{ "case_number": "CAC-UDRP-100629", "time_of_filling": "2019-03-05 08:52:30", "domain_names": [ "stickandpoketattooshop.com", "stickandpoketattoo.com", "handpoketattookit.com" ], "case_administrator": "Šárka Glasslová (Case admin)", "complainant": [ "STICK AND POKE LLC" ], "complainant_representative": "Daniel Dimov (Dimov Internet Law Consulting)", "respondent": [ "Hodei Etxezarreta" ], "respondent_representative": "Mr. Javier Maestre (MAESTRE ABOGADOS)", "factual_background": "The Complainant is a United States limited liability company engaged in the business of compiling and selling amateur tattoo kits online. The Complainant's products consist of tattoo ink, sterile needles, stencil paper, wipes, medical gloves and after-care balm. The Complainant markets its products under its STICK AND POKE TATTOO KIT trademark, the details of which are provided above. The Complainant is the registrant of the domain name , registered on February 26, 2013, from which it operates an online retail website selling its tattoo kits. \r\n\r\nThe Respondent is a Spanish individual, who is also engaged in the business of compiling and selling amateur tattoo kits online. The Respondent's products contain essentially the same components as those marketed and sold by the Complainant. The Respondent markets his products under the STICK AND POKE TATTOO (and design) trademark, details of which are also provided above. \r\n\r\nThe disputed domain name was first registered on May 23, 2010, and was purchased by the Respondent in December 2016. The Respondent initially used the disputed domain name in connection with an online store selling his tattoo kits. From early 2018, the Respondent has used the disputed domain name for a blog-style website with various articles and photo editorials about tattooing. The website at \"www.stickandpoketattoo.com\" prominently features banner advertising, which leads Internet users to the website \"www.stickandpoketattooshop.com\", where the Respondent's tattoo kits are offered for sale. \r\n\r\nThe disputed domain name was first registered on October 19, 2016, and was subsequently acquired by the Respondent in January 2018. \r\n\r\nThe disputed domain name was registered by the Respondent on December 8, 2017. It resolves to a website offering the Respondent's tattoo kits for sale. \r\n\r\nIn terms of the chronology of events leading up to the present dispute, drawing upon the assertions of both Parties and the evidence put forward in the Complaint, the Response, the Complainant's unsolicited supplemental filing, and the Respondent's reply to the Complainant's unsolicited supplemental filing, the Panel has been able to discern the following:\r\n\r\nFrom approximately March 2013 onwards, the Complainant has been operating a business selling amateur tattoo kits under the name \"Stick and Poke Tattoo Kits\". \r\n\r\nIn August 2016, the Complainant contacted the owner of the website \"www.littletattoos.co\", having become aware that images from the Complainant's website were being displayed on the website at \"www.litttletattoos.co\" without authorization from the Complainant. The website at \"www.littletattoos.co\" also displayed images of the Respondent's products. At that time, the Respondent appears to have been operating his website via the domain name , which is no longer registered to the Respondent. Subsequent to the Complainant's contact, the owner of the website \"www.littletattoos.co\" attempted to enter into a business relationship with the Complainant. This did not prove successful. \r\n\r\nAs noted above, the Respondent purchased the disputed domain name in December 2016 and has provided evidence of product sales via the website previously appearing at that domain name from December 2016 onwards. \r\n\r\nOn December 20, 2016, the Complainant sent a cease-and-desist letter to the owner of the website \"www.littletattoos.co\", making reference to the disputed domain name and the products offered at the website to which that disputed domain name resolved. In particular, the cease-and-desist letter made reference to the similarities of the products offered via the website \"www.stickandpoketattoo.com\" and those offered by the Complainant. \r\n\r\nOn December 21, 2016, the Respondent applied for the Spanish trademark STICK AND POKE TATTOO (and design). \r\n\r\nThe packaging of the products offered via the Respondent's website at \"www.stickandpoketattoo.com\" was subsequently altered, including a change from brown boxes, resembling the packaging of the Complainant's products, to white boxes. \r\n\r\nOn January 11, 2017, the Complainant filed an application for the United States Trademark STICK AND POKE TATTOO KIT. \r\n\r\nOn May 31, 2017, the Respondent's trademark application was granted. \r\n\r\nOn August 29, 2017, the Complainant's trademark application was granted.\r\n\r\nIn October and early November 2017, the Complainant began making trademark claims via Instagram, Amazon and Shopify regarding the Respondent's products. On November 6, 2017, the Respondent contacted the Complainant regarding the Complainant's trademark claims. \r\n\r\nOn December 8, 2017, the Respondent registered the disputed domain name , and in January 2018, the Respondent purchased the disputed domain name . \r\n\r\nOn January 12, 2018, the Complainant sent a cease-and-desist letter to the Respondent, making specific reference to the disputed domain name and the website \"www.littletattoos.com\", asserting that the Respondent had engaged in trademark infringement, and requested that the Respondent cease and desist further sales or marketing of any product infringing the Complainant's registered STICK AND POKE TATTOO KIT trademark. \r\n\r\nOn May 23, 2018, the Complainant attempted to purchase the Respondent's business for EUR 6,000. On May 28, 2018, the Respondent made a counteroffer of EUR 30,000 for the sale of his business. In subsequent communications, the Respondent declined to disclose certain information about his business when requested by the Complainant, including the business's sales figures. From that point, communications between the Parties broke down, which ultimately led to the present dispute. \r\n", "other_legal_proceedings": "To the best of the Panel's knowledge, there are no other pending legal proceedings between the Parties which relate to the disputed domain names. ", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nIn its Complaint submission, the Complainant contends, in relevant part, as follows: \r\n\r\nThe Complainant submits that the disputed domain names are confusingly similar to a trademark in which it has rights. The Complainant asserts both common law and registered rights in the trademark SITCK AND POKE TATTOO KIT. The Complainant submits that the disputed domain names are confusingly similar to the Complainant's trademark. Specifically, the disputed domain name contains four of the five words making up the Complainant's trademark, simply replacing the final word \"kit\" with the word \"shop\". The disputed domain name reproduces the same four words, simply omitting the word \"kit\". The disputed domain name includes three of the five words making up the Complainant's mark, replacing \"stick and\" with the word \"hand\". The Complainant submits that these variations do not avoid confusion with the Complainant's trademark. The Complainant states that the generic Top-Level Domain (\"gTLD\") \".com\" is a \"generic commonly used extension.\" \r\n\r\nThe Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. It claims that there is no evidence, before any notice of this dispute, of the Respondent using the disputed domain names in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent unlawfully uploaded pictures of the Complainant's products on the website \"www.littletattoos.co\", which were removed after the Complainant sent a copyright notice to the owner of that website. The Complainant claims that advertising banners on the website \"www.littletattoos.co\" displayed the Complainant's trademark, but were used to drive Internet users to the Respondent's websites. The Complainant asserts that the Respondent offered to form a business partnership with the Complainant after he had registered the disputed domain name . When the Complainant refused, the Respondent decided to become a competitor of the Complainant. The Complainant claims that the Respondent registered the disputed domain names with the aim of benefiting from the reputation of the Complainant's trademark, and that the Respondent was aware of the Complainant's website prior to registering the disputed domain names, therefore, the Respondent's use of the disputed domain names is not bona fide. The Complainant further submits that there is no evidence that the Respondent has ever been commonly known by the disputed domain names, or that he has acquired trademark rights. Rather, since registering the disputed domain names the Respondent has benefited from the well-established trademark of the Complainant. The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant adds that although the Respondent owns the Spanish trademark STICK AND POKE TATTOO, the application for it was submitted some three years after the Complainant began using the unregistered trademark \"Stick and Poke Tattoo Kit\". In this regard, the Complainant alleges that the Respondent's trademark application was filed with the aim of frustrating any potential UDRP proceedings. \r\n\r\nThe Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant claims the Respondent was aware of the Complainant and its website prior to registering the disputed domain names, and registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Complainant states that the Respondent registered the disputed domain name in order to gain bargaining power in an attempt to become a business partner of the Complainant, and when this failed, decided to become a competitor of the Complainant. The Complainant asserts that by using the disputed domain names to sell goods which are substantially similar to those sold by the Complainant under the trademark STICK AND POKE TATTOO KIT, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites. The Complainant further argues that the Respondent registered the disputed domain names for the purpose of selling the domain name registrations to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain names, as evidenced by the Respondent's offer to sell his business for EUR 30,000. The Complainant also states that there are false statements on the Respondent's website, which further indicate the Respondent's bad faith. \r\n\r\nRESPONDENT:\r\n\r\nThe Respondent asserts that the phrase \"stick and poke tattoo\" is a generic phrase used since at least the 1970s that describes a method of hand tattooing. Specifically, the Respondent states that \"[a]s a definition 'stick and poke' or 'hand poke' is the same method of tattooing […]. The Tattoo process is the same as using a tattoo machine (gun), but the needle is manipulated by the hand rather than with an electric tattoo gun. Fundamentally, hand poke tattooing uses a sharp point to deposit ink pigment into one's skin to leave a permanent mark. […] Hand poke tattoos are very distinctive in their look, and many styles can be achieved with various techniques. It is often agreed that hand pokes look more natural and organic.\" As such, the alleged trademark STICK AND POKE TATTOO KIT is a generic and common expression in the tattoo and punk communities, the disputed domain names are not identical to the alleged trademark and they are composed of common terms, therefore the Complainant has failed establish the first element of the Policy. \r\n\r\nThe Respondent claims that he is using the disputed domain name in connection with a blog-style website to promote professional tattoo artists who use the \"stick and poke\" technique. As such, the Respondent argues that he is making a legitimate noncommercial or fair use of that disputed domain name. In relation to the disputed domain names and , the Respondent states that these domain names resolve to websites selling kits and tools related to the \"stick and poke\" tattoo method. The Respondent states that he has sold its products since 2016. The Respondent notes that in May 2017, he was granted a trademark for STICK AND POKE TATTOO (and design), at which time there were no registered trademarks including the term \"stick and poke tattoo\". The Respondent states that he develops intense activity in social networks, being active on a wide range of social-media platforms. The Respondent notes that he is located in Spain and operates primarily on the European market. Taking into account his trademark, activity on social media, and his business operations, the Respondent asserts that the relevant public associates the disputed domain names with the Respondent and his tattoo shop. As such, the Respondent submits that he has been and is commonly known by the disputed domain names. The Respondent notes under the second element that the markets in which the Parties operate are distinct, alleging that for customs reasons, the Complainant is unable to ship its items to Spain, therefore the Parties' products cannot conflict with one another. The Respondent also states that the website \"www.littletattoos.co\" has \"no relationship with the Respondent.\" For the foregoing reasons, the Respondent submits that he has rights or legitimate interests in the disputed domain names, and that the Complainant has failed to establish the second element of the Policy. \r\n\r\nThe Respondent asserts that the Complainant never contacted the Respondent. The Respondent states that the first contact between the Parties was on November 6, 2017, when the Respondent sent an email to the Complainant. The Respondent claims at that time, the Complainant engaged in a \"campaign of harassment\" against the Respondent by attempting to shut down the Respondent's accounts on Instagram, Shopify and Etsy. The Respondent states that, on the advice of counsel, he did not reply to the Complainant's cease-and-desist letter of January 12, 2018. The Respondent claims that in November 2018, the Complainant attempted to have the Respondent's websites shut down by making a complaint to the hosting provider, and that the Complainant made a further complaint in relation to the Respondent's Facebook page in December 2018. The Respondent asserts that he never showed any predisposition to sell the disputed domain names prior to the Complainant's expression of interest in purchasing the Respondent's business. The Respondent argues that the Complainant's offers were not genuine, but rather were attempts to build an argument in the current UDRP proceeding. \r\n\r\nThe Respondent claims that he bought the disputed domain name because the term \"stick and poke tattoo\" has been widely used by enthusiasts of that method of tattooing since the 1970s, that the disputed domain name is easy to remember, and that he was able to create matching social media accounts. The Respondent asserts that he did not register the disputed domain names for the purpose of selling them to the Complainant. The Respondent acquired the disputed domain name in December 2016 in order to use it in connection with its descriptive meaning. The Respondent notes that in 2010, the disputed domain name was used in connection with a website selling a \"stick and poke tattoo kit\". The Respondent states that the disputed domain names consist of a common expression, and that they have been used to sell products that correspond to the descriptive meaning of that expression, or to give information about them. The Respondent further states that he has built his business exploiting the fashion trend and general interest in the \"stick and poke\" method of tattooing. He states that he has amassed a large clientele, and that he has a website and social media presence different from that of the Complainant. For the abovementioned reasons, the Respondent submits that he registered and is using the disputed domain names in good faith. \r\n\r\nTHE COMPLAINANT'S UNSOLICITED SUPPLEMENTAL FILING: \r\n\r\nFollowing the submission of the Response, the Complainant submitted an unsolicited supplemental filing to present further evidence of the relationship between the owner of the website \"www.littletattoos.co\" and the Respondent. The Complainant argues that there is a link between the two on the basis of the following: First, the logos displayed on products advertised on the \"www.littletattoos.co\" website closely resemble the logo displayed on the Instagram page connected to the disputed domain name . Second, the registrant of the domain name and the Respondent are both located in the province of Gipuzkoa in the Basque Country, Spain. Third, in June 2017, the website \"www.littletattoos.co\" displayed the Respondent's \"Stick and Poke Tattoo\" logo, as well as the element \"DOTBYDOT\", also used by the Respondent. Fourth, the Respondent applied for his STICK AND POKE TATTOO trademark one day after the Complainant contacted the owner of \"www.littletattoos.co\", which cannot be coincidental. Fifth, the Respondent's packaging was changed from brown to white boxes immediately after the Complainant contacted the owner of the website \"www.littletattoos.co\". The Complainant submits that the Respondent's awareness of the Complainant is further evidenced by the Respondent's copying of parts of an instruction manual created by the Complainant in 2014. Sixth, the Respondent used the code \"LITTLETATTOOS\" to sell his product called the \"Stick and Poke Dot by Dot Tattoo\". \r\n\r\nIn response to the Respondent's claim that the Parties operate in separate markets, the Complainant refers back to evidence of its product sales in Europe. The Complainant reiterates that the Respondent registered his trademark only after being put on notice of the Complainant's unregistered trademark rights. The Complainant argues that in light of the timing of the Respondent's trademark application, its sole purpose was to prevent a UDRP proceeding, and that the Panel should not acknowledge the existence of the Respondent's rights. The Complainant asserts that the Respondent's underlying intent in registering the disputed domain names was to benefit from the goodwill associated with the Complainant's trademarks. \r\n\r\nTHE RESPONDENT'S REPLY TO THE COMPLAINANT'S SUPPLEMENTAL FILING:\r\n\r\nAs a preliminary matter, the Respondent opposes the admission of the Complainant's supplemental filing, noting that the identity of the registrant of the disputed domain names had been made clear to the Complainant prior to the filing of the Complaint, and that the arguments presented could have reasonably been included in the initial Complaint submission. \r\n\r\nWith regard to its relationship with the owner of the website \"www.littletattoos.co\", the Respondent states \"the Respondent does not deny that he knows the person responsible for littletattoos.co. When the Respondent states that littletattoos.co 'has no relationship with the Respondent' he means that he does not own that web domain, has no professional link to that page and that communications which the Complainant received by email from that domain were not from the Respondent.\" The Respondent maintains that the first communication he had with the Complainant was in November 2017. The Respondent asserts that the Complainant has failed to demonstrate that the Respondent is the owner of the website \"www.littletattoos.co\" or the existence of collusion with the aim of harming the Complainant. \r\n\r\nThe Respondent states that he was aware of the Complainant's business at the time he registered the disputed domain names, but registered them for their descriptive value rather than to target the Complainant. \r\n\r\nWith regard to the alleged copying of the Complainant's instruction manual, the Respondent states that \"the steps followed are the same as mentioned in hundreds of other pages as all tattooing guides must necessarily be similar\", and notes that the Complainant itself appears to have copied extracts from other sources. \r\n\r\nIn terms of the markets in which the Parties operate, the Respondent asserts that tattoo ink is a restricted commodity that cannot be imported to the European Union from the United States without a health permit. The Respondent states that he can commercialize his product in Europe without any such issues and that European customers can purchase his products without needing health permits. The Respondent claims that the Complainant is endangering its customers by exporting ink from the United States to Europe, specifically to Spain. \r\n\r\nFinally, the Respondent states that since initiating the present UDRP proceeding, the Complainant wrote to the Respondent's representative stating that it anticipated bringing an action in the Spanish courts, seeking monetary damages from the Respondent. The Respondent argues that the Complainant is not actually interested in the disputed domain names themselves, but rather wants to damage a legitimate business run legally by the Respondent for the last two and a half years. \r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "In light of the finding under paragraph 4(a)(ii) of the Policy, the Panel declines to opine on the third element. ", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nThe Complainant submitted an unsolicited supplemental filing, to which the Respondent has filed a substantive reply, including a request for exclusion of the Complainant's supplemental filing from the record. \r\n\r\nThe Policy and the Rules contemplate the submission of a single complaint and a single response. Further statements may be requested by the Panel pursuant to paragraph 12 of the Rules, but there is no right of reply per se. \r\n\r\nWhile there are matters in the Complainant's supplemental filing that were discoverable at the time of submission of the Complaint, the Panel finds that the Complainant's supplemental filing responds, in part, to matters raised in the Response that were not reasonably available at the time of filing the initial Complaint. Moreover, the Respondent's reply contains specific arguments relating to the assertions and evidence put forward in the Complainant's supplemental filing. \r\n\r\nIn the interests of forming the clearest picture possible of the facts in issue, as well as in the interests of fairness between the Parties, the Panel has determined to admit the Complainant's supplemental filing together with the Respondent's reply into the record. In any event, their exclusion would not have substantially altered the Panel's findings in the present case.\r\n", "decision": "Rejected", "panelists": [ "Jane Seager, Marie-Emmanuelle Haas, Avocat, Douglas M. Isenberg" ], "date_of_panel_decision": "2019-05-31 00:00:00", "informal_english_translation": "The Complainant has provided evidence indicating that it is the owner of the following trademarks: \r\n\r\n-\tUnited States Trademark Registration No. 5275629, STICK AND POKE TATTOO KIT, registered on August 27, 2017; \r\n\r\n-\tEuropean Union Trade Mark Registration No. 1406635, STICK AND POKE TATTOO KIT, registered on May 8, 2018; and \r\n\r\n-\tInternational Registration No. 1406635, STICK AND POKE TATTOO KIT, registered on May 8, 2018. \r\n\r\nThe Respondent has provided evidence indicating that he is the owner of the following trademark: \r\n\r\n-\tSpanish Trademark Registration No. 3644256, STICK AND POKE TATTOO (and design), registered on May 31, 2017.\r\n", "decision_domains": { "STICKANDPOKETATTOOSHOP.COM": "REJECTED", "STICKANDPOKETATTOO.COM": "REJECTED", "HANDPOKETATTOOKIT.COM": "REJECTED" }, "panelist": null, "panellists_text": null }