eResolution | Decision 0968

The complainant is Toma’s LLC, a corporation located in Oklahoma City, Oklahoma, USA. The respondent is Florida Hi Performance, a corporation located in Orlando, Florida, USA. The domain name in question is fakebake.com. The registrar of the name is identified in the complaint (as verified by the clerk) as Tucows, although the respondent identifies the registrar as Network Solutions.

The electronic version of the Complaint form was filed on-line through eResolution’s Website on August 3, 2001. The hardcopy of the Complaint Form and annexes were received on August 6, 2001. Payment was received on August 6, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

- Verify the Registrar’s Whois Database and confirm all the essential contact information for
Respondent;

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Tucows, Inc., 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.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain a confirmation and a copy of the Registration Agreement on August 3, 2001. The requested information was received August 7, 2001.

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 its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on August 8, 2001. This date is the official commencement date of the administrative proceeding.

Only the emails to the postmaster@fakebake.com and to the administrative contact were returned ‘undeliverable’. All the faxes were successful.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

On August 22, 2001, the Respondent submitted, via eResolution Internet site, its response. The signed version of the response was received on August 20, 2001.

Complainant Toma’s is in the business of selling self-tanning lotions and oils that mimic a suntan. It sells several of those products under the trademark “Fake Bake.” Toma’s makes no allegations as to its date of first use of the trademark, but it does allege that it has a registered trademark in the term “fake bake.” A search of the Patent and Trademark Office files reveals that Toma’s has a registration for “Fake Bake” in international class 3 for “self tanning creams” and related goods. The application asserts a first use in commerce of August 1996, but was filed in December 1996 as an intent-to-use application. The registration issued June 29, 1999.

Respondent Florida Hi Performance (“Florida”) is a small business that sells self-tanning lotions from a variety of manufacturers (including Toma’s) over the Internet. Florida registered the domain name “fakebake.com” on May 11, 1998, before Toma’s trademark registration issued. Florida currently sells Toma’s “Fake Bake” products as well as the products of numerous competitors from its site.

Toma’s sent a cease and desist letter to Florida on May 23, 2000, alleging that Florida was representing itself “as an independent distributor” of Fake Bake without Toma’s consent. It filed this administrative complaint on August 6, 2001.

Toma’s complaint is sparse. Read generously, it alleges (1) that it owns the trademark “Fake Bake”; (2) that “www.fakebake.com is using the Fake Bake TM ® name not only as their web site domain name, but along with selling our Fake Bake products (without our permission), they are using the trademarked name to sell other tanning products”; (3) that consumers are upset by Florida’s business practices, and call Toma’s because they wrongly think Toma’s sponsors the site www.fakebake.com (4) that Toma’s has lost business as a result of Florida’s business practices; (5) that Florida registered the domain name knowing that it was a Toma’s trademark; and (6) that Florida is selling competing products on its site. Many of these allegations are no more than half a sentence in length, and Toma’s submitted no evidence in support of its allegations except its own cease-and-desist letter.

Florida responds in a number of ways. First, Florida points out that Toma’s did not attach its registered trademark, and suggests that it has therefore not proven its case. Florida further argues that Fake Bake is not a well-known common law mark, and supports its claim by attaching affidavits from tanning salons that have never heard of the product. Second, Florida argues that Toma’s has not sustained its burden of proof that Florida had no legitimate interest in the domain name. Florida argues that in fact it does have a legitimate interest in the domain name because it was using the domain name “in connection with a bona fide offering of goods or services” – notably Fake Bake and other tanning products – since May of 1998. It submitted evidence supporting its claim of sales, including invoices, tax returns, and its statement of registration of the fakebake.com domain name on May 11, 1998. Third, Florida argues that Toma’s has not sustained its burden of proof that Florida registered the domain name in bad faith. It further argues that it did not act in bad faith, and submits a notarized affidavit (albeit one not signed under penalty of perjury) of Florida’s founder, David Duncan, averring that he did not register or use the domain name for any improper purpose.

On its face, the domain name fakebake.com is virtually identical to Toma’s mark “Fake Bake”. The only differences stem from the normal requirements of the DNS – the addition of the TLD .com and the elimination of the space between “fake” and “bake”. Florida does not contest the identity of the mark and the domain name. Rather, it argues that because Toma’s did not attach a copy of its trademark registration, it has not proven that it owns the name.[1] Florida’s argument is unavailing. A search of the PTO’s Principal Register reveals that Toma’s is the owner of U.S. registered trademark 2,257,563 for “Fake Bake.” Toma’s filed its application on December 26, 1996, and the mark registered June 29, 1999. The mark has not been abandoned. As a result, I find that Florida’s domain name is virtually identical to Toma’s registered trademark.

Florida’s claim to have a legitimate interest in the domain name fakebake.com stems from its use of the site to sell Toma’s Fake Bake product, among other self-tanning products. Florida correctly observes that it registered the domain name on May 11, 1998, well before it received notice of this dispute on May 23, 2000 – and indeed before Toma’s registration issued or was even published for opposition. Given this, I cannot conclude that Florida registered the domain name knowing it was a Toma’s trademark.[2] Thus, Florida has made out a prima facie case that it was using the domain name in connection with the sale of the “Fake Bake” products before this dispute arose.

Toma’s also argues that “along with selling our Fake Bake products (without our permission), they are using the trademarked name to sell other tanning products” and that customers have actually been confused about the relationship between the parties. Read generously, this may be an allegation that Florida’s sale of Toma’s Fake Bake self-tanning products over its Web site was not a “bona fide” offering of goods and services. Florida appears to be using Toma’s trademarked domain name to sell Toma’s products. The question is whether this is a legitimate use.

A number of prior panel decisions have considered whether a distributor of a trademark owner’s goods who uses the trademark as its domain name has made a bona fide use of the trademark. Unfortunately, the decisions are not in agreement. Compare Kabushiki Kaisha Toshiba v. Distribution Purchasing and Logistics Corp., WIPO D2000-0464 (July 27, 2000); Hydraroll Ltd. v. Morgan Corp., NAF FA2000094108 (April 14, 2000); Mariah Boats, Inc. v. Shoreline Marina, NAF FA4000094392 (May 5, 2000) (all concluding that a distributor has no right to use the trademark of the distributed goods as a domain name) with Freni Brembo S.p.A. v. Webs We Weave, WIPO D2000-1717 (March 19, 2001); K&N Engineering v. Kinnor Servs., WIPO D2000-1077 (January 19, 2001); Weber-Stephen Prods. v. Armitage Hardware, WIPO D2000-0187 (May 11, 2000); Koninklijke Philips Electronics v. Cun Siang Wang, WIPO D2000-1778 (March 15, 2001); Hewlett-Packard Co. v. Napier, NAF FA3000094368 (April 28, 2000) (all concluding that a distributor is entitled to use the trademark of the distributed goods as a domain name). See also Philips, supra (noting three additional decisions on each side of the issue).

It is clear as a matter of trademark law that the purchaser of bona fide goods is entitled to resell those goods, and to truthfully advertise the goods bearing the trademark. Once the goods are sold into commerce, a trademark owner’s rights in those goods are exhausted. See Philips, supra (citing authority).[3] Were it not so, distributors could not advertise their goods, car owners could not advertise their used cars, and so on. Since Toma’s has not alleged that the “Fake Bake” goods sold on Florida’s Web page are counterfeit or altered in any way, Florida is free to truthfully advertise that it is selling those products by using the trademark “Fake Bake.” See generally Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (“When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”).

Here, though, Florida has done somewhat more than truthfully advertise the availability of bona fide “Fake Bake” products on its Web site. By using the domain name “fakebake.com,” Toma’s alleges that Florida has confused consumers into thinking that Toma’s runs or sponsors the Web page. Toma’s is particularly concerned about this because Florida also sells competing products on its page. Whether this exceeds Florida’s rights as a reseller of legitimate goods is a difficult question under trademark law. In Mariah Boats, supra, the panel concluded that because Shoreline sold both Mariah’s boats and other, competing boats, its use of the domain name mariahboats.net was likely to confuse consumers. By contrast, in both Freni Brembo, supra and Weber-Stephens, supra, the panels concluded that such a use was legitimate notwithstanding the fact that the respondent also sold other goods on its site. And in Philips, the panel concluded as follows:

The Panel accepts that it is possible for a trader in branded goods to advertise and sell goods under the brand without using a domain name incorporating the brand name. Nevertheless such a domain name is of considerable assistance to a business selling the branded goods. The Panel considers that a person can have a legitimate interest in using a particular domain name even if it is not an essential requirement for him to do so.

Whether a bona fide reseller of trademarked goods is always entitled to use a domain name incorporating the trademark is an unsettled legal question. It depends in part on the detailed factual circumstances of the case – how the name is being used, what evidence of confusion there is, whether there is an agreement between the parties, and so on. None of that evidence has been presented to me in this case, other than Toma’s allegation (unsupported by evidence) that consumers are being confused. Such a case is not appropriate for resolution under the UDRP, which was designed to deal only with a narrow class of abusive registrations by cybersquatters. The difficult and uncertain allocation of rights in this case should be decided by a court, not by a UDRP panel. Accord Freni-Brembo; Weber-Stephen. Thus, I cannot conclude that Florida’s use here was necessarily illegitimate.

This is clearly not a traditional cybersquatting case. There is no evidence that Florida registered the domain name in order to sell it to Toma’s or anyone else, and David Duncan’s affidavit denies any such intent. There is no evidence that Florida has engaged in a pattern of abusive registrations designed to deny mark owners access to domain names, and David Duncan’s affidavit denies any such conduct. There is no evidence that Florida registered the domain name in order to disrupt Toma’s business, and David Duncan’s affidavit denies any such intent.

Toma’s only allegations of bad faith are that Florida acquired the domain name “while knowing it was a trademark belonging to Toma’s” and that Florida is selling other products in addition to Fake Bake on its site. The first allegation is questionable; as noted above, Florida registered fakebake.com before Toma’s mark was even published for opposition, much less registered. While it is possible that Florida registered the domain name knowing that Toma’s had common law rights in the mark, Toma’s has provided no evidence of any such rights, and Florida has submitted some evidence designed to disprove any such rights. While it is true that Florida is selling products other than “Fake Bake” on its site, and it is possible that that use confuses consumers, Toma’s has not sustained its burden of proof that confusion is likely. Nor has it proven that any such confusion was intentionally caused by Florida. Indeed, Toma’s has submitted no evidence or even any argument that Florida acted intentionally to confuse consumers.

Given Toma’s failure to prove bad faith through intentional efforts to confuse consumers, the absence of any normal indicia of cybersquatting, and Florida’s use of the domain name to sell bona fide “Fake Bake” goods, I find that Toma’s has failed to prove the existence of bad faith in this case.

The domain name fakebake.com shall not be transferred to Toma’s because Toma’s has failed to sustain its burden of proof on the issues of legitimate use and bad faith.

(s) Mark A. Lemley

September 10, 2001

Presiding Panelist

[1] Subsequent to Florida’s response, Toma’s sought to submit an official copy of the trademark registration. Because of my disposition of this issue, it is not necessary to consider that additional submission.

[2] It is possible that Florida was aware of common law rights that Toma’s had in the mark before May 11, 1998. However, Toma’s has offered no evidence of such rights or of Florida’s awareness of them, and therefore cannot sustain its burden of proof on such a claim.

[3] The “gray market” importation of bona fide goods from another country presents a more contentious issue, but there is no evidence of importation here.