Complainant is Jewelry Candles, LLC of Louisville, Kentucky, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Micah Buse of WebsiteVM - Domain Management, Louisville Marketing, Inc., d/b/a Jewelry In Candles, LLC of Louisville, Kentucky, United States of America, represented by Kyle Anne Citrynell, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 17, 2014. On December 18, 2014, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On December 19, 2014, GoD, LLC transmitted by email to the Center its verification response confirming that the 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 January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Response was filed with the Center on January 24, 2015.
The Center appointed Michael A. Albert as the sole panelist in this matter on February 6, 2015. 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.
On February 24, 2015, Complainant requested leave to submit a Supplemental Filing.
By Administrative Panel Procedural Order No. 1, dated March 2, 2015, the Panel authorized supplemental filings from each party.
On March 5, 2015, Complainant timely submitted its Supplemental Filing.
On March 16, 2015 Respondent timely submitted its Supplemental Filing. 4. Factual Background
Complainant is in the business of producing and selling scented and unscented wax-based products including taper candles, jar candles, and wax tarts for use in tart warmer devices. Complainant owns a United States Trademark Registration for the mark JEWELRY CANDLES JC A HIDDEN JEWEL INSIDE EVERY CANDLE (Registration No. 4,630,728) (Stylized and Design) (filed May 16, 2013 and registered November 4, 2014), claiming a date of first use in commerce of July 8, 2012, for candles and other wax products. Complainant's federal registration on the Principal Register disclaims the terms "Jewelry" and "Candle".
Complainant also owns applications for the marks JEWELRY CANDLE and JEWELRY IN CANDLES which the United States Patent and Trademark Office ("USPTO") recently allowed to be placed on the Supplemental Register.
Since May 3, 2012, Complainant has been the owner of the domain name. In July, 2012, it became the operator of a web site located at "www." at which it operates an online retail store selling a variety of themed wax-based products.
Complainant retained the services of Respondent to provide search engine optimization services. Respondent warned Complainant that Complainant needed to protect its brand because someone might do "the same thing with a similar domain name." Shortly thereafter, Respondent itself registered the disputed domain name and set up a competing business. 5. Parties' Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its above-referenced trademarks, both registered and unregistered. In particular, it alleges that it owns the mark JEWELRY CANDLES and that the mere addition of the term "in" between those words does nothing to avoid or mitigate confusion.
It further alleges that Respondent improperly copied Complainant's business model, the "predominant element" of Complainant's marks, and even the stylization thereof. It further alleges that numerous instances of actual consumer confusion have resulted. Complainant alleges that Respondent's conduct was an "obvious attempt to capitalize on the name recognition and goodwill of Complainant's Marks and business plan," and that such use is not a legitimate business use and was in bad faith.
In its Supplemental Filing, Complainant notes that the USPTO has now allowed registration of the marks JEWELRY CANDLE and JEWELRY CANDLES on the Supplemental Register. B. Respondent
Respondent denies that Complainant has trademark rights in any mark that is confusingly similar to the disputed domain name. As to the one mark that Complainant has on the Principal Register, Respondent alleges that it is not sufficiently similar to Respondent's mark to constitute confusing similarity, particularly when considering the disclaimer of any exclusive right to use the words "jewelry" and "candles" apart from the mark as registered ("JEWELRY CANDLES JC A HIDDEN JEWEL INSIDE EVERY CANDLE").
Respondent further notes that registration on the Supplemental Register of the marks JEWELRY CANDLE and JEWELRY CANDLES, far from establishing rights in those marks, actually does the opposite, inasmuch as the Supplemental Register contains descriptive terms that lack acquired distinctiveness or secondary meaning. 6. Discussion and Findings
For a service provider, retained to provide search engine optimization services, to set up a competing business nearly identical to Complainant's, under an arguably similar domain name, would appear to be the height of disloyalty. Whether such conduct constitutes a breach of contract, breach of express or implied warranties, or potentially one or more commercial torts, are questions that Complainant, no doubt, will want to investigate. At a minimum, the scent Respondent's conduct gives off is not one that most companies would wish to incorporate into a scented candle.
That said, proceedings under the Policy are quite limited in their scope. Respondent is, technically, correct in its assertion that registration on the Supplemental Register does not establish trademark rights, and indeed suggests that the terms so listed have not (yet) acquired distinctiveness. See, e.g., In re Chippendales USA, Inc., 622 F.3d 1346, 1353 n.9 (Fed. Cir. 2010). Thus, placement on the Supplemental Register tends to suggest that the claimed mark is, as of the time so listed, merely descriptive and lacks acquired distinctiveness or secondary meaning. See, e.g., Tarheel Take-Out LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668 ("It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy."); Advance News Service, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-1475 ("[T]he fact of a Supplemental Registration is no evidence whatsoever that the Complainant owns trademark rights in the phrase.").
Nor has Complainant shown confusing similarity between its one mark registered on the Principal Register and the disputed domain name. The registered mark JEWELRY CANDLES JC A HIDDEN JEWEL INSIDE EVERY CANDLE contains quite a number of distinctive terms not appearing in (or similar to) the disputed domain name; and indeed it expressly disclaims the very terms "jewelry" and "candle" that do predominate in the disputed domain name.
Additionally, there is evidence in the record that "jewelry candle" is a descriptive, if not generic, term in the industry to describe a candle containing a jewel. Complainant simply has not established priority of right to this term or ownership thereof as a trademark.
In sum, Complainant has failed to establish that it owns rights in a mark to which the disputed domain name is confusingly similar. Accordingly, it has not established the first element required under the Policy, and consideration of the second element (rights or legitimate interests) and third element (bad faith), is moot. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael Albert
Sole Panelist
Date: March 23, 2015
Full & Egal Universal Law Academy