ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Gerald Wills, a partner in the California-based Puck Technologies. Puck Technologies produces a device that it sells under the trademark WHIZZINATOR. Complainant has a pending trademark application for the WHIZZINATOR mark. Respondent is Innovative Research Technology and the registrant of the contested domain name, <whizzinator.com>. Respondent produces a competing device sold under the mark URINATOR, and appears to be located in the state of Tennesee.
2. Procedural history
The electronic version of the
Complaint Form was filed on-line through eResolution’s website on April 16,
2001. Some minor changes had to be brought by the Clerk’s Office to the
Complaint Form. The hardcopy of the modified Complaint Form and annexes were
received on May 3. Payment was received on April 16, 2001.
Upon receiving all the required information, eResolution’s clerk proceeded to:
Confirm the identity of the Registrar for the
contested domain name;
Verify the Registrar’s Whois Database and
confirm all the essential contact information for Respondent;
Verify whether the contested domain name
resolved to an active Web page;
- Verify whether the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, D/B/A Internet Names Worldwide, the Whois database contains all the required contact information, the contested domain name resolves to an active Web page and the Complaint is administratively compliant.
The Clerk then
proceeded to send a copy of the Complaint Form and the required cover sheet in
accordance with paragraph 2 (a) of the ICANN’s Rules
for Uniform Domain Name Dispute Resolution Policy.
The Clerk’s Office fulfilled all of its
responsibilities under Paragraph
2(a) in forwarding the Complaint to the Respondent, notifying the
Complainant, the concerned Registrar and ICANN on May 7, 2001.
This date is the official commencement date of the administrative
On June 8, 2001, the parties were notified that Ms. Jessica Litman had been appointed as the panelist in this case and that a decision was to be, save exceptional circumstances, handed down on June 21, 2001.
3. Factual Backgrounds
Both of the
parties market devices designed to enable their customers to evade urine
The devices, intended to be worn under the customers’ clothing, consist
of heated plastic pouches attached to tubes.
Customers are instructed to fill the pouches with reconstituted synthetic
devices allow customers to simulate urination during screening tests, while
delivering the synthetic fluid instead of actual urine.
Respondent introduced its device, the URINATOR, in December of 1998.
Respondent advertises its device in High Times and other
company, Puck Technology, introduced its device, the WHIZZINATOR, in August of
device differs from Respondent’s in that it uses a different heat source and
includes a prosthetic penis intended to fool close observers.
In August of
1999, an ad for Complainant’s WHIZZINATOR appeared in High Times
saw the ad and became concerned that the name WHIZZINATOR infringed its
unregistered trademark URINATOR. Respondent’s Mike Smith spoke with Dennis
Catalano, a partner in Puck Technology, on August 19 and again on August 20 to
protest the WHIZZINATOR name.
Smith also complained that the overall look of the ad was confusingly
similar to Respondent’s URINATOR ads.
Respondent then registered the <whizzinator.com> domain name.
following months, Respondent again telephoned
Puck Technology to complain about its WHIZZINATOR ads and, in October of
1999, wrote a letter demanding that Puck Technology cease and desist
infringement of the URINATOR mark and pay compensation for past infringement.
Respondent also posted a web page at <www.whizzinator.com>.
The website announces that “WHIZZINATOR.COM
HAS GONE OUT OF BUSINESS," because its competitor’s product was superior:
HAS GONE OUT OF BUSINESS !
right - unfortunately Whizzinator.com has bit the dust !
competition unfortunately kicked our ass - or to put it another way, they kicked
us in the big useless
pecker that we had !
However, if you really need a product that will work please click below The Whizz Pack
The Whizz Pack is manufactured by
Respondent, which sells it from the <whizzpack.com> domain. The page
includes a link to <www.whizzpack.com>.
filed an application to register his WHIZZINATOR trademark on October 14, 1999.
That application is still pending. According
to exhibits submitted by Respondent, the U.S. Patent and Trademark Office
approved the mark for publication in the Official Gazette on May 7, 2001, but
has not yet published it for opposition.
4. Parties' Contentions
argues that Respondent registered the <whizzinator.com> doman name in bad
faith after reading his company’s ad and learning of its product, and has used
the domain to divert Complainant’s business to Respondent’s site.
argues that Complainant’s first sales of WHIZZINATOR devices took place in
September of 1999.
Therefore, Respondent insists, Complainant had no trademark rights in
WHIZZINATOR at the time that Respondent registered the <whizzinator.com>
Respondent claims, the WHIZZINATOR mark is not a valid trademark, both because
it is confusingly similar to Respondent’s URINATOR trademark, and because it
will be “found to consist of or comprise of immoral, deceptive or scandalous
matter,” in violation of 15 U.S.C. § 1052.
also claims that, in June of 1999, it considered adopting “Whizzinator” as a
mark for its own product, and was forced to rename that product “Whizz Pack”
when it learned that Complainant “had stolen our name for the new product.”
Therefore, it argues, its registration of the <whizzinator.com>
domain name and its use of it to refer prospective customers to its Whizz Pack
site should be deemed good faith registration and use.
Respondent argues that “[t]here has been long-term animosity between our two
companies since Puck Technology entered the urine-testing marketplace. Puck
Technology used their current website in bad faith by slanderously
misrepresenting our product in a comparison.”
Respondent attaches two ads comparing the Whizzinator to the Urinator.
Both ads claim that the Whizzinator is the superior device because it
includes a prosthetic penis and the Urinator does not.
5. Discussions and Findings
has the burden under section 4 of the UDRP to show that the Respondent's domain
name is identical to or confusingly similar to its trademark, that Respondent
has no rights or legitimate interests in the domain name, and that Respondent
has both registered and used the domain name in bad faith.
A. Similarity of domain name to mark:
has shown that he holds legal trademark rights in WHIZZINATOR.
Although his registration application is still pending, he has used the
mark in connection with sales of his product in commerce since September, 1999.
Under United States law, registration is not a prerequisite for trademark
protection. See Two Pesos v.
Taco Cabana, 505 U.S. 763 (1992).
Complainant has demonstrated
common law trademark rights based on his bona fide use of the mark in commerce.
alleges that complainant does not have a valid trademark because the WHIZZINATOR
mark is unregistrable under 15 U.S.C. § 1052.
This is so, Respondent argues, both because the mark comprises scandalous
matter and because it is confusingly similar to the name of Respondent’s
product. I find this argument to be
does not dispute that the domain name is identical to Complainant’s trademark.
Respondent’s Rights or Legitimate Interests in the Domain Name:
Paragraph 4(c) of the UDRP provides that any of the following factors may demonstrate a registrant’s rights or legitimate interests in its domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
you (as an individual, business, or
other organization) have been commonly
known by the domain name, even if
you have acquired no trademark or
service mark rights; or
you are making a legitimate noncommercial
or fair use of the domain name,
without intent for commercial gain
to misleadingly divert consumers or
to tarnish the trademark or service
mark at issue.
Respondent alleges that it made plans to use Whizzinator as a product name two
months before it became aware of Complainant’s use of the name, it presented
no evidence of its use or
preparations for use. It does not
allege to have been known by the Whizzinator name.
The use it is currently making of the domain name cannot fairly be
characterized as noncommercial or fair; rather the current site seems designed
to misleadingly divert consumers for commercial gain.
therefore find that Complainant has demonstrated that Respondent has no rights
or legitimate interests in the domain name.
Bad Faith Registration and Use:
4(b) of the UDRP provides:
the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner of
the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your 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 your web site or location or of a
product or service on your web site or location.
is no evidence that Respondent registered the domain name primarily for the
purpose of selling it to the complainant.
Although it seems clear on this record that Respondent registered the
domain name in order to prevent complainant from using it to sell its competing
product, there is no showing that Respondent has engaged in a pattern of such
use. Complainant has, however,
demonstrated both that Respondent registered the domain name primarily for the
purpose of disrupting a competitor’s business and that Respondent has used the
domain name in an effort “to attract, for commercial gain, Internet users to
[its] web site… by creating a likelihood of confusion with the complainant's
therefore find that Respondent registered and has used the domain name in bad
I find that
the <whizzinator.com> domain name is identical or confusingly similar to
Complainant’s trademark, that Respondent has no rights or legitimate interests
in respect of the domain name, and that Respondent registered and used the
domain name in bad faith.
I therefore order that the <whizzinator.com> domain name be
transferred to complainant.