Josephschmidt.com

The timeline behind josephschmidt.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Artisan Confections Company v. Swiss Connection, Inc. Claim Number: FA0510000584879 PARTIES Complainant is Artisan Confections Company (“Complainant”), represented by Kathleen S. Herbert, of Setter Ollila LLC, 2060 Broadway Suite 300, Boulder, CO 80302. Respondent is Swiss Connection, Inc. (“Respondent”), 501 First Street, Orlando, FL 32824. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <josephschmidt.com>, registered with Enom, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Carol M. Stoner, Esq. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2005. On October 25, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <josephschmidt.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 23, 2005 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@josephschmidt.com by e-mail. A timely Response was received and determined to be complete on November 23, 2005. Complainant submitted a timely additional submission on November 28, 2005. On November 2, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following assertions: 1. Complainant contends that Respondents’ domain name of <josephschmidt.com> is confusingly similar to Complainant’s registered trademark of JOSEPH SCHMIDT CONFECTIONS, in that omission of non-distinguishing word of “Confection” is irrelevant, and that domain name is identical to Complainant’s common law mark of Joseph Schmidt. 2. Complainant contends that it has established rights in the registered trademark JOSEPH SCHMIDT CONFECTIONS and common law JOSEPH SCHMIDT trademarks through long term, substantially continuous, and exclusive use of the marks in commerce in the U.S. since at least as early as November 1983 in connection with “candy, namely chocolate truffles and assorted chocolates.” Complainant’s U.S. trademark registration for JOSEPH SCHMIDT CONFECTIONS issued on July 18, 1989. 3. Complainant contends that Respondents had no rights nor legitimate interest in respect of the domain name in that they have not used the name in connection with a bona fide offering of goods or services; and that the Respondent has never used the <josephschmidt.com> domain name except to offer it for sale to Complainant and other third parties for consideration in excess of its out-of-pocket expenses, contending that said facts are evidence of bad faith. 4. Complainant contends that Respondent has no legitimate right to use of name, even though Respondent, at one time, was a vendor of Complainant. 5. Complainant further contends that Respondents’ knowing use of Complainant’s registered trademark, constitutes registration and use of the domain name in bad faith. B. Respondent makes the following assertions 1. Respondent contends that it purchased products from Joseph Schmidt Confections from September 3, 1991 until January 26, 1998 and that the companies had a business relationship. Respondent acknowledges Complainant’s rights to the trademarked Joseph Schmidt Confections; however, it claims, that as a distributor of Complainant, that it had registered the domain name in good faith. 2. Respondent contends that said domain name was a common name and that registration of the domain name was to promote Complainant’s products. 3. Respondent further contends that registration of the disputed domain name was done with the consent of Complainant at a time when both parties were in a business relationship and that said registration was not commenced in bad faith. C. Additional Submissions Pursuant to the declaration of Jeffery Smith and other evidence Complainant contends that the level of orders and commitments made by Complainant did not rise to the distributorship level, nor did it create a business relationship with ongoing expectations. A more committed relationship was contemplated in 1996, but did not come to fruition, due to termination of the entire business relationship because of ongoing business problems. FINDINGS Complainant has established that the domain name <josephschmidt.com>, which was registered by Respondent, is confusingly similar to the registered trademark of Complainant; that Respondent has no rights nor legitimate interests in the domain name; and that the domain name had been registered and was being used in bad faith. As such, the Panel finds that the relief requested by Complainant shall be granted; that is, the domain name <josephschmidt.com> shall be transferred to Complainant. 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.” Respondent registered the disputed domain name on June 26, 1996, before the creation of the Policy. The Panel finds that Respondent is still bound by UDRP. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“By virtue of its contract with NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future.”). 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 asserts that the disputed domain name is identical or confusingly similar to Complainant’s registered and common law marks. Respondent states in its response that, “The Respondent acknowledges the Complainant’s rights to the Joseph Schmidt Confections trademark” and does not dispute that the names are identical or confusingly similar. The Panel rules that the <josephschmidt.com> domain name is confusingly similar to Complainant’s JOSEPH SCHMIDT CONFECTIONS mark because the only difference is the omission of the word “confections,” which does not significantly distinguish the domain name from the mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the Complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”). Rights or Legitimate Interests Complainant offers its U.S. trademark registration for the JOSEPH SCHMIDT CONFECTIONS mark to assert rights in the mark. The Panel finds that Complainant has established rights in the JOSEPH SCHMIDT CONFECTIONS mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). The Panel was not persuaded by Respondent’s arguments that the fact of their “business relationship” and joint marketing efforts should empower it to the use of a domain name identical or confusingly similar to the registered and common law trademarks of another. This proffered argument is unlike a situation in which a distributor has a nationwide exclusive license to promote a manufacturer’s products and a concomitant argument that use of the domain name is part and parcel of the agreement. The facts at hand do not support this argument. Namely, Complainant states that it has, at any one time, 1000-2000 vendors like Respondent. Thus, the Panel finds that a distributorship relationship would not empower Respondent to appropriate Complainant’s mark in a domain name registration. See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (“Respondent, merely a distributor of PUR brand products, has no authorization to use the PUR mark for any trademark purpose, such as the use in the domain name.”); Carlon Meter Co. v. Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important distributor of Complainant's products, but its’ right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the domain names in a manner which links them to Respondent's web site.”). The Panel further finds that there is nothing in the record, including the WHOIS registration information, which indicates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the Respondent does not have rights in a domain name when the Respondent is not known by the mark). Registration and Use in Bad Faith Respondent has posted an invitation for an offer to sell the domain name registration. The Panel finds that appropriating Complainant’s mark to invite offers to sell the domain name registration is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); 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”). Additionally, Complainant alleges that Respondent offered to sell the domain name to Complainant for greater than $5,000. The Panel finds that this offer is in excess of out-of-pocket costs and, therefore, is evidence of 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) ("What 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."); Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the Respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). The Panel also finds that Respondent’s former status as Complainant’s distributor implies that Respondent has specifically targeted Complainant by abusing the domain name registration process. See Associated Materials, Inc v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD mark, inferred from the fact that the respondent was a distributor of the complainant, along with the Respondent being on notice of its own lack of rights evidenced that the domain name was registered in bad faith); Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that the Respondent, through the use of the Complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the Complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name). 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 <josephschmidt.com> domain name be TRANSFERRED from Respondent to Complainant. Carol M. Stoner, Esq., Panelist Dated: December 19, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.