Complainant is Sunbeam Products, Inc. d/b/a Jarden Consumer Solutions of Boca Raton, Florida, United States of America, represented by Husch Blackwell Sanders LLP, United States of America.
Respondent is Online Appliance Sales, Joseph Nardone both of Long Branch, New Jersey, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd d/b/a Internet Names Worldwide. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2009. On July 3, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On July 6, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “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 July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Response was filed with the Center on July 29, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 5, 2009. 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
Complainant Sunbeam Products, Inc. d/b/a Jarden Consumer Solutions is one of the largest, small household appliance providers in the Unites States, with approximately 12,000 employees in fifteen countries. In addition to the FOODSAVER brand at issue here, Complainant owns other well-known brands such as CROCK-POT, MR.COFFEE, RIVAL and SUNBEAM.
Complainant owns various United States (“U.S.”) registrations for its FOODSAVER mark including U.S. Registration Nos.: 2,623,116; 2,604,432; 2,547,293; and 1,422,539. These registrations all indicate that Tilia International Inc. had at one time owned the marks (Complainant merged with Tilia International Inc. in 2006), and some indicate the registrations already have been assigned to Complainant, while others do not.
Complainant and/or its predecessors have used continuously FOODSAVER as a mark to identify its goods and services in the United States since at least as early as 1985, as evidenced in U.S. Registration No. 1,422,539. In 2007, Complainant's gross U.S. sales under the FOODSAVER brand totaled USD 149,769,055, and its U.S. advertising expenditures were in excess of USD 5,000,000. In 2008, Complainant's gross U.S. sales under the FOODSAVER brand totaled USD 124,515,709, and its U.S. advertising expenditures totaled USD 8,766,544. Complainant's 2009 Year-To-Date (May) gross U.S. sales under the FOODSAVER brand total USD 42,311,267, and its U.S. advertising expenditures have so far totaled more than USD 3,100,000.
Complainant uses the FOODSAVER mark on or in connection with a variety of vacuum sealing and storage goods, including vacuum sealers, vacuum bags, stands for vacuum sealers, cutters for vacuum bags, bottle stoppers, and vacuum sealing canisters. Complainant also uses its FOODSAVER mark online and in connection with the website located at “” and “/Brands.aspx”.
Complainant's counsel sent Respondent three letters related to this matter: a cease and desist letter, reminder letter, and a third letter, on August 18, 2008, September 15, 2008 and February 9, 2009, respectively. Respondent failed to respond to any of them.
Respondent registered the Domain Name on January 12, 2002. 5. Parties' Contentions A. Complainant
Complainant contends that in light of the fame of the FOODSAVER mark, consumers are likely to mistakenly believe that the Domain Name and websites that it references are associated with Complainant. According to Complainant, the phrase “foodsavershop” completely encompasses the phrase FOODSAVER, and is therefore visually similar to the FOODSAVER mark. The mere addition of the term “shop”, which is a generic term for a retail sales location or Internet sales website, would not distinguish the Domain Name from the FOODSAVER mark.
Complainant further contends that Respondent has no rights to the name “Foodsaver” or the Domain Name, is not commonly known by the Domain Name, and there is no company that operates under the name “Foodsaver Shop”. Complainant further contends Respondent is not an authorized dealer of FOODSAVER brand products and has not been licensed the right to use Complainant's FOODSAVER mark. Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor and/or intentionally attracting, for commercial gain, Internet users to its website or other online location.
With regard to Respondent's bad faith registration and use of the Domain Name, Complainant contends: (1) Respondent is selling FOODSAVER brand products but omitting certain health warnings found on Complainant's website relating to the products; (2) Respondent's website uses Complainant's copyrighted images of FOODSAVER brand vacuum sealers, and much of Complainants copyrighted informational text; (3) Respondent failed to reply to Complainant's cease and desist letter and reminder letter, and a subsequent third letter. The initial letter of August 18, 2008 was sent via certified mail, while the reminder letter of September 15 was sent via certified mail, fax and email. Complainant notes that the September 15 letter was transmitted successfully to the fax number listed on Respondent's website. Such letter was also successfully emailed to the email address Respondent provided when registering the Domain Name and which is listed on Respondent's website. Both the September and February letters were sent to the address and fax number on file with Melbourne IT Registrar which Respondent provided when registering the Domain Name. These letters were returned as unclaimed. However, Respondent lists this same address as its return address when it ships products sold on its website. Complainant then sent the February 9 letter to this address via certified mail. Again, this letter was returned as unclaimed. Therefore, Respondent is avoiding Complainant in bad faith and/or improperly listed its address when registering the Domain Name in bad faith and/or is improperly listing its return address when shipping products in bad faith; and (4) Respondent claims to be a “FOODSAVER Online Store” (see the bottom of the “www.” pages), thus holding itself out as an authorized dealer of FOODSAVER products, which is untrue. While holding itself out as an authorized dealer, Respondent nevertheless tries to push warranty and parts/service issues back directly onto Complainant. For example, Respondent lists “Tilia” as the contact for any such issues. However, Tilia no longer exists as a stand-alone company but was merged into Complainant in 2006. B. Respondent
Respondent asks the Panel to deny the remedies Complainant requests.
Respondent asserts that the Domain Name is not confusingly similar to the FOODSAVER mark because Respondent is an authorized retailer of FOODSAVER brand products and operates an online shopping site that sells FOODSAVER brand products. Respondent also represents it is using the Domain Name with Tilia, Inc.'s (previous owner's) approval and claims that its print and online advertising containing the Domain Name was approved and paid for by Tilia, Inc. Respondent also argues that because Complainant allows other retailers to use the FOODSAVER mark in domain names as promotional consideration, Respondent should be allowed the same use under United States Federal Trade Commission regulations governing cooperative advertising.
Respondent alleges it has a legitimate interest and permission to use the FOODSAVER mark in sales activities because it is an authorized retailer of FOODSAVER brand products. Furthermore, Respondent alleges it is using the Domain Name in good faith to sell FOODSAVER brand products and no other brand products. 6. Discussion and Findings
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which 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.
As a preliminary matter the Panel must determine whether the late response should be considered. Respondent candidly admits to receiving the Complaint on July 12, 2009 and to being informed that the response was due on July 28, 2009. Respondent fails to provide any explanation for the late filing of its response on July 29, 2009. This is especially curious considering the brevity of the response. Insofar as the Response appears to have been filed only a day after it was due, but before the Panel was appointed and any substantive review commenced, the Panel has considered the contents of the late Response. The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale,WIPO Case No. D2000-0378; Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman,WIPO Case No. D2004-0627. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the FOODSAVER mark through the continuous use of the mark by Complainant and its assignor, as well as Complainant's ownership of U.S. registrations covering the mark.
The Panel concludes that the Domain Name, , is confusingly similar to Complainant's FOODSAVER mark. The Domain Name incorporates the mark in its entirety and merely adds the descriptive or generic term “shop”. Although this evidence is itself sufficient to satisfy Complainant's burden under the first factor, EAuto, Inc. v. E Auto Parts, Inc.,WIPO Case No. D2000-0121, the addition of the term “shop” to the registered FOODSAVER mark, and the use of that Domain Name to direct Internet users to the website at the Domain Name, which permits the public to shop for what appears to be the products that Complainant sells under the FOODSAVER mark, is highly likely to confuse Internet users into believing that Complainant, a well-known household appliance provider, is offering, sponsoring or otherwise affiliated with Respondent's website. See Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The burden of proof, however, remains with complainant. Id. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
“(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; or
“(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent does not dispute that it has not been commonly known by the Domain Name. Respondent does dispute, however, Complainant's assertions that Respondent is not an authorized dealer for Complainant's products and that it has no rights to the FOODSAVER mark alone or in the Domain Name. Respondent asserts, without more, that it has a legitimate interest and permission to use the FOODSAVER mark because: (1) it is an authorized retailer of FOODSAVER brand products; (2) it is using the Domain Name with Tilia, Inc.'s (previous owner's) approval and claims that its print and online advertising containing the Domain Name was approved and paid for by Tilia, Inc.; and (3) Complainant allows other retailers to use the FOODSAVER mark in domain names as promotional consideration, so Respondent believes it should be allowed to do the same.
Insofar as Complainant has made a prima facie case, it was Respondent's burden to rebut the showing with concrete evidence. Respondent presented no evidence by way of documents or sworn statements to prove any of its claims in defense.
In addition to the opportunity here to present evidence, Respondent had the opportunity to rebut Complainant's allegations in response to three letters from Complainant. Specifically, in Complainant's August 18, 2008 letter to Respondent, Complainant wrote in part:
“Our client has become aware that you are operating a website under the trademark, service mark, trade name and domain name FOODSAVER, FOODSAVER ONLINE STORE, FOODSAVER® By TILIA™, (such names and marks, along with any names and marks confusingly similar thereto, called the “Infringing Marks”) and that you are holding yourself out as an authorized online retailer and dealer of FOODSAVER products.
Our client owns the above identified Marks as well as 107 FOODSAVER and 14 TILIA international trademarks filed and registered worldwide. Our client's records indicate that Online Appliance Sales and Joseph Nardone are not authorized distributors, dealers and/or agents of the FOODSAVER product line.
. . . Our client receives and considers numerous requests every year from companies wishing to become authorized dealers of our clients of its Marks. It simply cannot accept your attempts to appropriate its Marks and misrepresent yourself to the public in this manner.”
Respondent failed to address Complainant's allegations regarding its rights to use the FOODSAVER mark or its status as an authorized distributor, dealer and/or agent, or produce any evidence to rebut Complainant's assertions.
Using a domain name that reflects the trademark of a well-known household appliance provider to direct the public to a website that not only offers for sale what appears to be Complainant's FOODSAVER sealing systems and accessories, but also uses Complainant's FOODSAVER mark and the same copyrighted images Complainant uses on its website to sell its sealing system products, is an illegitimate commercial use of the Domain Name rather than a legitimate noncommercial or fair use under the Policy. See, e.g., T-N-T Carports, Inc. v. Private Who is For bpelprip1701 / Pluto Domain Services Private Limited,WIPO Case No. D2008-1605.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that may be considered as evidence of Respondent's registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [e.g., Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
Based on the undisputed fact that Respondent is using Complainant's FOODSAVER mark and copyrighted images on its website and selling what appears to be Complainant's products, it is clear that Respondent knew of Complainant and its rights in the FOODSAVER mark before registering the Domain Name. Thus, the Panel concludes Respondent's registration was in bad faith.
Respondent's bad faith use is evidenced here by the fact that Respondent is using a domain name that is confusingly similar to Complainant's registered and well-known FOODSAVER mark on a competitive website.
Further evidence of Respondent's bad faith adoption and use of the Domain Name is the fact that Respondent already has and is using a domain name that reflects its trade name, which does not infringe Complainant's FOODSAVER mark -- . Thus, insofar as Respondent is using a confusingly similar Domain Name on a site that competes with Complainant's the Panel concludes that Respondent intentionally registered and is using the Domain Name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's FOODSAVER mark as to source, sponsorship, affiliation or endorsement of its business.
The Panel also notes that by disregarding Complainant's many overtures to address the dispute here, while continuing to use the Domain Name and Complainant's FOODSAVER mark on the website associated with the Domain Name, Respondent has provided further evidence of its bad faith use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Dated: August 16, 2009
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