the Domain
Name. It admits that it chose the <liteleash.com> Domain Name
because Complainants had registered the <lighterleash.com> Domain
Name. See Kohler Co. v. Daniel Auer, FA 115044
(Nat. Arb. Forum Aug. 14, 2002) (“where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an
intent to confuse” (internal citation omitted)). This intent to confuse is further evidenced
by the wholesale copying of the website.
Even if the wholesale copying of the website was a result of the
misunderstanding on behalf of Respondent’s employee, Respondent admits that it
asked for the design of its site to “look like those sites.”
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 <liteleash.com> domain name be TRANSFERRED
from Respondent to Complainant.
David H. Bernstein, Panelist
Dated: January 9, 2007
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