Complainant is CPR Savers & First Aid Supply LLC of Scottsdale, Arizona, United States of America, represented by Procopio Cory Hargreaves & Savitch, LLP, United States.
Respondent is John Stevens of Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <cpr-saver.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2009. On November 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2009.
On November 10 and November 12, 2009, the Center received informal email communications from Respondent expressing interest in transferring the domain name to the Complainant. On November 12, 2009, the Complainant advised the Center that it had attempted to contact Respondent to determine if he was willing to transfer the domain name, but no reply had been received from Respondent. Respondent did not submit a substantive response. Accordingly, the Center notified Respondent's default on November 26, 2009.
The Center appointed Ross Carson as the sole panelist in this matter on November 30, 2009. 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
Complainant is the owner of United States Trademark Reg. No. 3208452 for the trademark CPR SAVERS & FIRST AID SUPPLY and design registered on February 13, 2007. The trademark is registered in association with the goods first aid kits showing a date of first use in commerce on March 16, 2003. The trademark is registered on the Principal Register and includes the disclaimer: “No claim is made to the exclusive right to use “CPR” and “FIRST AID SUPPLY” apart from the mark as shown. Complainant is also the owner of United States Trademark Reg. No. 3349191 for the trademark CPR SAVERS TRAINING and design registered on December 4, 2007. The trademark is registered in association with “education services, namely, providing classes and training programs in the field of CPR classes, first aid classes, bloodborne pathogen training, disaster training and OSHA related training classes showing a first date of first use in commerce on September 29, 2006. The trademark is registered on the Principle Register and includes the disclaimer “no claim is made to the exclusive right to use “CPR SAVERS TRAINING” apart from the mark as shown. Both of the registered trademarks feature the term “CPR SAVERS” prominently and in larger type than the descriptive words “& first aid supplies” or “training” which appear below the term “CPR SAVERS”.
Complainant is also the owner of the domain name <cpr-savers.com> registered on February 14, 2003. Complainant operates an active website in association with the domain name <cpr-savers.com> which offers Complainant's complete line of products including the goods covered by its registration for sale online.
Respondent registered the domain name in dispute <cpr-saver.com> on November 11, 2004. Respondent parked the disputed domain name with the Registrar. The parked webpage of February 10, 2009 associated with the domain name in dispute included links to websites of competitors of Complainant offering goods and services competitive with the goods and services associated with Complainant's trademarks (Exhibit “E” to the Complaint). Complainant forwarded a cease and desist letter to Respondent on May 27, 2009. Following a reminder to the cease and desist letter Respondent advised Complainant that he had ceased to use the disputed domain name, unlocked the disputed domain name and made it available for transfer. A number of events intervened and the disputed domain name was not transferred and this proceeding continued.
5. Parties' Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant states that as found in section 4 above it is the owner of several trademark registrations in the United States including the term CPR SAVERS as a prominent element registered in relation to goods and services in the CPR, health and safety and first aid fields.
Complainant submits that Respondent's use of and/or squatting on the domain name <cpr-saver.com> is intended to divert visitors intending to do business with Complainant and if a website is posted or a redirect is put in place consumers may be directed to Respondent's website and this would suggest a relationship with Complainant and its business and Internet website. As a result, consumers and visitors to the <cpr-saver.com> site will likely find themselves confused by the similarity to Complainant's trademarks and Respondent's use in connection with the disputed domain name.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no right, title, or interest in or to Complainant's trademarks. Respondent is neither an assignee nor an authorized licensee of the trademarks. Respondent does not use the domain name in connection with the bona fide offering of any goods or services. Respondent does not appear to have been commonly known by the domain name. Respondent does not make any legitimate noncommercial or fair use of the disputed domain name. The sole purpose of Respondent's use of the disputed domain name is to obtain unfair commercial gain, mislead and divert potential consumers of Complainant and to tarnish Complainant's trademarks.
A.3 Registration in Bad Faith
Complainant states that Respondent's use and registration of the disputed domain name is in bad faith. Complainant registered its domain name <cpr-savers.com> on February 14, 2003. Respondent has no legitimate trademark rights to the CPR SAVER trademark and has no trademarks or service marks (pending or issued) covering the same. Respondent has no trade name rights to CPR SAVER.
A.4 Use in Bad Faith
Complainant submits that Respondent's use of the disputed domain name demonstrates that Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's website, or divert and confuse customers with a blank page, these acts create a likelihood of confusion with Complainant's CPR SAVERS & FIRST AID SUPPLY and CPR SAVERS TRAINING trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website. Respondent does not offer any goods or services under the CPR SAVERS trademark. Respondent has no legitimate business interests in the ongoing use of Complainant's trademark as a mark or domain name or trade name.
Complainant states that it has made an attempt to resolve this dispute, informally, but to no avail. Complainant made numerous attempts to resolve this informally in 2009. Then recently, on May 27, 2009, Complainant notified Respondent, in writing, of his unauthorized use of the disputed domain name and requested Respondent to cease and desist its wrongful conduct. Respondent informed Complainant on June 8, 2009 of his intent to return the domain name but has failed to do so, and has also failed to acknowledge Complainant's written notification on September 9, 2009.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of United States Trademark Reg. No. 3208452 for the trademark CPR SAVERS & FIRST AID SUPPLY and design including CPR SAVERS as a prominent element registered on the Principal Register in the United States on February 13, 2007 in relation to the goods first aid kits. The registration includes a disclaimer to the exclusive right to use “CPR” and “FIRST AID SUPPLY” apart from the trademark as shown. Complainant is also the owner of United States Trademark Reg. No. 3349191 for the trademark CPR SAVERS TRAINING and design registered on December 4, 2007. The registration includes a disclaimer to the exclusive right to use “CPR SAVERS TRAINING” apart from the trademark as shown. Further particulars of both the above noted registrations are provided in paragraph 4 above.
Respondent registered the disputed domain name <cpr-saver.com> on November 11, 2004 more than two years prior to the date of registration of Complainant's above noted registered trademarks. Does the Complainant have UDRP relevant trademark rights in a trademark that was registered after the disputed domain name was registered? This issue was considered in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The consensus view of the Overview was that registration of a domain name before a complainant acquires trademark rights in a domain name does not prevent a finding of identical or confusingly similar. It was noted that the UDRP makes no specific reference to the date on which the owner of the trademark or service mark acquired rights. See, AB Svenska Spel v. AndreyZacharov, D2003-0527. However the Overview states that it can be difficult for a complainant to prove that a respondent registered a domain name in bad faith under paragraph 4 (a)(iii) of the Policy with a future registered trademark in mind.
The domain name in dispute <cpr-saver.com> is comprised of the acronym “CPR” followed by a hyphen, the word “saver” and the TLD “.com”. The distinctive word portion of Complainant's trademark is the combination of the acronym “CPR” with the term “SAVERS”. The addition of a hyphen between the words “cpr” and “saver” in the disputed domain name and deletion of the letter “s” in the word “savers' are insufficient to overcome confusing similarity with Complainant's registered trademark number 3208452, which does not include a disclaimer of the word “SAVERS”.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similar. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See, Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The disputed domain name is confusingly similar to Complainant's registered trademark number 3208452.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark.
There is no evidence that Respondent carried on business under the name “CPR SAVERS” or offered any goods or services in association with the trademark “CPR SERVICES” or any trademark confusingly similar thereto.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven based on the record as set out above and on a balance of probabilities that Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1. Registered in Bad Faith
The onus of proving that Respondent registered the disputed domain name in bad faith is on Complainant. The disputed domain name <cpr-saver.com> was registered on November 11, 2004 more than two years prior to the date of registration of Complainant's trademarks it is relying on in this proceeding. Complainant's United States Reg. No. 3208452 for the trademark CPR SAVERS & FIRST AID SUPPLY and design which displays the term “CPR SAVERS” in larger print discloses a claimed date of first use in commerce in the United States of March 16, 2003, a date which precedes the date of registration of the disputed domain name by more than one and a half years. Other than a statement that Complainant has been using the trademark CPR SAVERS & FIRST AID SUPPLY for seven years, there is no evidence from which the Panel can infer that Respondent whose address is given as Belize City, Belize, knew or should have known of Complainant's use of its trademark in the United States prior to the date of registration of the disputed domain name on November 11, 2004. There is no proof that Complainant's trademark was in use in Belize prior to registration of the disputed domain name.
Jurisdiction under the UDRP recognizes a complainant's common law trademark rights which predate the date of registration of a disputed domain name. Establishing common law trademark rights requires extensive use of a trademark for a long period of time. In Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,
WIPO Case No. D2001-0784, the three member Panel said: “Secondary meaning is the consumers' association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business.” The panel in Universal City Studios, Inc., supra, went on to enumerate a variety of factors which a Panel should consider.
Complainant did not allege common law rights in CPR SAVERS in the Complaint presumably having regard to the length of time and substantial extent of use required to establish common law rights in a trademark.
Complainant registered its' own domain name <cpr-savers.com> on February 14, 2003; the domain name <cprsaver.com> on July 22, 2004 and the domain name <cprsavers.com> on February 14, 2003. Complainant's domain names were registered prior to the registration of the disputed domain name on November 11, 2004. Complainant stated that the web page associated with the domain names advertised Complainant's first aid and health and safety products. Complainant did not file evidence of long and extensive use of the trademark “CPR SAVERS” from which the Panel could find that Complainant had common law rights in the trademark “CPR SAVERS” which should have been known to Respondent prior to the date of registration of the disputed domain name.
Complainant's evidence discloses that in 2009 the disputed domain name was used by the Registrar as a parking page. The web page associated with the disputed domain name included active links to first aid goods and health and safety goods and services offered by competitors of Complainant. This evidence is too late to support a finding of registration of the disputed domain name in bad faith in 2004
The Panel finds that Complainant has not proven trademark rights in its registered trademarks or the trademark “CPR SAVERS” prior to the date of registration of the disputed domain name on November 11, 2004 and finds that Complainant has not proven that the disputed domain name was registered in bad faith.
In the Complaint, Complainant alleges that “Respondent's use of cpr-saver.com domain name and the holding of this domain constitutes the unlawful infringement of Complainant's Mark, and is in violation of the federal anti-cybersquatting proscriptions of the Lanham Act.” Jurisdiction under the UDRP does not include the issues of trademark infringement or the anti-cybersquatting proscriptions of the Lanham Act.
The jurisdiction of the Panel is limited to the three elements set forth in paragraph 4(a) of the Policy. As stated in paragraph 5 of the Policy having the Heading “All Other Disputes and Litigation”: “All other disputes between you and any other party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.”
The Panel's findings are limited to the issues which may be considered under the UDRP.
C.2. Domain Name Used in Bad Faith
Having found that the Complainant has not proven that the domain name in dispute was registered in bad faith the Panel need not decide this issue. The Panel's research disclosed that a person having the same e-mail address “[email protected]” as Respondent in this case was the respondent in Classmates Online, Inc. v. Mary Lamb,
WIPO Case No. D2009-0715. In the Classmates Online, Inc. case, supra, the complainant was the owner of United States trademark registrations registered many years before the respondent registered the disputed domain name in the case. After considering a multitude of factors the panel ordered that the disputed domain name be transferred to the complainant. The respondent in the Classmates Online, Inc. case, supra, appears to be a person located in Kenya who claimed to be a “professional lawyer”. This Classmates Online, Inc. case, supra, may have been relevant under paragraph 4(b)(ii) of the Policy though without more, i.e., evidence that Respondent knew or should have known of Complainant's trademark, in either event, the Panel would have reached the same outcome.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Carson Sole Panelist
Dated: December 14, 2009
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