WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kind, LLC f/k/a Peaceworks Holding LLC and Peaceworks v. Sarah Forman
Case No. D2012-0860
1. The Parties
Complainant is Kind, LLC f/k/a Peaceworks Holding LLC and Peaceworks of New York, New York, United States of America (“U.S.”) represented by McCarter & English, LLP, U.S.
Respondent is Sarah Forman of Hurleyville, New York, U.S., self-represented.
2. The Domain Name and Registrar
The disputed domain name <dothekindthing.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 23, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2012, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on April 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2012.
The Center verified that the Complaint together with the amended 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Response was filed with the Center on May 18, 2012.
The Center appointed Robert A. Badgley as sole panelist in this matter on May 29, 2012. 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.
Complainant submitted an unsolicited “Supplemental Filing” with annexes on June 4, 2012. Complainant submitted yet another unsolicited “Supplemental Filing” with annexes on June 12, 2012. The Panel issued Procedural Order No. 1 dated June 13, 2012 which invited Respondent to submit a response to Complainant’s two supplemental filings. On June 15, 2012, Respondent sent an e-mail to the Center with an annex. In its discretion, the Panel has decided to consider these unsolicited supplemental submissions.
4. Factual Background
On December 20, 2009, Respondent registered the Domain Name.
Since 2003, Complainant has sold healthy snacks under the mark KIND. Complainant’s mark KIND has been registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) since 2005. Complainant sells its goods via the website “www.kindsnacks.com”. Complainant’s snacks are also sold at various retail outlets.
According to a filing submitted to the USPTO on March 19, 2010, Complainant has also used the mark DO THE KIND THING since December 2, 2009 for healthy snacks, and since November 15, 2009 for “charitable foundation services, namely, providing financial support to individuals who commit acts of kindness and promote the betterment of mankind.” The mark DO THE KIND THING was registered on the Principal Register of the USPTO on August 10, 2010.
In supplemental filings submitted to the Center, Complainant presented some additional evidence purporting to show Complainant’s use of the alleged mark DO THE KIND THING as early as November 26, 2008. The evidence submitted was minimal. Moreover, the supplemental evidence from Complainant tends to show that KIND was still the mark being used. Phrases such as “Thank You for Doing the KIND Thing!” appear in the “KIND FEED” at the website. Another entry on the page states: “Do the KIND Thing and do it right!” Not only, according to this evidence, is the dominant word KIND (and only that word) expressed in capital letters, but the term “do the kind thing” itself does not appear to be associated with any good or service. Rather, the “KIND FEED” invites the reader: “Stay tuned for more on Do the KIND Thing, which will kick off again soon. And in the meantime, take a look around and keep sharing your KINDINGS here or on Facebook.”
On June 4, 2012, Complainant filed with the USPTO a new application for the mark DO THE KIND THING alleging a first use in commerce as early as November 26, 2008.
According to Complainant, it has invested “more than ten million U.S. dollars ($10,000,000.00) advertising and promoting DO THE KIND THING and KIND branded healthy snacks and DO THE KIND THING charitable services.” Complainant does not indicate how much of this advertising outlay pertains solely to the DO THE KIND THING mark – as opposed to the older KIND mark. Nor does Complainant indicate how much it had spent in advertising for DO THE KIND THING by the time the Domain Name was registered.
Complainant also alleges that its “DO THE KIND THING and KIND branded goods and services have also received hundreds of thousands of media impressions per year and have received unsolicited media coverage, representative examples of which are attached [to the Complaint] as Annex K.” However, the “representative” examples annexed to the Complaint are articles which post-date Respondent’s registration of the Domain Name. Moreover, the focus of this media coverage is on the KIND mark, not the DO THE KIND THING mark. Complainant’s evidence does not indicate how much media attention the mark DO THE KIND THING – as opposed to the mark KIND – has received, and when it received such attention.
Complainant alleges further that its “DO THE KIND THING and KIND brand health snacks are also advertised and sold throughout the United States and abroad via Complainant’s web site, www.kindsnacks.com.” The web page screen shots annexed to the Complaint in support of this allegation post-date the registration of the Domain name. Moreover, the vast majority of the exhibits appear to demonstrate that Complainant continues to rely chiefly on its main mark, KIND, and not DO THE KIND THING. For instance, the website discusses “Kindaholics,” i.e., enthusiasts of the KIND brand and message. And the website offers KIND snacks and KIND gear and KIND gifts under the rubric “SHOP KIND.” Again, the phrase DO THE KIND THING appears only sporadically on the web pages offered as exhibits by Complainant.
As noted above, on December 20, 2009, Respondent registered the Domain Name. According to Complainant, Respondent registered the Domain Name with knowledge of the DO THE KIND THING mark, and Respondent is acting in bad faith to exploit the goodwill Complainant has developed with that mark. Complainant also claims that Respondent’s use of a domain proxy service illustrates her bad faith because it shows that Respondent was seeking to conceal her identity. Further, Complainant notes that the website to which the Domain Name resolves contains commercial links.
Respondent denies having any knowledge of the mark DO THE KIND THING at the time she registered the Domain Name, and Respondent asserts that she actually checked the trademark registration database to see whether DO THE KIND THING was a registered mark at the time she registered the Domain Name. (It is undisputed that Complainant did not have a trademark registration for DO THE KIND THING as of December 20, 2009.)
Respondent claims that she “started a blog to talk about kind things people do.” The phrase “do the kind thing” was an obvious choice in order to advance that hobby. Respondent explains that the blog project stalled after the initial effort because she “got busy at work and at home.” Respondent also claims that she used a domain proxy service in order to prevent her personal e-mail from being made public and exposing her to spam. She notes that her correct contact information was provided at the website to which the Domain Name resolved, and hence anyone with an interest in the Domain Name could have contacted her that way.
Respondent also denies having derived any commercial gain from any of the advertisements provided at the website. She asserts that the advertisements were placed at the site by the Registrar, which provided free web-hosting services at the site.
5. Parties’ Contentions
For the reasons set forth above and in the “Discussion and Findings” section below, Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.
For the reasons set forth above and in the “Discussion and Findings” section below, Respondent disputes Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service 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.
A. Identical or Confusingly Similar
There is no dispute that Complainant holds rights in the mark DO THE KIND THING, and that the Domain Name is identical to that mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
The Panel will not address this element under the Policy, because the Panel’s ruling (below) that there is no bad faith here renders the “rights or legitimate interests” issue moot.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel cannot conclude on this record that Respondent more likely than not had Complainant’s unregistered trademark in mind when registering the Domain Name on December 20, 2009. Without a finding that the Domain Name was registered in bad faith, the Complaint must fail.
Initially, Complainant argued that Respondent must have been aware of Complainant’s mark when she registered the Domain Name because “the timing of Respondent’s registration of the Domain Name on December 20, 2009, shortly after Complainant publicized the concept and its plans with respect to a marketing and advertising campaign for the trademark DO THE KIND THING during mid-November to mid-December of 2009 are too close to be coincidental.”
Later, in its Supplemental Filings, Complainant asserts that its first use of DO THE KIND THING in commerce occurred in 2008, not 2009. Complainant has even filed a new application, dated June 4, 2012 (well after this proceeding commenced), with the United States Patent and Trademark Office (“USPTO”) alleging a first use of the mark DO THE KIND THING “at least as early as 11/26/2008.”
As noted above, Respondent denies having any knowledge of the mark DO THE KIND THING at the time she registered the Domain Name, and Respondent asserts that she actually checked the trademark registration database to see whether DO THE KIND THING was a registered mark at the time she registered the Domain Name.
Regardless of whether Complainant first made some use in commerce of the mark DO THE KIND THING one year prior to the Domain Name’s registration or just a few weeks before the registration, the record contains no evidence from which to conclude that it is more likely than not that Respondent had actual knowledge of Complainant’s unregistered mark at the time she registered the Domain Name. Attaching a handful of website screenshots to the Complaint which contain the phrase DO THE KIND THING does not indicate how widespread the mark’s use actually was, such that the Panel could draw certain inferences about the notoriety of the unregistered mark as of December 20, 2009.
It bears noting that Complainant’s mark KIND is not confusingly similar to the Domain Name, and Complainant does not assert that it is. One must distinguish between the older, and apparently stronger, mark KIND and the newer, and apparently weaker, mark DO THE KIND THING. Complainant appears to rely chiefly on its main mark, KIND, to establish the likelihood that Respondent was aware if it, but then Complainant tries to shoehorn into its more recent mark DO THE KIND THING the renown that the mark KIND has achieved. The Panel has taken pains to distinguish between the marks and, having done so, finds on this record little or no factual basis to conclude that Respondent was probably aware of the mark DO THE KIND THING when she registered the Domain Name.
The Panel finds Respondent’s story about her motives and conduct just plausible enough to overcome the paltry evidence of bad faith put forth by Complainant. Given the streamlined nature of proceedings under the Policy, and the lack of discovery or hearings with cross-examination, the Panel cannot accept Complainant’s allegations as proven. It is conceivable that Respondent’s version of events might not hold up to scrutiny in a court proceeding where further truth-seeking opportunities are available, but such musing does not render this a clear case of cybersquatting under the Policy.
The Panel is also troubled by Complainant’s repeated allegation to the Center that Respondent has acted in bad faith, in view of Complainant’s e-mail to Respondent on May 24, 2012 (weeks after Complainant initiated this proceeding). In that e-mail, Complainant’s General Counsel stated: “I can only conclude that this all may be a colossal misunderstanding and a waste of time, effort and money.” Despite reaching this conclusion, Complainant pressed ahead with the case and even submitted two additional unsolicited supplemental filings with the Center. If Complainant truly believed that Respondent was acting in bad faith, then there would appear to be little or no scope to conclude that a colossal misunderstanding was afoot. The Panel is also disturbed that Complainant, represented by counsel, provided so much evidence of trademark use after the Domain Name was registered, but provided a mere smattering of such evidence before the Domain Name was registered.
In any event, the Panel finds that Policy paragraph 4(a)(iii) has not been satisfied, and in particular that the Complainant has failed on the record in these policy proceedings to show that the Respondent registered the Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Dated: June 18, 2012