WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jadlyn, Inc. and Invision Multimedia, Inc. v. Excel Marketing, LLC, and Today�s Bride
Case No. D2001-1383
1. The Parties
The Complainants in this proceeding are: Jadlyn, Inc., an Ohio corporation with its principal place of business at 3250 West Market Street, Suite 2, Fairlawn, Ohio 44333, U.S.A.; and Invision Multimedia, Inc., a Delaware corporation having a principal place of business at Canal Square, 80 West Center Street, Suite 107, Akron, Ohio 44308, U.S.A. The Complainants are represented by Alexander D. Bonmarito, Esq., Hahn Loeser & Parks LLP, 1225 West Market Street, Akron, Ohio 44313-7188, U.S.A.
The Respondents are: Excel Marketing, LLC, a California Limited Liability Company having a principal place of business at 969 Industrial Road, Suite E, San Carlos, California 94070, U.S.A.; and Today's Bride, an entity having a principal place of business at the same address. The Respondents are represented by Stephen H. Sturgeon, Esq., Law Offices of Stephen H. Sturgeon & Associates, PC, 1116 Hurdle Hill Drive, Potomac, Maryland 20854, U.S.A.
2. The Domain Names and Registrar
The five (5) domain names in dispute are: , , , and .
The registrar for the disputed domain names is Network Solutions Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on November 20, 2001, in hard copy and on November 26, 2001, by e-mail. On November 26, 2001, the Center requested that the registrar NSI check and report back on the registrants for the five (5) domain names , , , and . On November 29, 2001, NSI reported to the Center that the registrants were the Respondents.
On November 30, 2001, the Center forwarded a copy of the Complaint to Respondents by registered mail and by e-mail and this proceeding officially began. On December 17, 2001, the Respondents requested from the Center a time extension on the grounds that the main manager of the Respondents had been on her honeymoon when the Complaint arrived. On December 19, 2001, the Complainants submitted a message to the Center opposing the Center's granting an extension to the Respondents. The Center decided the Respondents had adequate justification (the Rules 5(d)) and on December 19, 2001, granted the Respondents an extension for filing the Response of seven (7) calendar days, until December 27, 2001.
The Response was submitted on December 28, 2001, electronically, and on January 9, 2002, in hard copy. The Administrative Panel submitted a Declaration of Impartiality and Independence on January 11, 2002, and on January 15, 2002, the Center appointed the Panel.
Per Rule 2(f)(iii) and Rule 10, the Panel has decided to consider the Respondents' Response submitted one day later than the Center's December 27, 2001 deadline. The Panel believes the holiday season and relative complexity of this Case's fact pattern justify this ruling.
In contrast, the Panel has decided not to consider the Complainants' January 12, 2002, unsolicited reply to the Respondents' Response, per Rule 12, nor the Respondent's subsequent sur-response: the Panel believes that the Complaint and the Response are a sufficient basis for its Decision.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by January 29, 2002.
4. Factual Background
The Complainants and the Respondents are in the same type of business: they publish bridal magazines and planners. They both use the name "Todays Bride" or variations on this name to conduct their business. The Respondents are California-based, and their business seems particularly tied to that state. The Complainants' geographic market was not specified.
The parties apparently did not communicate before the Complainants brought this proceeding seeking to transfer the five (5) disputed domain names from the Respondents to the Complainants.
5. The Parties' Summarized Contentions
Complainants' Contentions:
- Complainants use their Today's Bride trademark in association with bridal magazines and planners, and marriage planning trade shows. Complainant Jadlyn, Inc., has been using the Today's Bride trademark since June 1, 1989, and has been using this mark in interstate commerce since October 1, 1989. Complainant Jadlyn, Inc. owns all right, title and interest to United States Trademark Registrations for the Today's Bride mark.
- The Complainants own U.S. service mark registration dated May 1, 2001, (Complaint Annex E) No. 2,447,398 for the mark Today's Bride, for use in association with trade shows providing materials in the field of wedding, bridal and marriage planning, in International Class 35.
- The Complainant Jadlyn, Inc., owns U.S. trademark registration no. 2,416,969 dated January 2, 2001 (Complaint Annex F) for the mark Today's Bride, for use in association with bridal magazines and planners in the field of wedding preparation and planning in International Class 16.
- The Complainant Invision Multimedia, Inc., is the exclusive licensee of the Today's Bride trademark for use on the Internet. Invision Multimedia, Inc., owns and operates the Internet web site located at (Complaint Annex G).
- Respondent Today�s Bride registered the second-level Internet domain names and on April 2, 1999. Respondent Excel Marketing LLC, registered the second-level domain names , , and on July 2, 1999.
- The disputed domain names are identical or confusingly similar to the Today's Bride trademarks. Each of the domain names includes the words Todays Bride, which is identical to the registered marks. The domain names are identical or confusingly similar to the registered Today's Bride marks in both sight, sound and meaning.
- Complainants have not authorized or licensed Respondents to use the Today's Bride trademark.
- Respondents have not made use of the trademark Today's Bride in a bona fide offering of goods or services. Respondents have not otherwise acquired trademark or service mark rights to the Today's Bride trademarks. Respondents' sole use for the active , , , and domain names is directing consumers to Respondents' websites in competition with the Complainants. (Complaint Annex H).
- Respondents are intentionally attempting to attract Internet users to their web site for commercial gain by creating a likelihood of confusion with the Complainants' trademark as to the source of their goods and services.
- By creating a likelihood of confusion through use of the domain name as set forth in paragraph 16, Respondents are disrupting the business activities of the Complainants. In particular, Respondents' are disrupting the business activities of Complainant Invision Multimedia, Inc., as its commercial activities include operating the web site.
- If allowed to retain registration of the currently inactive , , and names, Respondents will be able to direct interested consumers to their web pages.
- Furthermore, although Respondent Today's Bride has registered the and domain names under the assumed Today's Bride business name, it is apparent that this entity is not commonly known by the Today's Bride name. This is evidenced by the lack of the Today's Bride business name anywhere on Respondents' web pages.
- The disputed domain names should be transferred to the Complainants.
Respondents' Contentions:
- The Policy was established to permit the expedited disposition of clear abuses. A clear abuse is certainly not present in the instant case.
- The Respondents have a bona fide (California) trademark in the words Today's Bride that was issued much earlier (July 21, 1999), than Complainants' alleged trademark. Furthermore, the Respondents duly registered with the State of California the words Today's Bride to be used as Respondents' trade name and have been consistently using the trade name and are commonly known by the trade name Today's Bride.
- Respondents registered the domain names and on April 2, 1999, which was substantially prior to the date that Complainants filed application for the trademark.
- Respondents also registered the domain names and and on July 2, 1999, which was substantially prior to the date that Complainants obtained the trademark registration for the words "today's bride".
- The Complainants do not allege to own a trademark in the words Todaysbrideplanner, Todaysbrideandgroom, Todaysbridemagazine or Todaysbridesf.
- The Complainants have not shown their trademark is confusingly similar to the disputed domain names.
- Respondents do, in fact, have rights in the domain names since Respondents are engaging in preparation for the use of the domain names in connection with a bona fide offering of goods and services and also Respondents have been commonly known by the domain names, even if they have acquired no trademark or service mark rights.
- Respondents have been using the disputed domain names to engage in a bona fide business publishing a magazine related to bridal products.
- In the instant case there has not been any conclusive evidence presented by Complainants to show one of the listed circumstances or any other circumstance of bad faith. Therefore, the Complainants have failed to establish this required element. Complainants have failed to prove that there was bad faith both at the time of registration and in the current use of the domain names.
- The Complainants' request for transfer of the disputed domain names should be denied.
6. Discussion and Findings
In order for Complainants to prevail and have the five (5) disputed domain names transferred to them, Complainants must prove the following (the Policy, para. 4(a)(i-iii)):
- the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain names were registered and are being used in bad faith
Identical or Confusingly Similar
The Complainants have produced two United States Patent and Trademark Office Principal Register registrations for their mark "Today's Bride". They are service mark no. 2,447,398 dated May 1, 2001, in international class 35 for wedding trade shows; and trademark no. 2,416,969 dated January 2, 2001, in international class 16 for wedding magazines (Complaint Annexes E and F).
The five (5) disputed domain names, , , , , and all contain the descriptive mark Todays Bride. The Respondents have argued that the Complainants' marks are not co-extensive with the disputed domain names in that the marks do not contain all the disputed domain name words such as "andgroom" and "magazine"(magazine). The Panel finds the Respondents' argument unpersuasive. In the Panel's view, the additions are either logical add-ons or generic and hence do not vitiate the identicality or confusing similarity to the Complainants' mark. It scarcely needs repeating that the top level indicators such as ".com" and ".net" do not affect domain name identicality or similarity.
The Panel finds the Complainants have satisfied the requirements of the Policy at 4(a)(i).
Legitimate Rights or Interests
The Complainants contend the Respondents have not been authorized or licensed to use their U.S. federally registered service marks. The Complainants also contend the Respondents are not using the disputed domain names in a bona fide offering of goods and services, but are instead only using the disputed domain names to direct traffic to a site that competes commercially with the Complainants' business.
The Respondents, however, have shown that for some years they had a publication called "Premier Bride". Owing to a business breakup, the Respondents began using the name Today�s Bride around March 1999. At the same time, the Respondents registered the California trademark and California company name. On July 2, 1999, the Respondents registered the disputed domain names , and . And on April 2, 1999, the Respondents registered the disputed domain names and (Response Exhibits C-H).
Under the premises, the Panel believes that the Respondents would qualify for the "legitimate rights and interests" safe haven of 4(c)(i) if they went about their business without knowledge of the Complainants and their trademark rights. The established facts indicate this is the case. As the Respondents point out, the Complainants registered their Today�s Bride marks significantly later than the Respondents registered their California company trademark and began doing business using this name. The Complainants have offered no evidence tending to show the Respondents might or should have been aware of the Complainants' mark rights when the Respondents began using the Todays Bride name.
The Panel therefore finds the Respondents have shown that they have legitimate rights and interests in the disputed domain names under the Policy at 4 (c)(i): "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;"
The Panel deems it unnecessary to proceed to a discussion of bad faith since, under the Policy, the Complainants are required to prevail in each separate step of the Policy 4(a)(i-iii).
7. Decision
The Panel finds the five (5) disputed domain names are identical or confusingly similar to the Complainants' registered mark Today�s Bride. However, the Panel finds the Respondents have legitimate rights and interests in the disputed domain names in that the Respondents, per the Policy at 4(c)(i), were using the disputed domain names for a bona fide offering of goods and services before this dispute came to the Respondents' attention.
Hence, in accordance with the Policy para. 4(i) and Rule 15, the Panel orders that the five disputed domain names, , , , and remain registered to the Respondents, Excel Marketing, LLC and Today�s Bride.
Dennis A. Foster
Sole Panelist
Dated: January 31, 2002
Full & Egal Universal Law Academy