WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GMZ Associates, Ltd. v. Mark Larson Enterprises
Case No.�D2007-0370
1. The Parties
Complainant is GMZ Associates, Ltd., of Brentwood, New�York, United�States�of�America, represented by Cohen Pontani Lieberman & Pavane,�LLP, United�States�of�America.
Respondent is Mark Larson Enterprises of San Antonio, Texas, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with Go�Daddy�Software,�Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on March�12,�2007. On March�15,�2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March�15,�2007, Go Daddy Software transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental�Rules”).
In accordance with the Rules, paragraphs�2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March�20,�2007. In�accordance with the Rules, paragraph�5(a), the due date for Response was April�9,�2007. The Response was filed with the Center on April�5,�2007.
The Center appointed Debra J. Stanek as the sole panelist in this matter on April�25,�2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph�7.
4. Factual Background
According to the Complaint, Complainant has used the trademark READYBRUSH for pre-pasted toothbrushes since 1994. In August�2006, Complainant applied to register the mark with the United States Patent and Trademark Office.
In July�2003, Respondent registered the domain name , which devolves to a website that bears a legend stating that it has been “parked” by the registrar. The website also contains advertising and links to third party sites.
5. Parties’ Contentions
A. Complainant
Complainant makes the following contentions:
Complainant has continuously used the mark READYBRUSH since 1994 for its patented pre-pasted toothbrushes. In that time, sales of Complainant’s READYBRUSH toothbrushes have generated sales of more than USD$10 million. Complainant’s mark is suggestive, but even if deemed descriptive, Complainant’s extensive use of the mark has caused it to acquire secondary meaning, therefore functioning as a distinctive and protectible trademark.
Complainant’s federal trademark application, filed on August�25,�2006, has been approved for publication.
The disputed domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the exact READYBRUSH mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered the domain name on July�15,�2003, nine years after Complainant began using its mark. The domain name has been “parked” by the registrar and is used to generate profits for the registrar through the third party advertising and links that are displayed on the site.
Complainant knows of no evidence that Respondent is using the domain name in connection with a bona fide offering of goods or service. Complainant knows of no evidence that Respondent is known by the domain name. The “parking” of the domain name does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use.
B. Respondent
Respondent makes the following contentions:
Respondent runs a plant food company, Total Plant Care, primarily for indoor plants. The plant food is applied to the soil, water, and leaves. One of the ways that the liquid plant food is dispensed is through a combination extendable soft brush and a plant food dispenser, which cleans and fertilizes the plant leaves, hence the name “readybrush.”
The domain name is currently parked because Respondent has a full-time job but intends to supplement his income on his retirement in several years with sale of his plant food and accessories to dispense it.
6. Discussion and Findings
In order to prevail, Complainant must prove:
(i) The domain name is identical or confusingly similar to a mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph�4(a). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under paragraph�4(a)(iii) (see Policy, paragraph�4(b)), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name (see Policy, paragraph�4(c)).
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant has established rights in the mark READYBRUSH by virtue of the declaration of its president attesting to its use of the mark and sales of READYBRUSH toothbrushes and the other materials it has submitted showing how the mark is used.
Complainant has also established that the disputed domain name is confusingly similar to the READYBRUSH mark. The disputed domain names incorporates Complainant’s mark in its entirety, adding the top level domain “.com,” and using lower case. Such differences are not relevant in determining identity or confusing similarity. The “.com” gTLD is an integral part of a domain name and is not relevant in evaluating identity or confusing similarity. Nor are distinctions between the use of lower and upper case relevant.
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant must make a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph�4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
The Panel concludes that Complainant met its initial burden on this element, however, Respondent has provided some evidence regarding its rights or legitimate interests in the disputed domain name. Respondent’s submission asserts that he uses a name corresponding to the domain name for a combination soft brush and plant food dispenser in connection with his plant food company. Respondent has not provided any documentary evidence in support of this explanation, but did certify the Response in accordance with the Rules.
Respondent’s explanation falls within paragraph�4(c)(i) of the Policy, which provides that a respondent may establish rights by using “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” before learning of the dispute. However, the lack of any supporting evidence makes this issue a close one.
In light of the Panel’s determination on the issue of bad faith, it is unnecessary to determine whether Respondent’s submission met its burden on this issue.
C. Registered and Used in Bad Faith
In order to prevail, Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith (see Policy, Paragraph�4(b)(i)-(iv)):
(i) registering the domain name primarily to sell it to complainant for more than documented out-of-pocket costs;
(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;
(iii) registering the domain name primarily to disrupt the business of a competitor; or
(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
Here, Complainant has provided no evidence that Respondent’s conduct falls within any of these circumstances. Complainant’s sole argument is that there is no evidence that Respondent has used the disputed domain name and is therefore engaged in bad faith “passive holding.” Notably, Complainant does not argue that Respondent registered the disputed domain name in bad faith. Such an argument would be difficult as Respondent registered the disputed domain name in 2003 -- three years before Complainant had even applied to register its READYBRUSH mark (which has not yet been registered). While Complainant’s READYBRUSH product has apparently been successful, there is no evidence that Respondent had any knowledge of the mark in�2003 or that it registered the domain name with Complainant or its mark in mind.
Subsequent bad faith use can lead one to conclude that a respondent was acting in bad faith at the time of the original registration. However, under the present circumstances, the Panel does not find that the current use of the domain name by the registrar or Respondent’s non-use leads to such a conclusion.
The Panel concludes that Complainant has not established that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Dated: May�9,�2007
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