DECISION

Great Lakes Products, Inc. v. Domain For Sale! and Pay the Most And its yours!

Claim Number: FA0401000227646

PARTIES

Complainant is Great Lakes Products, Inc. (“Complainant”), represented by Julia Spoor Gard, of Barnes & Thornburg, 11 South Meridian Street, Indianapolis, IN 46204.  Respondents are Domain for Sale! and Pay the Most And its yours  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rushpoppers.com>, registered with Gkg.net, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 16, 2004; the Forum received a hard copy of the Complaint on January 21, 2004.

On January 17, 2004, Gkg.net, Inc. confirmed by e-mail to the Forum that the domain name <rushpoppers.com> is registered with Gkg.net, Inc. and that the Respondent is the current registrant of the name.  Gkg.net, Inc. has verified that Respondent is bound by the Gkg.net, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 17, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@rushpoppers.com by e-mail.

No Response was received from Respondent.  A motion for dismissal was filed by an attorney on behalf of Viola International, Inc. which is not a party, although it was the original owner of the domain name in question.  The submission was not timely and was not considered by the Panel to have been filed as a Response on behalf of the Respondent.  Since Viola is not a party, its motion was not considered.

A timely Additional Submission was received from Complainant and was determined to be complete on March 8, 2004.

On March 17, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the worldwide owner of the mark RUSH® for liquid incense products.  Complainant acquired the rights to the mark, RUSH®, as used in connection with its products beginning as early as December 13, 1976.

The mark RUSH® is arbitrary – that is, when used with the goods in issue, the mark RUSH® neither suggests nor describes any ingredient, quality or characteristic of those goods.

Complainant, through its Trademark License Agreement granted a non-exclusive license  to Viola International in July 2001 to use its valuable trademark RUSH® as a part of the domain name <rushpoppers.com>.  The Agreement states that Viola International sold Complainant’s products, including those products associated with the trademark RUSH®, and wished to use the domain name <rushpoppers.com>.  The Agreement provides that at the termination of the Agreement, Viola International is required to assign the domain name <rushpoppers.com> to Complainant. 

On information and belief, Viola International stopped selling Complainant’s products through the domain name <rushpoppers.com> in 2003.  Since Viola International stopped selling Complainant’s products in 2003, the Agreement terminated in July 2003.  Upon termination of the Agreement, Viola International should have assigned the domain name <rushpoppers.com> to Complainant.  Instead, Viola International transferred the domain name <rushpoppers.com> to Respondents, Domain for Sale! and Pay the Most And its yours!. 

Upon contacting Respondents, Complainant learned that one of Respondents’ principal officers or administrators is Bob Kennie, who is also a principal or administrator of Viola International.  Bob Kennie, on behalf of Respondents, has contacted Complainant to sell and transfer <rushpoppers.com> to Complainants.

Upon information and belief, Respondents, Domain for Sale! and Pay the Most And its yours!, are legally-related entities to Viola International.

Respondents’ registration and use of <rushpoppers.com> is unlawful and in bad faith under trademark laws and under the ICANN Uniform Domain Name Dispute Resolution Policy (“the ICANN Policy”).

Respondents’ registration and use of <rushpoppers.com> is unlawful and in bad faith because, upon information and belief, Respondents knew that <rushpoppers.com> was required to be assigned to Complainant upon termination of the Agreement between Complainant and Viola International. 

Respondents also have no rights or legitimate interests in respect of the mark RUSH or the domain name <rushpoppers.com> under Policy ¶ 4(a)(ii).  Upon information and belief, Respondents have no trademark or other intellectual property rights in RUSH or in RUSHPOPPERS.

B. Respondent

No response was filed on behalf of Respondent.

C. Additional Submissions

Complainant

Respondents were properly served with Complainant’s Amended Complaint.

Whether consumers are likely to confuse the goods or services offered for sale by Respondents on <rushpoppers.com> with the goods and services offered by Complainant in association with its mark RUSH® is not dependent upon the class of goods in which RUSH® is registered. 

A review of <rushpoppers.com> reveals that <rushpoppers.com> is a website dedicated to the sale of liquid incense products, the same products Complainant sells in connection with the mark RUSH®.

Complainant is entitled to protection for its mark, RUSH®, from names or marks which are so close to the mark that the public may fail to distinguish them. 

Under the Agreement with Viola International, Viola wished to sell liquid incense products using the domain name RUSHPOPPERS.COM.  Under Indiana law, the Agreement is a valid contract because Complainant’s grant to Viola of the use of RUSH® as a part of the domain name <rushpoppers.com> in exchange for Viola International’s ability to sell Complainant’s products on <rushpoppers.com> (and ability to make money on such sales) constitutes valid consideration. 

FINDINGS

For the reasons set forth below, the Panel finds Complainant has proved that the domain name should be transferred.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the RUSH mark by registering it with the U.S. Patent and Trademark Office (“USPTO”) on January 30, 1979 (Reg. No. 1,112,095).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s RUSH mark because the domain name fully incorporates the mark and merely adds the generic word “poppers.”  The addition of a generic word to a mark is insufficient to distinguish the domain name from the RUSH mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

            Complainant has proved this element.

Rights or Legitimate Interests

Complainant asserts that Bob Kennie, on behalf of Respondent, contacted Complainant to sell and transfer the domain name registration.  Moreover, the WHOIS information indicates that the domain name registration is for sale to the highest bidder.  Respondent’s attempt to sell and dispose of the domain name is evidence that Respondent lacks rights and legitimate interests in the domain name.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

The Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain name.  Moreover, Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant asserts that Respondent uses the domain name to sell products that compete with products sold by Complainant.  The Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark for competitive use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

            Complainant has proved this element.

Registration and Use in Bad Faith

Complainant asserts that Respondent knew of Complainant’s agreement with Viola International and therefore registered the domain name in bad faith.  There was a valid enforceable contract between Complainant and Viola International.  Viola International’s entering into the contract is acknowledgement by Viola and by its assignee of the domain name, Respondent, that it had a right to use the domain name only with the consent of Complainant.  Registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Complainant asserts that Respondent uses a domain name confusingly similar to Complainant’s RUSH mark to sell products that compete with products sold by Complainant.  The Panel finds that Respondent’s competitive use of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).

In addition, Complainant asserts that Respondent’s agent attempted to sell the domain name to Complainant.  Moreover, the WHOIS information indicates that the domain name is for sale to the highest bidder.  Therefore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

Complainant has proved this element.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <rushpoppers.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Karl V. Fink (Ret.), Panelist
Dated: March 30, 2004

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