WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIC Corporation v. DVLPMNT Marketing, Inc.
Case No. D2016-0557
1. The Parties
The Complainant is BIC Corporation of Clearwater, Florida, United States of America, represented by Taft, Stettinius & Hollister, LLP, United States of America.
The Respondent is DVLPMNT Marketing, Inc. of Charlestown, Saint Kitts and Nevis.
2. The Domain Names and Registrar
The disputed domain names <bottlekoozies.com> and <koozie.com> are registered with DNC Holdings, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 23, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 2, 2016. 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 May 5, 2016, the Panel issued Procedural Order No. 1 to the Parties. In such Order, the Panel noted the terms of the Complainant's contention regarding the original KOOZIE trademark registration and the fact that this trademark registration had been cancelled. The Panel indicated that it wished to receive further information as to the link between that cancelled registration and the Complainant's asserted marks, in particular relating to the period between such cancellation and the filing of the Complainant's asserted marks commencing in 2004. The Complainant was invited to provide any comment or submission in response to Procedural Order No. 1 no later than May 10, 2016. The Respondent was invited to provide any comment or submission no later than May 16, 2016 and the decision due date was extended to May 25, 2016.
The Complainant filed a response to Procedural Order No. 1 on May 10, 2016. The Respondent did not provide any comment or submission.
4. Factual Background
The Complainant is the owner of a family of trademarks consisting of or comprising the word KOOZIE, which the Complainant notes is a coined term referring originally to insulated beverage containers and now used by the Complainant in respect of a wider range of products including custom imprinting. The earliest extant KOOZIE trademark owned by the Complainant is United States of America ("USA") registered trademark no. 3240989 for the word mark KOOZIE filed on February 3, 2004 and registered on May 15, 2007 in respect of international class 21, claiming a first use in commerce of April, 1979.
The original registered trademark for the KOOZIE word mark was USA registered trademark no. 1143428, filed on April 26, 1979 and registered on December 16, 1980. This mark was originally owned by Concept Enterprises, Inc., later known as Radio Cap Corporation, which the Complainant says was acquired by Norwood Promotional Products, Inc. in 1989 and which in turn was acquired by the Complainant through a series of transactions thereafter. That particular trademark registration was cancelled due to a failure to renew in December 2001 although the Complainant states that it and its predecessors have continually sold insulated beverage containers under the KOOZIE trademark over the entire period from 1979 to date.
The disputed domain name <koozie.com> was created on April 14, 2001. The disputed domain name <bottlekoozies.com> was created on June 28, 2005. The websites of the disputed domain names each contain a series of pay-per-click ("PPC") links incorporating the Complainant's mark and/or referring to related goods and services, for example "Neoprene Koozies", "Can Koozies", "Personalized Drink Koozies", "Whole Sale Printing" and "Personalized Gifts".
The Complainant cites multiple cases under the UDRP in which the Respondent was the registrant of domain names found to have been registered in bad faith and in which the appointed panel ordered transfer of the domain names concerned. These include Loris Azzaro B.V. v. "Domain Administrator" DVLPMNT MARKETING, INC., WIPO Case No. D2014-0098; Chloé S.A.S. v. DVLPMNT MARKETING, INC., WIPO Case No. D2014-0039; Stuart Weitzman IP, LLC v. DVLPMNT Marketing, INC., WIPO Case No. D2014-1858; FirstMerit Corporation v. DVLPMNT MARKETING, INC., WIPO Case No. D2014-1995; Coach, Inc. v. DVLPMNT MARKETING, INC., WIPO Case No. D2014-0784; and bioMérieux v. Dvlpmnt Marketing, Inc., WIPO Case No. D2014-1795. In each of these cases, the Respondent had used the concerned domain names for PPC links targeted to the corresponding complainant's trademarks and relative goods and services.
5. Parties' Contentions
The Complainant contends that each of the disputed domain names is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant notes that it has extensively used the KOOZIE trademarks and promoted them at considerable expense. It adds that it has defended the trademarks extensively and has been successful in opposing nearly one hundred USA federal trademark applications using, incorporating or phonetically similar to the KOOZIE mark.
The Complainant submits that both of the disputed domain names incorporate the Complainant's KOOZIE trademark. The Complainant notes that <bottlekoozies.com> adds the letter "s" at the end of the second level, denoting a plural form, together with the generic term "bottle" at the beginning. The Complainant notes that "bottle" is also a word describing an item used for advertising and marketing the Complainant's KOOZIE trademarked goods.
The Complainant asserts that as its KOOZIE mark is a coined term, it is inconceivable that the Respondent could make any fair use of such mark without creating confusion and a false impression of association. The Complainant adds that the Respondent is using such mark in connection with third-party links in connection with the same goods and services for which the Complainant's mark is registered and is providing links to websites that sell products in direct competition to the Complainant's goods and services. The Complainant asserts that the Respondent is neither commonly known by the disputed domain names nor is using them in connection with a bona fide offering of goods or services. The Complainant submits that given the commercial use to which the disputed domain names have been put the Respondent cannot claim that it has made legitimate noncommercial or fair use of them.
The Complainant notes that the claimed first use of its KOOZIE mark is 1979 and that this is years in advance of the creation dates of the disputed domain names. The Complainant refers to the Respondent's history of registering domain names that include the trademarks of well-known brands, indicating that this is a pattern of bad faith registration and use and that such pattern includes the disputed domain names. The Complainant adds that the Respondent has registered and used the disputed domain names in violation of paragraph 4(b)(iv) of the Policy by creating an impression that it is somehow affiliated, sponsored or licensed by the Complainant. The Complainant also contends that bad faith may be inferred because the Respondent is profiting from a diversionary use of the Complainant's mark in domain names that resolve to commercial websites where the Respondent fails to respond with a plausible good faith reason for using the mark.
In response to Procedural Order No. 1, the Complainant sets out the history of the KOOZIE trademark in greater detail. The Complainant notes that in 1989 its predecessor in interest acquired the owner of the original KOOZIE registered trademark and that ownership transitioned in due course to the Complainant.
The Complainant notes that its predecessor failed to update and renew its original KOOZIE trademark registration in 2001 and that this expired. It explains that such predecessor then filed a new application for the KOOZIE mark in 2004 claiming the original first use in commerce date of 1979 because all of the Complainant's predecessors in interest had continuously sold insulated beverage containers under the KOOZIE trademark since 1979.
The Respondent did not reply to the Complainant's contentions in the Complaint, nor did it comment on the Complainant's response to Procedural Order No. 1.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has made out this element in respect of each of the disputed domain names.
In the case of <koozie.com>, the second level of the disputed domain name is alphanumerically identical to the Complainant's registered trademark. In the case of <bottlekoozies.com> the Panel is satisfied that the addition of the generic word "bottle" to a plural form of the Complainant's KOOZIE mark in the second level of the disputed domain name does not serve to distinguish the mark from the disputed domain name or to dispel the confusing similarity which results from the incorporation of such mark in its entirety. The generic Top-Level Domain (gTLD) ".com" in each of the disputed domain names is required for technical reasons and is generally disregarded for the purposes of comparison.
In all of these circumstances, the Panel finds that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
"Any 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 your 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".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established such a prima facie case in respect of each of the disputed domain names, based upon the Complainant's contentions that the term KOOZIE is a coined term, that the Respondent is not commonly known by such term, nor is it using this term in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain names incorporating the Complainant's KOOZIE mark in connection with PPC links targeted to the type of goods and services produced by the Complainant and such use cannot in the Panel's opinion confer any rights or legitimate interests upon the Respondent.
The Respondent has chosen not to reply to the Complainant's contentions and has therefore failed to rebut the prima facie case made by the Complainant. There is nothing in the present use of the disputed domain names which indicates to the Panel that the Respondent might have rights or legitimate interests therein.
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you 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".
The Complainant's case on this topic focuses on the PPC use of the disputed domain names which is targeted to the goods and services for which the Complainant's KOOZIE mark is registered. The Complainant alleges that this use violates paragraph 4(b)(iv) of the Policy. The Complainant also argues that the disputed domain names are part of a pattern of domain name registrations by the Respondent which target well-known trademarks, many others of which have led to past findings of registration and use in bad faith under the Policy, entitling the Panel to infer bad faith in the present case.
There is a potential issue with the Complainant's case arising from the history of the Complainant's trademark registrations and the dates on which the disputed domain names were created. The disputed domain name <koozie.com> was created on April 14, 2001. At that time, the original trademark in the name of the Complainant's predecessor in interest was still in force such that bad faith registration would be evident at that time. However, in December 2001 that trademark was cancelled due to the Complainant's predecessor failing to renew it. The disputed domain name <bottlekoozies.com> was created on June 28, 2005. At that time, the Complainant's original trademark registration had been cancelled and its registered trademark no. 3240989 was under application but had not yet proceeded to grant.
The Respondent might have argued that any rights that the Complainant's predecessors may have held in the KOOZIE mark at the time when the disputed domain name <koozie.com> was created – at least as far as registered rights are concerned – temporarily ceased to exist. Equally, the Respondent might have suggested that there could be no registration in bad faith in respect of the disputed domain name <bottlekoozies.com> as the Complainant's predecessor held no registered rights in the KOOZIE mark when that disputed domain name was created (it arguably did have unregistered rights still in force however). The Respondent has however made no such arguments, despite having had an opportunity both to answer the Complaint and to comment on the Complainant's response to Procedural Order No. 1.
In any event, the Panel does not consider that these potential lines of argument would have had any merit, had they been put forward. While there may be an apparent break in the Complainant's registered rights between 2001 and 2007, the Complainant has made the uncontradicted assertion that the KOOZIE mark has been in extensive and continuous use prior to and over the entire period of existence of the disputed domain names, in connection with the sale of insulated beverage containers by the Complainant and its predecessors. Although the Complainant has not provided any direct evidence in support of this assertion, in the Panel's view, there is just enough support to be gleaned from the Complainant's trademark application filed in February 2004 which claims the same first use in commerce date of April 1979 as that of the Complainant's predecessor's original trademark registration, rather than citing any more recent date.
Accordingly, notwithstanding the apparent break in the Complainant's registered rights, the Panel finds on the balance of probabilities that the Complainant and its predecessors in interest did have rights in the KOOZIE mark (whether registered, or at common law), both at the time when each of the disputed domain names were created (which in both cases is well after 1979) and thereafter over the entire period in which they have been in existence. In other words, nothing in the record suggests that the Respondent's motivation would have been any different for registering <bottlekoozies.com> in light of its prior registration of <koozie.com>. On its own, this finding does not necessarily lead to a conclusion that the disputed domain names must have been registered and used in bad faith. It merely confirms that there was the potential for the Complainant's rights to have been targeted by the Respondent at the point of creation and during its subsequent use of each of the disputed domain names. It is necessary for the Panel to have regard to the surrounding facts and circumstances of this case, and in particular the manner of the Respondent's use of the disputed domain names, in order to reach a concluded view on this topic.
It is clear to the Panel that the Respondent has used both of the disputed domain names to publish PPC links which are targeting the Complainant's rights in the KOOZIE trademark. Many of the links reference competing products to those produced by the Complainant. In the Panel's opinion this points strongly in the direction of bad faith registration and use. This impression is strengthened further when the pattern of the Respondent's other domain name registrations as set out by the Complainant are added to the picture, particularly where a significant number of these were held to have been registered and used in bad faith in previous cases under the Policy and in similar circumstances to those of the present case. The Panel also takes into consideration the Complainant's uncontradicted assertion that KOOZIE is a coined term dating back to 1979. In the absence of any evidence to the contrary, therefore, KOOZIE must only refer to the Complainant's family of marks and associated products and the Panel finds on the balance of probabilities that the Respondent had this in mind when each of the disputed domain names were created.
In all of these circumstances, the Panel finds that both of the disputed domain names have been registered and used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bottlekoozies.com and <koozie.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: May 26, 2016