The UDRP filed against the domain name FreshKidz.com by Fresh Brandz LLC did not have a great outcome for the Complainant.
The domain was registered in 2008 and the stylization of “kids” as “kidz” is not unique to the Complainant’s mark. Other supportive points were presented by the Respondent’s attorney, Jason Schaeffer of ESQwire.com.
A three member panel at the Forum (NAF) ordered the domain FreshKidz.com to remain with the Respondent; they also found the Complainant guilty of engaging in Reverse Domain Name Hijacking:
“In the present case the Panel considers that Complainant knew or should have known that it was unlikely to be able to show Respondent lacked a legitimate interest or had registered or used the Disputed Domain Name in bad faith. In this regard Respondent must have known Respondent’s registration of the Domain Name predated Complainant’s formation (a date which Complainant failed to identify in the Complaint), and predated the claimed first use in commerce date claimed in the FRESH KIDZ Trademark application (again a date which Complainant failed to identify in the Complaint).”
Fresh Brandz LLC v. Robert Wilcox / eWorldWideWeb, inc.
Claim Number: FA2401002078165
PARTIES
Complainant is Fresh Brandz LLC (“Complainant”), represented by Timothy Frailly, Florida, USA. Respondent is Robert Wilcox / eWorldWideWeb, inc. (“Respondent”), represented by Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is freshkidz.com (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC and Sandra J. Franklin as Panelists and Nick J. Gardner as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.
On January 8, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@freshkidz.com. Also on January 11, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 5, 2024.
On February 13, 2024 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed The Honorable Neil Anthony Brown KC and Sandra J. Franklin as Panelists and Nick J. Gardner as Chair.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant says that it manufactures and sells a range of deodorants and other cosmetic products aimed at children and teenagers. It does so via its principal website which is linked to the domain name myfreshkidz.com. It also identifies a large number of other domain names it uses which redirect to that website, most of which contain the term “freshkidz”. It says it is the owner of US trademark no 7168575 for the term “fresh kidz” which was registered on September 19, 2023 (the “FRESH KIDZ Trademark”).
Complainant says it is the successor in interest to a United Kingdom company called Kind2Skin Ltd including in relation to its rights in US trademark no 4787815 for the term FRESH KIDZ which was registered on August 11, 2015 (the “Earlier FRESH KIDZ trademark”). It says its predecessor commenced using the term FRESH KIDZ in commerce in the United States in 2014 and says this means “the brand has a degree of recognition”. It says that “the Complainant’s trademark has a strong reputation and is widely known”. It also says that “Fresh Brandz currently operates in _ countries [sic]”
Complainant says that the Disputed Domain Name is identical to the FRESH KIDZ Trademark.
Complainant says that the Respondent has no rights or legitimate interests in the Domain Name. It says the Respondent acquired the Domain Name four years after the Complainant’s predecessor in interest had commenced business.
Complainant says the Domain Name was registered in bad faith because it was acquired for the purpose of selling it to the Complainant and has been used in bad faith as it has been offered for sale at a price of $6882.
B. Respondent
Respondent says it is an investor in domain names. It says it acquired the Domain Name at auction some eight months before the Complainant came into existence. It bought it because of its inherent attraction as a combination of the ordinary words “fresh” and “kidz” with the latter word being a common misspelling or stylization of the word “kids”. It says there is no evidence at all about the activities of Kind2Skin Ltd or as to what (if anything) the Complainant may have acquired from that company.
Respondent says the history of the Disputed Domain Name dates back many years – possibly to as far back as 2001 with several previous owners and multiple uses which have nothing to do with the Complainant. It also produces evidence to show that various other persons use the words “Fresh Kidz” in relation to activities unrelated to the Complainant’s area of business.
Respondent also adduces evidence that it owns a number of other domain names which include the word “fresh” – for example thermofresh.com; thermafresh.com; swissfresh.com; grilledfresh.com; and freshncrispy.com. It also owns one other domain name which includes the term “kidz” – wonderkidz.com.
Respondent also adduces evidence that the Earlier FRESH KIDZ Trademark was cancelled for non-use in February 2022. It points out that the FRESH KIDZ Trademark was applied for in August 2022 and claims a first use date of December 31, 2018. It says that myfreshkidz.com has a creation date of June 1, 2016 and most of Complainant’s other “freshkidz” domain names were registered in 2022 or 2023
Respondent says that “What likely occurred is Complainant decided to proceed with its purported purchase of the predecessor Kind2Skin LTD, knowing that the Disputed Domain was already registered by a third-party and that Complainant had weak intellectual property rights. Later, Complainant and its counsel embarked on a spree to register new domain names, file for a new trademark and then disingenuously attack the Respondent for having prior ownership of the Disputed Domain”.
Respondent provided a signed declaration from its owner confirming the matters stated in the Response.
Respondent requests a finding of Reverse Domain Name Hijacking.
FINDINGS
1. Complainant is a US company that is in the business of manufacturing and selling deodorants and associated products to children and teenagers. It was incorporated on September 13, 2018.
2. Complainant has established by evidence that it has registered trademark rights in the FRESH KIDZ Trademark. This trademark claims a first use in commerce date of December 31, 2018. Complainant has not produced any evidence to support its claim that the FRESH KIDZ Trademark has a strong reputation and the Panel makes no finding in this regard.
4. Although Complainant claims to be the successor in interest to a UK company called Kind2Skin Ltd which owned the Earlier FRESH KIDZ trademark it has not produced any evidence of any kind substantiating that claim or showing how it acquired any interest in the Earlier FRESH KIDZ Trademark. The Earlier FRESH KIDZ Trademark was cancelled for non-use in February 2022.
5. Respondent is an investor in domain names. It obtained the Domain Name at auction on March 18, 2018. The Panel accepts its evidence that it did so because of the inherent properties of the Domain Name. It has subsequently offered the Domain Name for sale.
6. Given that Respondent’s date of acquisition of the Domain Name predates the Complainant’s incorporation and its claimed date of first use of the term “FRESH KIDZ”, the Respondent cannot have acquired the Domain Name with a view to selling it to the Complainant.
7. There is no evidence to show what (if any) activity Kind2Skin Limited may have carried out prior to the date Respondent acquired the Disputed Domain Name and accordingly the Panel concludes that Complainant has not established that Respondent obtained the Disputed Domain Name with a view to selling it to that company.
8. The Disputed Domain Name is identical or confusingly similar to Complainant’s FRESH KIDZ trademark.
9. Respondent has a legitimate interest in holding the Disputed Domain Name and offering it for sale.
10. Respondent has not registered or used the Disputed Domain Name in bad faith.
11. The Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and pursuant to Rule 15(e) that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
DISCUSSION
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 rights in the FRESH KIDZ Trademark which suffices for the purposes of paragraph 4(a)(i) of the Policy – see Farmlane Brands, LLC v. Helene Isbell Biggane, FA 1996757 (Forum July 12, 2022) “Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy.”
The Disputed Domain Name is clearly identical or confusingly similar to this trademark given that it comprises the character string “freshkidz” whilst the trademark is for the word “FRESH KIDZ” in standard characters without any claim to any particular font size, style or color. The .com suffix is disregarded in making this comparison – see Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Accordingly the only difference between the Disputed Domain Name and the FRESH KIDZ Trademark is the omission of the space between the words “fresh” and “kidz” which the Panel does not consider material, noting that domain names cannot in any event include spaces for technical reasons.
It is the case that Complainant’s FRESH KIDZ trademark was not applied for until August 2022 and was not registered until September 2023. Both these dates are long after Respondent obtained the Disputed Domain Name in March 2018. However this does not matter, as the Policy does not state that the trademark must have been registered prior to the relevant domain name, but that Complainant “has” the trademark, that is to say that it “has” the trademark at the time the Complaint was filed, which it did. This factor is however relevant to the second and third elements (below) -see Empower Media Partners, LLC v. M. Jarrar FA 2030007: “The Complainant has thus satisfied the first part of the formal requirement, as the Policy does not state that the trademark must have been registered prior to the relevant domain name, but that the Complainant “has” the trademark, that is to say that it “has” the trademark at the time the Complaint was filed, which it did…….”.
Rights or Legitimate Interests
When considering this element, it is now well established that the onus is on Complainant to make out a prima facie case that Respondent does not have a right or legitimate interest in the Disputed Domain Name. If it does, the onus is reversed and the obligation is then on Respondent to rebut that prima facie case.
A prima facie case is one where, all things being equal, it can safely be said that the party concerned has made out the constituent elements of its case, raising the probability that its case is valid. The Panel has given careful consideration to all of the submissions and evidence. The Panel finds that Complainant has not made out a prima facie case showing that those constituent elements that it must prove have been established to the extent that they are probably true. In particular Complainant had no applicable rights at the date when Respondent, in the course of its business as a domain name investor, acquired the Disputed Domain Name and the Panel infers that it did so because of the inherent meaning of the words making up the Disputed Domain Name, rather than for any reason relating to Complainant. Insofar as Complainant seeks to overcome this difficulty by claiming to be a successor in interest to the owner of the Earlier FRESH KIDZ trademark, it has entirely failed to show how (If at all) that interest or the trademark in question were transferred into its possession.
The Panel also finds that even if a prima facie case has been made out, it has clearly been rebutted by Respondent for the following reasons. The Panel considers that trading in domain names which comprise ordinary English words (or variants thereof) establishes a legitimate interest, at least if done in a manner which does not seek to target a particular trademark holder. See GXI, LLC v. Hola Domains / Hola Dominios Limitada, FA 1975093 (Forum Jan. 11, 2022) (“Respondent has adequately demonstrated that it is a practicing generic domain name reseller and that its holding and marketing of the domain name, on the facts before us, finds in Policy ¶ 4(c)(i) a safe harbor as a “bona fide offering of goods or services,” which perforce establishes that Respondent has rights to and legitimate interests in the domain name within the compass of Policy ¶ 4(a)(ii).”). It does not matter that if in the course of such trading the domain name holder parks the domain name with a page which contains advertising links. – See Healthy Pets, Inc. d/b/a Pet Health Solutions v. Kwangpyo Kim, FA 1976154 (Forum Jan. 24, 2022) (“Under Policy ¶ 4(c)(i), a respondent in the business of trading common word domain names is permitted to use the domain names in connection with pay-per-click advertising links.”).
Registration and Use in Bad Faith
Registering a domain name prior to the existence of Complainant or its trademark will not normally amount to bad faith, especially where the name in question comprises ordinary English words or common variants thereof – EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC, FA 1722095 (Forum May 25, 2017) (“It is well established that a domain name predating a complainant’s registration and first use of a trademark can be used to evince a good faith registration.”). In the present case the only possible reason for departing from this approach is the activities of Kind2Skin Ltd and/or the existence of the Earlier FRESH KIDZ trademark. However, there is a complete absence of any evidence as to what activities that company carried out or as to how that trademark had been used or was transferred to Complainant. The Panel concludes that it is not bad faith to register and use by offering for sale a domain name which comprises ordinary English words or common variants thereof where there is no evidence of targeting a specific trademark or its owner.
Reverse Domain Name Hijacking
Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). RDNH is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides that “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case the Panel considers that Complainant knew or should have known that it was unlikely to be able to show Respondent lacked a legitimate interest or had registered or used the Disputed Domain Name in bad faith. In this regard Respondent must have known Respondent’s registration of the Domain Name predated Complainant’s formation (a date which Complainant failed to identify in the Complaint), and predated the claimed first use in commerce date claimed in the FRESH KIDZ Trademark application (again a date which Complainant failed to identify in the Complaint). In order to overcome this problem Complainant sought to rely on what it said was its predecessor in interest Kind2Skin Ltd and says it is the assignee of that company’s trademark rights in the Earlier FRESH KIDZ Trademark. In doing so it was vague as to the relevant chronology but it must have been apparent to Complainant and/or its counsel that evidentiary proof of such an assignment was required, but none was provided. Complainant has failed to adduce any evidence at all to support its claim to be the successor in interest to Kind2Skin Ltd or its trademark, and it failed to disclose that trademark had subsequently been cancelled for non-use. Taking all of these factors into account, the Panel finds that Complainant’s actions amount to Reverse Domain Name Hijacking. See Regal Games LLC v. Wolfgang Sauer, FA 1974104 (Forum Dec. 23, 2021) (“The Panel finds that, in view of the circumstances of the case, Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the domain name and that Respondent registered the disputed domain name in bad faith. In view of the foregoing and considering that Complainant’s provision of inaccurate information about the registration date of the domain name might be seen as an attempt to mislead the Panel, the Panel finds that reverse domain name hijacking has occurred in this case.”).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the freshkidz.com domain name REMAIN WITH Respondent.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Honorable Neil Anthony Brown KC and Sandra J. Franklin as Panelists and Nick J. Gardner as Chair.
Dated: March 4, 2024
