National Arbitration Forum
DECISION
Pom Wonderful LLC v. Tara
Redavid
Claim Number: FA0611000846577
PARTIES
Complainant is Pom
Wonderful LLC (“Complainant”),
represented by David Grossman of Loeb & Loeb, 10100 Santa Monica Boulevard, Suite 2200, Los Angeles,
CA, 90067. Respondent is Tara Redavid
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pomkills.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certify that they have acted
independently and impartially and that to the best of their knowledge, they
have no known conflict in serving as Panelists in this proceeding. Hon. Carolyn
Marks Johnson, Sandra J. Franklin and Beatrice Onica Jarka sits
as Panelists. Ms. Beatrice Onica Jarka is Chair of the Panel.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically November
17, 2006; the National Arbitration Forum received a hard copy of the
Complaint November 20, 2006. Pursuant to
a request by the National Arbitration Forum, Complainant amended the Complaint.
On November
20, 2006, Go Daddy Software, Inc.
confirmed by e-mail to the National Arbitration Forum that the <pomkills.com>
domain name is registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
name. Go
Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc., registration agreement
and thereby has 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
28, 2006, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of December
18, 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@pomkills.com
by e-mail.
A timely Response was received and determined
to be complete December 18, 2006.
On December 27, 2006,
pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Carolyn
Marks Johnson, Sandra J. Franklin and Beatrice Onica Jarka as Panelists. Ms. Beatrice Onica Jarka is Chair of the
Panel.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
· Respondent’s <pomkills.com> domain name is confusingly similar to Complainant’s POM family of Marks and domain names, as it fully incorporates the POM mark.
· Respondent has no rights to or legitimate interests in the <pomkills.com> domain name because:
- The website associated with the disputed domain name contains defamatory statements against the Complainant and offers no goods or services of any kind.
- The Respondent is not commonly known by the domain name or by any similar mark and has not been licensed or authorized by Complainant to register or use any domain name that incorporates Complainant’s POM family of marks.
· Respondent registered and used the <pomkills.com> domain name in bad faith.
B. Respondent makes the following points in response:
·
The
disputed domain name is a parody of the Complainant’s trademark and is not
confusingly similar to Complainant’s mark.
·
The Respondent
is making a noncommercial but good faith use of the domain name by hosting a
website that offers parody and criticism but does not offer goods or services
for sale, and
·
The
Respondent has rights and legitimate interest in the domain name for purposes
of parody and criticism.
FINDINGS
Complainant – Pom Wonderful LLC is a company
in the
Complainant is the owner of an entire family
of federally registered trademarks and federal trademark applications using
some form of POM and POM Wonderful.
Complainant has invested in its enterprise by
extensive publicity and by educating the public to the health benefits of its
POM branded products in the
Complainant also maintains many websites
making use of its POM family of marks.
Respondent registered the disputed domain
name “pomkills.com” in August 2006 and, according to statements made by both
parties, is using it as a non-commercial site for criticism.
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
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) 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 to and/or Confusingly Similar
Complainant established with
extrinsic proof in this proceeding that it has rights in the Pom trademark and that it is the owner of an entire family of federally
registered trademarks and federal trademark applications making use of POM and
POM Wonderful.
Nevertheless, the disputed domain name is not a simple reiteration of the Complainant’s mark. The disputed domain name includes in its entirety the word POM, but it also adds a pejorative term, “kills”.
On the facts as set out here, the Panel finds that based on the proof in this proceeding, Respondent’s addition of the term “kills” to Complainant’s mark for the sole purpose of parody and criticism is sufficient to distinguish the domain name from Complainant’s mark. Complainant offered no proof to support any claim that Respondent was using the domain name for any purpose other than criticism. Adding a pejorative term to a trademark or service mark dispels the likelihood of confusion. See FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar Sneede D2004-0978 (WIPO, January 20,2005)(“[A] company is not likely to use as the URL of its web site a domain name that communicates an inherently and necessarily negative message about the company”); see also Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore <lockheedmartinsucks.com> and <lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED MARTIN); cf. Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000) (finding that the respondent has rights and legitimate interests to use the <wallmartcanadasucks.com> domain name as a forum for criticism of the complainant).
Complainant also contended that the content of
the website is defamatory. The Panel makes no decision concerning this issue.
This allegation is outside the scope of the Policy, which as stated in other
decisions, is meant to protect against trademark
infringement in domain name and not to provide a general remedy for other
misconduct involving domain names. See Wal-Mart Stores, Inc.
v. wallmartcanadasucks.com and Kenneth J. Harvey,
D2000-1104 (WIPO Nov. 23, 2000) (finding that posting
defamatory material on a Web site would not justify revocation of a domain name
under the Policy and that if the
Complainant believes the Respondent’s use of these two domain names is
defamatory or otherwise unlawful, its remedies lie elsewhere.)
Complainant also contended that non-native English speakers may be confused by the site if they are not familiar with the meaning of the word "kills." The Panel notes that any risk of confusion seems slight since the geographical areas in which Complainant is active are countries in which English is the dominant language. In addition, the term “kills” is not an uncommon word.
In conclusion, the Panel finds that
Complainant failed to establish that the <pomkills.com>
domain name is confusingly
similar to its POM mark for purposes of
ICANN Policy ¶ 4(a)(i).
Rights
to or Legitimate Interests
The Panel finds that given the determination under Policy ¶ 4(a)(i) above, it is unnecessary to address this issue.
Registration
and Use in Bad Faith
The Panel finds that given the determination under Policy ¶ 4(a)(i) above, it is unnecessary to address this issue.
DECISION
Having failed to establish all three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Carolyn Marks Johnson Sandra J. Franklin Beatrice
Onica Jarka
Beatrice
Onica Jarka writing for the Panel
Dated:
January 8, 2006.
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum