Fresh Brandz LLC v. Robert Wilcox / eWorldWideWeb, inc.
FORUM Claim Number: FA2401002078165
March 4, 2024
RATIO
Relief was denied to the Complainant in this 3-person panel case on the grounds that it had failed to establish that the Respondent had obtained the domain name <freshkidz.com> in bad faith and that the domain name was being used by the Respondent in bad faith. Further, the domain name was obtained by the Respondent prior to the date of adoption of the trademark on the basis of which the Complainant had bought the complaint, therefore, the Complainant had no grounds for the claim, as the Respondent had legitimate rights and interests in the domain name. In addition, Reverse Domain Name Hijacking (“RDNH”) was found in favour of the Complainant against the Respondent for falsifying the chronology of events that led to the complaint and for suppressing material facts that were important to decide the complaint.
BACKGROUND
Fresh Brandz LLC (“the Complainant”), is a US Company in the business of manufacturing and selling deodorants and associated products to children and teenagers, and was incorporated on September 13, 2018. The Complainant sells its products through the domain name <myfreshkidz.com> as well as several other domain names, which redirect to the website <myfreshkidz.com>. The Complainant owns the trademark FRESH KIDZ , registered with the USPTO on September 19, 2023.
The Complainant further claimed that it was the successor in interest of the UK company Kind2Skin Ltd, and had rights in the latter’s trademark 4787815 for the term FRESH KIDZ which was registered on August 11, 2015. The Complainant claimed that the predecessor in interest had commenced using the trademark FRESH KIDZ in the United States in 2014, and claimed that the trademark had strong brand recognition.
The Complainant claimed that the Disputed Domain Name was identical to the FRESH KIDZ ‘fresh kidz’ Trademark, and that the Respondent had no rights or legitimate interests in the Disputed Domain Name. The Complainant further claimed that the Disputed Domain Name was acquired for the purpose of selling to the Complainant, and has been used in bad faith.
The Respondent is an investor in domain names, and had acquired the domain name <freshkidz.com> (the “Disputed Domain Name”) at an auction on March 18, 2018, some months before the Complainant was incorporated. The Respondent contended that there was no evidence of existence of the predecessor in interest of the Complainant or what, if any the Complainant had acquired from the predecessor. The Respondent further contended that the history of the Disputed Domain Name goes back for many years with several previous owners and multiple uses which have nothing to do with the Complainant. The Respondent produced evidence to show that various other persons use the words "Fresh Kidz" in relation to activities unrelated to the Complainant's area of business. The Respondent was further shown to be the owner of several other trademarks which included the word ‘fresh’, such as thermofresh.com; thermafresh.com; swissfresh.com; grilledfresh.com; and freshncrispy.com. The Respondent also owns the domain name <wonderkidz.com>, which includes the term kidz.
In addition to the above, the Respondent also produced evidence to show that the earlier trademark FRESH KIDZ was cancelled for non-use in February 2022, and the Complainant’s new trademark FRESH KIDZ was applied for registration in August 2022, claiming a first date use of December 31, 2018, all of which were subsequent to the Respondent acquiring the Disputed Domain Name on March 18, 2018. The Complainant’s domain name <myfreshkidz.com> was created on June 1, 2016 and most of Complainant's other "freshkidz" domain names were registered in 2022 or 2023.
The Respondent claimed that the complaint was disingenuous, and that the Complainant was aware of the Disputed Domain Name registered by the Respondent, at the time of purchase of its purported predecessor Kind2Skin LTD, and then the Complainant subsequently proceeded to register several other similar domain names, registered its trademark, and used them as ammunition against the Respondent in the present complaint. The Respondent requested a finding of Reverse Domain Name Hijacking (RDNH).
DECISION
Identical and/or confusingly similar
The Panelist found that the Complainant had established its rights in the trademark FRESH KIDZ. Even though the Complainant had registered its trademark long after the Respondent had acquired the Disputed Domain Name, it would not matter as the first element of the UDRP Policy does not require that the trademark must have been registered prior to the domain name in question. Therefore, the disputed domain name was identical or confusingly similar to the Complainant’s trademark and the first element in a domain dispute matter was satisfied.
Rights or legitimate interests
The Complainant had failed to make out a prima facie case. The Complainant had no applicable rights on the trademark FRESH KIDZ at the time when the Respondent acquired the Disputed Domain Name in the course of its business, and it had also failed to show evidence of whether it had actually acquired the earlier trademark FRESH KIDZ from Kind2Skin Ltd, along with its alleged reputation and goodwill, which would have allowed the Complainant to establish prior rights in its FRESH KIDZ trademark.
The Panel further held as the Respondent was an investor and seller of domain names, the Respondent had legitimate rights and interests in acquiring domain names that consisted of generic English terms such as ‘fresh’ and ‘kidz’.
Registration and Use in Bad Faith
Registering a domain name prior to the existence of the Complainant or its trademark will not normally amount to bad faith, especially where the name in question comprises ordinary English words or their common variants. Considering that the Complainant had failed to establish its relation to the purported predecessor in interest Kind2Skin LTD, or the earlier trademark FRESH KIDZ, its rights in the brand were subsequent to those of the Respondent, and therefore, the Respondent had not acted in bad faith by acquiring the Disputed Domain Name in the course of its business.
Therefore, the Complainant had failed to satisfy the third element in a domain dispute matter as well.
ORDER
Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainant.
REVERSE DOMAIN NAME HIJACKING (“RDNH”)
The 3 Panelists further concluded that the present action was brought by the Complainant in bad faith, as it knew or should have known that it was unlikely to be able to show that the Respondent lacked a legitimate interest or had registered or used the Disputed Domain Name in bad faith. Further, even though the Complainant sought to rely on its purported rights on the trademark FRESH KIDZ, which was registered on August 11, 2015 prior to the Respondent acquiring the domain name, the Complainant had failed to produce evidence of acquisition of such trademark from Kind2Skin LTD, and had also failed to disclose that such trademark’s registration had been cancelled for non-use. Therefore, the Panelists made a finding of RDNH in favour of the Respondent.