WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Share Our Gifts Foundation, Inc. v. Freedom Bands Inc., Fan Bandz Inc a/k/a fanbanz
Case No. D2004-1070
1. The Parties
The Complainant is Share Our Gifts Foundation, Inc., Provo, Utah, United States of America, represented by Fillmore Spencer, LLC, United States of America.
The Respondent is Freedom Bands Inc, Fan Bandz Inc a/k/a fanbanz, all of Orem, Utah, United States of America (hereinafter referred to as “Respondent”), represented by Wrona & Parrish, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names <freedombands.net>, <freedombands.org>, <freedombandsusa.com>, <usafreedomband.com>, and <usafreedombands.com> are registered with Go Daddy Software, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004. On December 17, 2004, and December 23, 2004, the Center transmitted by email to Go Daddy a request for registrar verification in connection with the domain names at issue. On December 17, 2004, and December 23, 2004, Go Daddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 22, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced December 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2005. The Response was filed with the Center February 8, 2005, however, due to time zone differences, was clearly sent on February 7, 2005.
The Center appointed M. Scott Donahey, W. Scott Blackmer and Sandra Franklin as panelists in this matter on February 25, 2005. The Panel finds that it was properly constituted. Each member of 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 17, 2005, Complainant submitted to the Center a supplemental filing and a request that the Panel consider same. On February 17, 2005, Complainant submitted to the Center a second supplemental filing and a request that the Panel consider same. On February 28, 2005, the Panel determined that it would accept the supplemental filings and would give Respondent until March 11, 2005, to respond thereto. On March 19, 2005, the Respondent notified the Center that it would not be filing a supplemental response.
In light of the above supplemental filings and the opportunity to respond thereto, the time in which the Panel was to issue its decision was extended to March 31, 2005.
4. Factual Background
On July 4, 2004, Mr. Jensen of Complainant informed his family of his intent to create rubber wristbands, called “freedombands,” to market those wristbands, and to donate money to organizations that support or contribute to the armed forces of the United States.
In the early summer of 2004, Respondent’s principals discussed the manufacture and sale of rubber wristbands similar to those sold by the cyclist Lance Armstrong’s cancer research foundation, which wristbands had been emblazoned with the slogan, “Livestrong”. The wristbands envisioned by Respondent’s principals were to carry the logos or slogans of schools, corporations, and sports teams.
On August 18, 2004, Respondent’s principal reserved the name “Fan Band Corp.” with the State of Utah. On August 19 and 20, 2004, he secured price quotes from manufacturers of rubber wristbands.
On August 21, 2004, Mr. Jensen of Complainant told friends at an Eagle Scout project about his intent to launch what he described as his “freedombands” project.
On August 22, 2004, Respondent’s principal incorporated Fan Band Corp. in Utah, with the dba “Fan Bandz.” On the same date, he filed an “intent to use” application with the United States Patent and Trademark Office (“USPTO”) for the trademark FAN BANDZ.
On August 23, 2004, Complainant sold its first “freedomband” in Utah.
Respondent submitted a typed purchase order form dated September 1, 2004, purporting to order a sample mold with the word “freedom” imprinted, and described as a Freedom Band. The purchase order is addressed to H & G Rubber Ltd. in Hong Kong and quotes a price of $300.
On September 6, 2004, Respondent received an email from H & G Rubber, Ltd. referencing an attachment with pricing for molds, bags, and band quantities. The attachment is missing from the email. There is no reference to the purchase order dated September 1, 2004.
In August and September 2004, Respondent’s principal “attempted to contact” Ms. Leviton, who had registered the domain name <freedombands.com> on December 29, 2003.
On September 4, 2004, Complainant registered the domain name <supportusatroops.com>.
On September 14, 2004, Complainant contacted Ms. Leviton, inquiring about the availability of the domain name <freedombands.com>. On September 28, 2004, Complainant purchased <freedombands.com> from Ms. Leviton for $70.
On September 20, 2004, Complainant registered Share Our Gifts, Inc., as a Utah corporation.
On October 8, 2004, Complainant distributed 3,000 flyers at a sporting event in Provo, Utah and began operating a website offering “freedombands” for sale. The domain name that resolved to the website at that time was <supportusatroops.com>. Both the website and the flyers contained prominent references to USA FREEDOMBANDS and FREEDOMBANDS followed by the trademark symbol “TM.”
On October 10, 2004, Complainant made its first sale of a “freedomband” outside of Utah.
On October 11, 2004, Respondent sold wristbands it claims were “freedombands” at an event at Utah Valley State College. Complainant also attended that event and distributed the flyers that advertised “FREEDOMBANDS™” and “USA FREEDOMBANDS.” At the event Complainant saw Respondent’s Fan Bandz booth and purchased packaged wristbands from Respondent. Complainant submitted photocopies of the packaged wristbands. The packages in the photocopies are labeled “FAN BANDZ BE A FAN - WEAR A BAND” and “WWWFANBANDZ.COM.”
On October 12, 2004, Utah television station KUTV Channel 2 news ran a news story regarding Complainant titled “Information on Freedombands.”
Between August 23, 2004, and October 14, 2004, Complainant sold over 10,000 “freedom bands” and was looking for another manufacturer.
On October 14, 2004, Complainant met with Respondent for the purpose of having Respondent supply wristbands to Complainant. Respondent’s principal said that Complainant told him that it was currently purchasing wristbands at a price of $.17-$.18 per band. Complainant alleges that Respondent said it was interested in manufacturing the wristbands for Complainant at a price of $.13 per wristband. Respondent’s principal said that he indicated interest in manufacturing wristbands for Complainant, but that he did not quote a price. Both agree that at the meeting Complainant gave Respondent a wristband that was printed with the words “Life,” “Liberty,” and “Freedom.” At that meeting, Respondent either already knew or was told that Complainant was selling the wristbands at “www.supportusatroops.com”. Complainant alleges that Complainant gave Respondent a copy of the flyer described above. Respondent alleges that Complainant told Respondent that Complainant had not yet received any orders for wristbands.
On October 15, 2004, at Respondent’s direction, Mr. Kitchen contacted Ms. Jensen of Complainant. Kitchen knew Ms. Jensen because the children of each attended the same school. Kitchen also knew of the wristbands imprinted with “Life,” Liberty,” and “Freedom,” because the Jensen children had been selling the wristbands at school. Kitchen stated that Respondent’s principal had told Kitchen that Respondent’s principal had given the Jensens a quote of $.39 per wristband. Kitchen said that he told Ms. Jensen that Respondent was prepared to manufacture the wristbands for Complainant for the price of $.39 per band. (In an email sent by Respondent’s principal to Complainant on October 17, 2004, Respondent’s principal said that there was a “mis-communication” between him and Kitchen, and that he had told Kitchen that he would manufacture the wristbands for Complainant, but that he “needed to charge .29 per band” “for the stress and effort it would require on my end to take care of you properly.”) Kitchen said Ms. Jensen said that the price was higher than that quoted to the Jensens in the meeting of October 14th. Kitchen told Ms. Jensen that she could “take it or leave it,” and if she did not accept the price she would have to get the wristbands from some other supplier. Ms. Jensen alleges that Kitchen told her that if she did not accept Respondent’s price that Respondent would compete with her directly in the sale of “freedombands.” Kitchen alleges that Complainant threatened to sue him personally. Kitchen described their conversation as “very unpleasant.”
Also on October 15, 2004, Respondent filed “intent to use” trademark applications with the USPTO for trademarks FREEDOMBANDS, USA FREEDOMBANDS, USA FREEDOM BANDS, and FREEDOM BANDS, and registered the domain names <usafreedomband.com> and <usafreedombands.com>.
On October 16, 2004, Respondent filed a name reservation in Utah for the corporate name, “Freedombands, Inc.”
On October 17, 2004, Respondent’s principal sent Ms. Jensen an email, some of the contents of which was described above. In that email, Respondent indicated a willingness to manufacture the wristbands for Complainant at a price of $.28 a band for 100,000 bands with no packaging, Complainant to pay for shipping and to put 60% down on order plus a mold charge of $1,050. Respondent required assurances that he would get future orders as well, and on reorders of 50,000 or more he quoted a price of $.20 per band.
On October 20, 2004, Respondent registered “Freedombands, Inc.” as a for-profit Utah corporation.
On October 21, 2004, the Daily Herald, a local Utah newspaper, did an article on Complainant’s “Freedom Bands,” detailing their sale at the earlier described Utah Valley State College event and at a Michael Moore event at the same location.
On October 22, 2004, Complainant filed an application for the trademark FREEDOMBANDS with the USPTO, claiming first use on August 23, 2004, and first use in commerce on October 10, 2004.
On October 29, 2004, Respondent’s counsel sent Complainant a letter on behalf of Freedombands, Inc., warning Complainant not to use the name “freedom bands.” On November 18, 2004, Complainant’s counsel replied, demanding that Respondent cease and desist from using the FREEDOMBANDS mark, asserting Complainant’s pending trademark application.
On November 11, 2004, Respondent registered <freedombands.net>, <freedombands.org>, and <freedombands.us>. On November 18, 2004, Respondent registered <freedombandsusa.com>.
On November 18, 2004, Respondent registered the domain name <freedombandsusa.com>.
On December 28, 2004, Respondent incorporated Bands of Freedom Foundation, Inc. as a Utah nonprofit corporation. Its application for Sec. 501(c)(3) status is pending with the Internal Revenue Service.
Respondent is using the domain names at issue to resolve to a website at which competing Freedom Bands are being sold. A portion of the proceeds from the sale of these wristbands are donated to charities which support United States servicemen and veterans. Initially, Respondent’s website bore the caption, “Freedom Bands,” and included the phrase, “The original, one and only, Freedom Bands™. Don’t be fooled by imitations.” Currently, the caption of the site has been changed to “USA Freedombands,” it advertises “FREEDOMBANDS™,” and the foregoing phrase has been removed. Pictures of the “freedombands” displayed on the website show that they are imprinted with the words “Life,” “Liberty,” and “Freedom.”
Respondent alleges that at the time of filing of the Response, Respondent had sold 200,000 “freedombands” and donated $30,000 to charity.
Complainant has received emails indicating Internet users are confused as to whether Complainant is a sponsor of or associated with Respondent’s site.
5. Parties’ Contentions
Complainant contends that the domain names at issue are identical or confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain names at issue were registered and are being used in bad faith.
Respondent contends that its trademark application is prior in time to Complainant’s application and that Complainant has no rights in the mark. Respondent further contends that it has rights and legitimate interests in respect of the domain names at issue in that it has been using them for eleemosynary purposes, that it has a trademark application pending, and that it has sold some 200,000 “freedombands.” Finally, Respondent contends it acted on a good faith belief that it was entitled to use the domain names to support the non-profit sales of its trademarked wristbands and that it was unaware of Complainant’s use of the name and mark at the time Respondent formulated its plans. Since the formation of the Bands of Freedom Foundation in late December 2004, Respondent has made scrupulous efforts to keep its for-profit and not-for-profit entities separate.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant began using the trademark FREEDOMBANDS on August 23, 2004, in conjunction with the sale of the first wristband and has been using the mark continuously thereafter. At least as early as October 12 and October 21, 2004, newspaper and television stories appeared identifying Complainant as the source of the “freedomband” product. Complainant used the trademark FREEDOMBANDS on flyers and on its website with the trademark designation TM at least as early as October 8, 2004. Complainant filed an application for the trademark FREEDOMBANDS with the USPTO on October 22, 2004, and that application is pending.
Both Complainant and Respondent are residents of the United States and both are dealing with the USPTO. Therefore, it is appropriate to apply the trademark law of the United States in this matter. The Panel agrees with the analysis of the Panel in Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, when it reasoned:
Complainant has filed an application for registration of the trademark “ACROBAT READER” on the Principal Register at the PTO, has provided substantial evidence of its use of that trademark in commerce, and has asserted this use preceded Respondent’s registration of the domain name <acrobatreader.com>. The Policy requires that a Complainant have “rights” in a trademark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a trademark be registered by a governmental authority for such rights to exist. In U.S. law, trademark infringement actions may be brought on the basis of unregistered marks, and U.S. legislation authorizing trademark infringement actions based on abusive domain name registration does not require registration of a trademark as a condition for obtaining relief. In U.S. law an application for trademark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration.
Accordingly, the Panel finds that Complainant has rights in the trademark FREEDOMBANDS.
All of the domain names at issue incorporate Complainant’s mark. Some have dropped the final “s” before adding the generic Top Level Domain suffix, and some have added “usa” to the mark. Neither change is significant. MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (<americansingle.com> found confusingly similar to mark AMERICAN SINGLES); Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (<walmartcanada.com> found confusingly similar to mark WAL-MART). Because the domain names at issue incorporate Complainant’s mark, the Panel finds that the domain names at issue are confusingly similar to Complainant’s mark. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
B. Rights or Legitimate Interests
Where a domain name registrant registers and uses a domain name that is confusingly similar to the trademark of another to directly compete, the registrant is acting in bad faith. In such a case the registrant cannot have legitimate rights and interests in respect of the domain name. Marketing Mix, Inc. v. Mix, WIPO Case No. D2000-0352. As the Panel finds that Respondent has acted in just this manner, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
This case is obviously very fact intensive, and the parties present differing views of certain key events. Some panelists have taken the view that a panel should not engage in the determination of credibility in a summary proceeding such as the UDRP, but that the parties should be referred to the courts, who are better equipped to make such determinations. See, dissent, Time Inc. v. Chip Cooper, WIPO Case No. D2000-1342. While mindful of the difficulties inherent in determining credibility in a proceeding without an oral hearing, the Panel feels that it is its responsibility, wherever possible, to evaluate the evidence and to provide the parties with a speedy, cost-effective resolution of their domain name dispute.
Commentators universally viewed it as important that the administrative procedure be capable of providing determinations with speed and efficiency. The nature of the Internet demands such characteristics of dispute-resolution procedures. For example, an abusive registration of a domain name may block another with the legitimate right to presence on the Internet under that domain name in respect of a product that is about to be launched or an international event that is about to occur. Similarly, the damage that is being done by an abusive registration of a domain name may be extensive by virtue of global access to which the registration gives rise, so that it becomes urgent to limit that damage. The Management of Internet Names and Addresses: Intellectual Property Issues; Report of the WIPO Internet Domain Name Process, April 30, 1999, at paragraph 200.
While there will certainly be cases in which a Panel cannot determine credibility, it would serve neither the interests of the parties nor the integrity of the process to dismiss any case in which one of the parties submits evidence which creates a colorable issue of credibility, leaving the parties to expensive and prolonged court proceedings.
Moreover the Panel is directed by the Rules that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Rules, paragraph 10(d). Such a task implicitly includes the evaluation of the credibility of the evidence Therefore, the Panel undertakes its duty to assess and to weigh the evidence submitted.
In the present case, the Panel regards the following undisputed facts to be crucial in evaluating the credibility of the parties:
On September 14, 2004, Complainant contacted the registrant of the domain name <freedombands.com> and inquired about the availability of the domain name. On September 28, 2004, Complainant purchased the domain name for $70 US dollars.
Complainant established a website at which it offered for sale the FREEDOMBANDS™ and USA FREEDOMBANDS wristbands. By Respondent’s admission, Respondent’s principal knew of this website at least as early as October 14, 2004, when he met with Complainant’s principals. Response, Annex 1.
On October 11, 2004, Complainant was distributing flyers advertising its USA FREEDOMBANDS and FREEDOMBANDS™ at the same event at which Respondent was selling its FAN BANDZ. Supplemental Declaration of Mr. Jensen.
On October 12, 2004, a local television station in the community where both Complainant and Respondent and their principals reside ran a story on Complainant and its “freedombands.” Complaint, Annex 5.
On October 14, 2004, Complaint’s principals met with Respondent’s principal to discuss the possibility of Respondent supplying Complainant with wristbands. By the admission of Respondent’s principal, Respondent received a wristband imprinted with the words “Life,” “Liberty,” and “Freedom.” Response, Annex 2.
On October 15, 2004, Mr. Kitchen met with Complainant on behalf of Respondent. At that time Kitchen stated that he was familiar with Complainant’s wristbands, as Kitchen’s children and those of Complainant’s principals attended the same school, and the Jensen children had been selling Complainant’s wristbands at the school. Kitchen conveyed Respondent’s willingness to supply Complainant with wristbands at a cost of $.39 per band. Complainant protested the price. Response, Annex 2.
On the same day, October 15, 2004, Respondent filed “intent to use” trademark applications with the USPTO for trademarks FREEDOMBANDS, USA FREEDOMBANDS, USA FREEDOM BANDS, and FREEDOM BANDS. Response, Annex 1.
On October 16, 2004, Respondent filed a name reservation in Utah for the name “Freedombands, Inc. Response, Annex 1, Exhibit I.
On October 17, 2004, Respondent’s principal, in an email to Complainant, again offered to sell wristbands to Complainant for $.28 or $.29 per wristband. On quantities of 50,000 or more, Respondent quoted a per band price of $.20. Response, Annex 1, Exhibit H.
On October 20, 2004, Respondent registered “Freedom Bands, Inc.” as a for-profit Utah corporation. Response, Annex 1, Exhibit I.
All of the domain names at issue were registered after October 14, 2004.
Respondent is currently offering “FREEDOMBANDS™” imprinted with the words “Life,” “Liberty,” and “Freedom” for sale on Respondent’s website.
Given Complainant’s open selling activity at events, at least one of which was attended by Respondent, the knowledge of the existence of Complainant’s website, the knowledge of Respondent’s agent of the sales of the wristbands, the media coverage of Complainant and its wristbands, and the meeting with Complainant to discuss the possible supply by Respondent of wristbands, it defies credulity that as of October 14, 2004, Respondent was unaware that Complainant was selling wristbands denominated “freedombands.” Therefore, its subsequent “intent to use” trademark applications, its registration of the domain names at issue, its incorporation of the for-profit Utah corporation denominated “Freedom Bands, Inc.,” its marketing of “FREEDOMBANDS™” imprinted with the words “Life,” “Liberty,” and “Freedom,” and its registration of domain names incorporating the very names present on Complainant’s website and flyers were all done with knowledge of Complainant’s asserted rights in the mark FREEDOMBANDS, and Respondent’s acts were done in bad faith.
Moreover, while Respondent claims that its business is charitable, it was not until after the Complaint was filed that Respondent incorporated the not-for-profit foundation that is allegedly in charge of the sale of its “FREEDOMBANDS™.” A visit to the website of Respondent shows that Respondent is currently selling the wristbands for $1 apiece. While Respondent failed to include the attachment to the email from Respondent’s supplier which set out the prices Respondent was paying for the wristbands (see, Response, Annex 1, Exhibit D), it is conservative to assume from the prices that were quoted to Complainant by Respondent that the price paid by Respondent is no more than $.25 per band. Thus, Respondent would receive $.75 more than its cost on the sale of each band. Since by Respondent’s own admission Respondent had sold 200,000 bands as of the date of the response, Respondent realized substantially more than the $30,000 it has donated to charity. Thus, it is reasonable to conclude that Respondent has used the domain names at issue to attract Internet users to its site for commercial gain by confusing them as to whether Complainant is involved with or the source of the goods offered for sale on the site. This comes directly within paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use.
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 names, <freedombands.net>, <freedombands.org>, <freedombandsusa.com>, <usafreedomband.com>, and <usafreedombands.com> be transferred to the Complainant.
To the extent that Complainant has requested injunctive relief from the Panel, the Panel is without power to award such relief.
M. Scott Donahey
W. Scott Blackmer
Sandra J. Franklin
Dated: March 18, 2005