WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NSTYL Performance Wear, Inc., d/b/a Salt Room Millenia v. Ashley Lewless, The Salt Room®
Case No. D2013-0533
1. The Parties
The Complainant is NSTYL Performance Wear, Inc., d/b/a Salt Room Millenia of Orlando, Florida, United States of America, represented by Melvin K. Silverman & Associates, United States of America.
The Respondent is Ashley Lewless, The Salt Room® of Orlando, Florida, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <saltroommillenia.com> 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 March 18, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 20, 2013, the Center requested to the parties to keep the Center timely advised of any developments in the court proceedings that, as indicated in the Complaint, appeared to be pending between the parties in the United States, which could be of relevance to the present UDRP dispute.
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 the Respondent of the Complaint, and the proceedings commenced on March 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2013. The Respondent sent an email communication to the Center on April 9, 2013 and the formal Response was filed with the Center on April 11, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on April 25, 2013. 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
The Complainant and the Respondent are competing businesses in Orlando, Florida area providing health and spa services, including salt therapy. The Complainant has done business under the trade name “Salt Room Millenia” since December 2011, and asserts trademark rights in the name. The Respondent registered the disputed domain name <saltroommillenia.com> on April 22, 2011. The disputed domain name resolves to the Respondent’s website at “www.saltroomorlando.com”.
The Respondent is the owner of two trademark registrations for THE SALT ROOM, applied for on April 14, 2011, and registered by the United States Patent and Trademark Office (USPTO) on December 13, 2011 and January 17, 2012. The Respondent claims use of the marks in commerce since February 2010.
The Complainant filed a trademark application to register SALT ROOM MILLENIA on December 12, 2011, but abandoned the application after the USPTO refused registration based on likelihood of confusion with the Respondent’s THE SALT ROOM registrations.1 The Complainant claims use of SALT ROOM MILLENIA as a mark since December 2011.
The Respondent on January 25, 2013 filed a federal court lawsuit in the United States against the Complainant, alleging inter alia trademark infringement, false advertising, unfair competition and dilution under the federal and state law. The Complainant filed before the USPTO on February 15, 2013 a petition seeking cancellation of the Respondent’s trademark registrations, alleging that “salt room” is a generic term for the Respondent’s health and spa services.2
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical to its SALT ROOM MILLENIA mark and name. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, and contends that the Respondent intentionally registered and is using the disputed domain name in bad faith to divert consumers looking for the Complainant to the Respondent’s website. According to the Complainant, an agreement was reached for the Respondent to provide consulting services for construction of a salt therapy facility for the Complainant. The Complainant submits that the Respondent knew SALT ROOM MILLENIA had been selected by the Complainant for use, and that the Respondent agreed to such use. According to the Complainant, its relationship with the Respondent soured when the Respondent thereafter attempted to expand the consulting agreement to include a franchise agreement.
As reflected in the Response and in the Respondent’s lawsuit pleadings incorporated therein by reference, the Respondent asserts prior trademark rights in THE SALT ROOM, which the Respondent maintains the Complainant is infringing through its use of “Salt Room Millenia”. According to the Respondent, the Complainant verbally agreed to consulting services and trademark licensing agreements with the Respondent, and made an initial USD 4,000 royalty payment. The Respondent states that the disputed domain name was registered in anticipation of its licensing to the Complainant pursuant to these agreements. According to the Respondent, however, the Complainant subsequently refused to sign the written agreements, but has continued to use the Respondent’s marks, logos and other designations. The Respondent also has requested that the Panel suspend this administrative proceeding due to its pending lawsuit.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to disputed domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in “Salt Room Millenia”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
Since the Complainant abandoned its application to register SALT ROOM MILLENIA with the USPTO after a final refusal of registration was issued, the Complainant necessarily must rely on common law rights. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
It appears that the Complainant has used “Salt Room Millenia” since at least December 2011 to identify both a trade name and its health and spa services. Assuming this symbol to be distinctive in respect of the Complainant’s services, such use typically would be sufficient to demonstrate trademark rights. The Panel notes, however, that the Complainant in its cancellation petition submitted to the USTPO takes the position that “salt room” is a generic term for salt therapy facilities. If this were the primary meaning of “salt room”, then under United States trademark law “Salt Room Millenia” arguably would be at least partly descriptive of the Complainant’s services, arguably requiring a showing that the term has acquired secondary meaning as an indicator of the Complainant’s services. The Complainant has presented no evidence of secondary meaning. On the other hand, the term does combine the words “Salt Room” with “Millenia”.
In any event, in view of the Panel’s determination below under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to determine whether the Complainant has established trademark rights in “Salt Room Millenia” for purposes of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, provided the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The respondent may establish rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The foregoing circumstances are not meant to be exhaustive of the means through which a respondent’s rights may be demonstrated. In this case, there is evidence that the Respondent has been commonly known as “The Salt Room” and has used THE SALT ROOM as a mark since as early as February 2010. While the Respondent’s federal trademark registrations were not obtained until December 2011 and January 2012, it appears to the Panel that the Complainant most likely was aware of the Respondent’s rights in THE SALT ROOM, if for no other reason than based on the business discussions between the parties. The Respondent claims to have registered the disputed domain name in anticipation of licensing it to the Complainant, and while this licensing issue is now hotly contested, the Complainant’s explanation nonetheless is plausible in the Panel’s opinion.
Regardless, in view of the Panel’s determination below under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to determine the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel also notes, however, that the Policy by its own terms is not applicable to any and all disputes involving domain names. UDRP panels must decide cases based on the limited scope of the Policy, and the jurisdiction of this Panel necessarily is limited to cases of abusive domain name registration in which the registrant is seeking to profit from and exploit the trademark of another, also known as “cybersquatting”. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
After careful consideration of the totality of circumstances in the record in this administrative proceeding, the Panel concludes that the Complainant has not met its burden of demonstrating bad faith registration and use of the disputed domain name. The Panel subscribes to the view that paragraph 4(a)(iii) of the Policy requires proof that the Respondent registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Consequently, the issue of bad faith registration generally is to be determined with reference to the time the Respondent registered the disputed domain name. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
For the reasons discussed under this and the preceding headings, the Panel is not persuaded that the Respondent registering the disputed domain name with bad faith intent to profit from or exploit any prospective trademark rights that might be asserted by the Complainant. As noted above, the Panel finds the Respondent’s explanation of having registered the disputed domain name for licensing purposes plausible. In the Panel’s opinion, it is equally if not more likely based on the record that the Respondent registered the disputed domain name with a view to the Respondent’s existing trademark rights in THE SALT ROOM.
The Panel thus finds that the Complainant has not met the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
William R. Towns
Date: May 13, 2013
1 The Complainant noted the filing of the trademark application, but did not disclose either the abandonment of the application or the USPTO’s final refusal to register the mark. The Panel reviewed the trademark application records, which are publicly available on the USPTO website. The date of abandonment was January 15, 2013. The Complaint in this administrative proceeding was submitted on March 18, 2013.
2 The Complainant disclosed the filing of the cancellation petition in a footnote to the Declaration of Linda Caldwell, provided as an Attachment to the Complaint. The Panel reviewed the cancellation petition, which is a publicly available record on the USTPO, to determine the basis asserted by the Complainant therein.