Sweet Art Company LLC represented by Christopher M. DeBacker of Law Office of Mark Brown, LLC, Kansas was just found guilty of Reverse Domain Name Hijacking on the domain sweetartinc.com which was registered in 1998. Sweet Art got a trademark in 2009.
The one member panel of David E. Sorkin found:
“In this case, it should have been obvious to Complainant that it could not prove that the disputed domain name was registered in bad faith. Even the allegations of bad faith in the Complaint relate only to Respondent’s current use of the domain name, not to its original registration in 1998.”
Here are the highlights
Complainant holds U.S. trademark registrations for SWEET ART, used in connection with food decorating machines and related products. A design-plus-words version of the mark was registered in 1989; the mark consists of a drawing of a chef with the words “Sweet” and “Art.” A words-only version of the SWEET ART mark was registered in 2009. The registrations indicate that the mark was first used in 1987 or 1988.
Complainant contends that the disputed domain name
Complainant states that Respondent, like Complainant, is in the business of food decorating, and that Respondent is advertising its business through a website that uses the disputed domain name. Complainant states that it first learned of Respondent’s website in 2014, after both parties signed up to participate in an industry event. Complainant states further that one of its customers saw Respondent listed as “Sweet Art” on the list of vendors and assumed that it was Complainant rather than Respondent.
Complainant alleges that Respondent’s use of Complainant’s mark with in a domain name is not legitimate because Complainant’s trademark predates Respondent’s domain name registration. Complainant states that Respondent is a locally-focused business located in Indianapolis, Indiana, and that its use of Complainant’s mark beyond that local market is causing confusion with Complainant’s mark and business.
Respondent asks that the Complaint be denied based upon the doctrine of laches because of the unexplained 17-year delay in bringing the Complaint. Respondent alleges that Complainant has known of Respondent’s use of the “Sweet Art” name since even before Respondent’s 1998 registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel finds that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and has failed to prove that the disputed domain name was registered and is being used in bad faith. The Panel further finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Respondent has been operating a business under the “Sweet Art” name for many years, and is commonly known by the name—at the very least locally, which in the Panel’s view is sufficient. It is true, as Complainant argues, that an infringing use generally does not give rise to rights or legitimate interests under the Policy. But the evidence before the Panel indicates that Respondent has been using the “Sweet Art” name for longer than Complainant has, and that Complainant has been aware of Respondent’s concurrent use for many years.
Complainant may well have a legitimate dispute with Respondent concerning Respondent’s longstanding use of “Sweet Art” in its company names, in connection with its products and services, and in its domain name. But the Policy was not intended to resolve disputes of this nature; it was designed to handle only a “relatively narrow class of cases of ‘abusive registrations.
The Panel finds that Complainant has failed to meet its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
The evidence before the Panel does not support either of the circumstances set forth above, nor any of the other bad faith examples that appear in the Policy.
Furthermore, it is quite clear that Respondent registered the disputed domain name in order to use it in connection with its own legitimate business, and was not thereby specifically targeting Respondent or its mark, as the Policy requires for a finding of bad faith.
Under Paragraph 1 of the Rules, “Reverse Domain Name Hijacking” (RDNH) is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate.
In this case, it should have been obvious to Complainant that it could not prove that the disputed domain name was registered in bad faith. Even the allegations of bad faith in the Complaint relate only to Respondent’s current use of the domain name, not to its original registration in 1998.
The history of communications between the parties makes it clear that Complainant was aware of Respondent’s business and its longstanding use of the “Sweet Art” name. The Panel does not consider the Complainant’s claimed change of ownership sufficient to explain its purported lack of knowledge of the history between the parties, especially considering that Complainant has been represented by counsel at all relevant times.
In the Panel’s view, Complainant knew or should have known that it could not prove that the disputed domain name was registered in bad faith, and nevertheless initiated this proceeding in an improper effort to obtain the domain name.
The Panel finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.