Bargreen Ellingson, Inc. v.
Claim Number: FA0711001105831
Complainant is Bargreen Ellingson, Inc. (“Complainant”), represented by Sarah
K. Duran, of Davis Wright Tremaine LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bargreen-ellingson.com> and <bargreens.com>, registered with Compana, LLC.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 1, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.
On November 2, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <bargreen-ellingson.com> and <bargreens.com>
domain names are registered with Compana, LLC
and that the Respondent is the current registrant of the names. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On November 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@bargreen-ellingson.com and
postmaster@bargreens.com by e-mail.
A timely Response was received and determined to be complete on December 10, 2007.
On December 13, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On December 15, 2007, Complainant made an
Additional Submission pursuant to The Forum’s Supplemental Rule # 7. The Forum
certified that this submission was timely. On December 22, 2007, Respondent
replied to Complainant’s Additional Submission. The Forum certified that this
submission was timely.
On December 24, 2007, Complainant submitted what
it called a “Complainant’s Response to Respondent’s Additional Submission.” The Panel agrees with The Forum that this
submission is not in compliance with Supplemental Rule 7, which only permits
one Additional Submission or response to Additional Submission per Party.
Furthermore, Complainant has not explained why this submission should be
accepted for any otherwise compelling reason. Accordingly, the Panel has chosen
not to consider this Additional Submission in his decision.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In its Complaint, Complainant contends the following:
-
Complainant
has extensive common law trademark rights arising from its use of the marks
BARGREEN ELLINGSON and BARGREEN, used in conjunction with Complainant’s mail order,
Internet and retail store and distributorship services in the field of
restaurant, kitchen, hospitality, janitorial and bar supplies and equipment;
furnishings, fixtures and décor; design, engineering and project management
services and consulting for restaurants and the hospitality industry in the
field of restaurant equipment and restaurant layout; kitchen and hospitality
equipment testing facilities.
-
Complainant began developing these rights in 1960,
when it began providing services under the mark BARGREEN ELLINGSON. Complainant
has common-law rights in the mark BARGREEN since at least as early as 1996,
when it registered the bargreen.com domain name and started using the
associated website in connection with the services described above.
-
The domain names in dispute are identical and/or
confusingly similar to Complainant’s marks.
-
Respondent has never made any bona fide use of the
domain names, or a legitimate noncommercial or fair use of the domain names.
Respondent uses the disputed domain names to operate websites that display
hyperlinks to third party websites that compete directly, presumably for
Respondent’s own commercial benefit through the earning of click-through fees.
Respondent’s domain names and the content s of the websites are likely to
divert traffic from the official Bargreen Ellingson website. This type of use
does not give Respondent rights or legitimate interest in the domain names at
issue because the use is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i). nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent is
also not commonly known by the names BARGREEN ELLINGSON or BARGREEN. In sum, Respondent has no rights or
legitimate interests in the domain names.
-
Through the improper use of Complainant’s marks,
Respondent is creating confusion as to the source, sponsorship, affiliation or
endorsement of its site with the intent to attract Internet users to its
website. Respondent’s registration of the domain names was in bad faith and the
domain names should be transferred to Complainant.
B. Respondent
In its Response, Respondent contends as follows:
-
Complainant has failed to show rights to any
mark which existed at the time the disputed domain name was registered or that
now exist. Complainant only possesses
one pending trademark application filed with the USPTO on August 2, 2007, a
little over three months before instituting the instant action. Pending
trademark applications confer no rights whatsoever in terms of this element of
the Policy. As of the date of the filing of this Response, the USPTO has yet to
approve the application for publication and may well be rejected due to the
fact that both “bargreen” and “ellingson” are surnames, not entitled to
trademark registration. Absent a federally registered mark, a
Complainant must provide evidence that it has common law trademark rights in
order to prevail under this element of the Policy. Prior panels have
recognized “common law” trademark rights as appropriate for protection under
the Policy only if the complainant can establish that it has done business
using the name in question in a sufficient manner to cause a secondary meaning
identifiable to Complainant’s goods or services. Here there is no supporting
evidence of any kind such as sales figures, revenues, or the like to
demonstrate that the Complainant has established that its purported marks are
anything more than surnames. There is
nothing to indicate that either “bargreen” or “ellingson” or the combination of
the two is in anyway distinctive.
-
The Complaint fails to prove that Respondent has
no rights or legitimate interest in the name.
Respondent has used the disputed domain to provide a web portal which
provides users with a search function as well as ads provided through the
Google Adsense program. Complainants
were free to purchase advertisements through Google had they so chosen. The
links in question are provided pursuant to Google’s terms and are triggered by
search requests entered by computer users.
Respondent has no control over what terms advertisers bid on at Google and
what terms appear on its website. The domain name holder is not responsible for
the potentially offending content where they have contracts with third parties,
such as Google or Yahoo, that control that content. Respondent may fairly use
descriptive or generic terms or acronyms of such as a commercial domain name,
regardless of whether they are federally-registered. Common acronyms and
generic terms are legitimately subject to registration as domain names on a
“first-come, first-served basis.” The fact that advertising revenues may be
generated by Respondent’s activity demonstrates a legitimate interest. In fact,
the principal [SIC] that the mere ownership of a common term domain should, in
and of itself, establish the owner’s rights and legitimate interest has been
recognized by several ICANN panels. Accordingly, Respondent has legitimate
interests in the domain name.
-
Given the previous discussion concerning the
fact that both disputed domain names are surnames to which no one party can
have exclusive rights and that no party can forbid the use of such surnames by
those who duly registered them, there should be no need to even discuss the registration of the disputed domain names as bad
faith cannot exist. Unless a trademark is targeted by a domain, pay-per-click
revenue does “not constitute evidence of bad faith registration or use.” In
this case, the Respondent in
C. Complainant’s Additional Submission
Complainant, in its Additional Submission, argues as follows:
- Complainant’s mark is not primarily merely a surname because the mark consists of two elements (two surnames). When these two elements are taken together, the mark in its entirety is distinctive and therefore entitled to federal registration.
-
Respondent asserts that its use of Complainant’s
mark does not constitute cyber squatting by arguing that panelists have
rejected such claims where the mark consisted of a given name. The cases Respondent relies on are
distinguishable from the present situation because the marks at issue involved
very common names -- “Tammy, “Donna” and “Deanna.” Moreover, panelist have recognized
rights, accepted claims and transferred domain names where the marks and domain
names consisted of names.
-
Because Complainant’s mark is not generic,
descriptive or based on common names, Complainant need not demonstrate
secondary meaning to establish rights in a common law mark.
-
Respondent does not contend that it has any
business interest in the domain names, other than its ability to earn fees
through the Google Adsense program.
Respondent does not claim that it offers any goods or services under the
BARGREEN ELLINGSON or BARGREEN trademarks.
It never explains how it came to use the disputed domain names, much less how the name correlates to any goods and/or
services it may offer. Respondent has
failed to come forward with actual evidence demonstrating that it has
any rights in the domain names at issue.
-
Respondent
further argues that it may “fairly use descriptive or generic terms or acronyms
of such as a commercial domain name, regardless of whether they are
federally-registered” and cites to a long list of cases that involved generic
terms or acronyms. However, Complainant’s
marks are neither generic nor common words or phrases one would find in a
dictionary, but rather are distinctive marks unique to Complainant.
-
Respondent
has not rebutted the evidence of its bad-faith registration and use of the
domain name. Respondent insinuates (but
never really clearly states) that it had no knowledge of Complainant’s
existence or Complainant’s marks.
Respondent never explains how it chose to register essentially identical
marks, and build websites with links to companies that compete with
Complainant, even though the marks BARGREEN ELLINGSON and BARGREEN are not
descriptive of a company that provides hospitality related goods and services
and kitchen remodeling services.
Respondent’s knowledge of Complainant’s existence and its desire to
target Complainant’s marks can be inferred from these facts.
-
Respondent
makes the incredible claim that it had no knowledge of Complainant’s existence,
although a simple Google search of the terms “Bargreen Ellingson” would have
revealed Complainant’s existence within seconds.
D. Respondent’s
Additional Submission.
In its Additional
Submission, Respondent contends the following:
-
Respondent
objects to the filing of Complainant’s Additional Submission. Under Rule 12 of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”),
it is quite clearly stated that “[i]n addition to the complaint and the
response, the Panel may request, in its sole discretion, further statements or
documents from either of the Parties.”
The Forum’s Supplemental Rule 7 allows for the filing of such statements
and documents without a request from the Panel.
Respondent believes that Rule 7 is an improper modification of the
Rules. Clearly the Rules anticipate that
the Supplemental Rules of any Provider are housekeeping in nature and are not
meant to allow substantial modifications of the rights of the parties under the
Policy. WIPO panelists, by way of
example, generally hold to a “one filing rule” as observed by one recent panel. By allowing such unsolicited material, the
Forum allows Complainant to thwart the very streamlined procedure of “one shot
each” envisioned by the Policy.
- Assuming that the Forum has and will accept such an unsolicited filing, Complainant has gone beyond the scope of Rule 7 whose very title is “Submission of other Written Statements and Documents; No Amendment to the Complaint.” A check of Merriam-Webster Online show that the very first listed definition for “statement” is “something stated as a single declaration or remark.”(internal markings omitted). What Complainant has filed instead of “declarations or remarks” is an undisguised attempt to amend its Complaint which violates the Forum’s own Supplemental Rules.
-
Complainant’s Additional Submission contains no
facts or evidence that could not have been filed in the Complaint. Such use of the shorter “five day” response
period under NAF Supplemental Rule 7 is an invitation to abuse the supplemental
rule by “sandbagging” in order to present the complainant’s case in chief as a
“supplement” in order to shorten the effective response period, which is
exactly what has been done here. To allow such an amendment is grossly unfair
to Respondent. Complainant, under no
deadline, has had as much time as it wishes to prepare the Complaint and to
determine when to file and even which Provider to file with. To allow an Additional Submission such as the
one in this case encourages behavior which lets the Complainant make an end-run
around the 10 page limitation imposed upon the Complaint by Supplemental Rule
4(a).
- Complainant misunderstands the import of much of the Response. Respondent’s point is that the disputed domain names consist of common names and that, absent a federally registered mark, Complainant must show common law rights in those names. The Complaint utterly failed to do so. Only now, when its absolute lack of evidence was pointed out, does it now provide an affidavit of the Chief Information Officer which still fails to prove that common law rights exist to what are otherwise common surnames.
-
Complainant makes much of the fact that “Respondent
insinuates (but never really clearly states) that it had no knowledge of
Complainant’s existence or Complainant’s marks.
Respondent never explains how it chose to register essentially identical
marks,” which stands the UDRP on its head.
The burden of proof on this issue under the Policy and Rules rests with
Complainant and, having failed to establish that Respondent in
FINDINGS
In respect of the first domain name, the
Panel found that it is confusingly similar to a mark in which Complainant
developed common law rights. Respondent’s choice of the domain name, and its subsequent use demonstrate that it lacks
rights or legitimate interests in the domain name. Furthermore, the fact that
the corresponding website contains links to products and services competing
with Complainant, and that Respondent most probably is trying to obtain a
commercial benefit, i.e. a share from click-through fees, lead the Panel to
conclude that the domain name was registered and is being used in bad faith,
according to Policy ¶ 4(b)(iv).
In respect of the second domain name,
Complainant failed to establish any of the elements required by the Policy.
This domain name is composed of two generic terms (“bar” and “green” plus an
“s”), and respondent appears to be using it to posting links to websites described by those generic terms.
This does not appear to be illegitimate or a use in bad faith. Accordingly,
relief is denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted 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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue. Consistency of The
Forum’s Rule # 7 with the Rules.
In its Additional Submission, Respondent made a general objection to
The Forum’s Supplemental Rule 7. Respondent argues that Supplemental Rule 7 is an improper modification of the
Rules, considering that Rule 12 states that “[i]n addition to the complaint and
the response, the Panel may request, in its sole discretion, further statements
or documents from either of the Parties.”
According
to the Merriam-Webster OnLine dictionary (third listed definition), the specific meaning of “consistency” is the “ability to be asserted together without contradiction.” In order to
determine whether The Forum’s Supplemental Rule 7 is inconsistent with the
Policy or the Rules, or, in Respondent’s words, “an improper modification of
the Rules,” the following facts should be considered:
-
Rule 10 gives the Panel ample powers. In
particular, the Panel shall conduct the administrative proceeding in such
manner, as it considers appropriate in accordance with the Policy and these
Rules. It shall ensure that the Parties are treated with equality and that each
Party is given a fair opportunity to present its case. Under Rule 10(c), the
Panel shall ensure that the administrative proceeding takes place with due
expedition.
Under
Rule 10(d), the Panel shall determine the admissibility, relevance, materiality
and weight of the evidence. Rule 12 allows the Panel to request in its
sole discretion, in addition to the complaint and the response,
further statements or documents from either of the Parties.
-
As
defined by the Rules, “Supplemental Rules means the rules
adopted by the Provider administering a proceeding to supplement these Rules.
Supplemental Rules shall not be inconsistent with the Policy or these Rules and
shall cover such topics as fees, word and page limits and guidelines, the means
for communicating with the Provider and the Panel, and the form of cover
sheets.” In this Panel’s belief, in principle this wording does not prevent a
provider to issue supplemental rules concerning additional submissions,
considering that “the means of communicating with the Provider and the Panel”
are foreseen.
-
Under the Forum’s Supplemental Rule 7,
additional submissions are voluntary. Additional submissions are not imposed on
either Party; they are simply allowed.
-
A Party wishing to make an (initial)
additional submission must make the submission within 5 days, and pay a fee of
US$ 400. Such additional submission can be responded by the other Party without
having to pay a fee. Thus, the principles of equal treatment and a fair
opportunity to defend one’s case are preserved.
-
Under Supplemental Rule 7(f) additional
submissions for amending the complaint or the response are not allowed.
-
As provided by The Forum’s Supplemental Rule
7, time limits for Additional Submissions and their responses allow a Panel to
issue its decision on the merits within the normal 14-day period of time. Thus,
Supplemental Rule 7 does not jeopardize expediency.
-
In this Panel’s view, The Forum’s
Supplemental Rules 7 curtails none of the Panel’s powers. In particular, the
fact that a Party has chosen to make an Additional Submission under
Supplemental Rule 7(a) or 7(c) does not deprive a Panel of her power to decide
not to consider any additional submission, pursuant to Rule 10(d), or to
request additional submissions or documents from either Party, pursuant to Rule
12. See Elec. Commerce Media, Inc. v.
This
Panel agrees with the Elec. Commerce Media panel that a provider’s
supplemental rule cannot require panels to accept supplemental filings. In this
context, this Panel believes that The Forum’s Supplemental Rule 8 should be
read and construed as including only such additional submissions made under
Supplemental Rule 7 and accepted for consideration by the panel.[1]
For all the above reasons this Panel concludes that The Forum’s
Supplemental Rule 7, is in itself not inconsistent with the Policy or Rules.[2]
A. The <bargreen-ellingson.com> domain name.
For purposes of the Policy, actual use of a mark can confer common law rights in a mark. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and concluding that the Policy “is applicable to unregistered trademarks and service marks”). Complainant has submitted a printout taken from its website <bargreen.com> showing Complainant’s various locations. As some parts of the printout appear to be only printed in part, the Panel under his general powers granted by Rule 10 visited the <bargreen.com> website, and determined that Bargreen Ellingson has store locations in at least Tacoma, WA, Seattle, WA, Everett, WA, Spokane, WA, Yakima, WA, Tri-Cities, WA, Bend, OR, Portland, OR, Missoula, MT, Billings, MT, Honolulu, HI, Boise, ID, Dallas, TX, and Denver, CO. Each of these locations has its own hyper-link to a page showing full address and contact details, as well as a photo of each corresponding building, and exhibiting a quite visible logo with a “BARGREEN ELLINGSON” legend.
In the same visit the Panel determined that a link titled “Online Catalog” provides an extensive list of links to the following items: “Banquet and Catering,” “Bar Supplies,” “Baskets, Trays and Plants,” Beverage Service,” “Case Merchandising,” “China and Dinnerware,” “Cutlery,” “Display Fixtures,” “Displayware,” “Disposables,” “Flatware,” “Foodservice Equipment,” “Furniture and Fixtures,” “Glassware,” “Janitorial and Chemicals,” “Kitchen Supplies,” “Produce and Meat Department,” “Servingware,” “Signage,” “Tabletop Service,” “Warewashing,” and “Terms and Conditions.” Each of these links allows to download a “.pdf” document with the corresponding pages of the catalog, showing the “BARGREEN ELLINGSON” logo at the top of each uneven page.
In its Complaint and website, Complainant states that it maintains an on-hand inventory of over $10,000,000. In a movie clip playable at the website images are shown of a warehouse with numerous stacks containing kitchenware and dishware. In the same video, Mr. Paul Ellingson, Complainant’s President, talks about how Complainant grew from four employees in 1960 to “a size of 105 million and 330 employees” today. Customers and Complainant’s staff also appearing on the video refer to Complainant as “Bargreen Ellingson.”
The Panel believes that this evidence proves, for purposes of the Policy, that Complainant has sufficient common law rights in the BARGREEN ELLINGSON mark for, inter alia, services of supply for the restaurant and bar industry. The Panel also finds that the <bargreen-ellingson.com> domain name, which fully incorporates Complainant’s mark, is identical, or at least confusingly similar, to the mark. The fact that a hyphen appears between “bargreen” and “ellingson” is too slight a difference to distinguish the domain name from the mark. See The Stanley Works v McNeil & Assocs., FA 94671 (Nat. Arb. Forum, Aug. 31, 2002) (“[t]he addition of a hyphen to another’s mark in a domain name does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.”).
B.
The <bargreens.com> domain name.
Complainant
has not submitted with the Complaint – in accordance with Rule 3(ix)(1) - sufficient evidence of use of the BARGREEN term
except as a domain name. In its Response, Respondent objects that as a surname
without distinction, no party has any superior claim to this domain.
Complainant should have anticipated this objection, since it alleges to have
common law rights in the BARGREEN mark, which would have required furnishing
sufficient details of use with the Complaint. Therefore, the Panel does not
admit Complainant’s additional submission in that it is an attempt to prove
what should have been proved in the Complaint. In any case, as shown below, Complainant
also failed to prove the second and third element of the Policy in respect of
the <bargreens.com> domain name.
A. The <bargreen-ellingson.com>
domain name.
Complainant
contends that Respondent has never made any bona fide, or a legitimate
noncommercial or fair use of the disputed domain names,
and that Respondent is not commonly known by either the BARGREEN-ELLINGSON or
the BARGREENS name. It further contends that Respondent uses the disputed
domain names to operate websites that display hyper-links to third-party
websites that compete directly with Complainant, presumably for Respondent’s
own commercial benefit through the earning of click-through fees. Complainant
submits as Exhibits “B” and “D” printouts of Respondent’s <bargreen-elligson.com> website containing,
inter alia, links third-party web sites related to “kitchen remodel” and “food
manufacturing,” “barstools” (<bar-stools-barstools.com>, <morebarstools.com>),
and “bar products” (<barproducts.com>), offering products in competition
with Complainant. Thus, Complainant made a prima facie case that
Respondent lack rights in the disputed domain name, and the burden of
production on the second element of the Policy shifts to Respondent.
For its part, Respondent totally fails to explain why or for what purpose it chose to register the <bargreen-ellingson.com> domain name. It merely states that it has used the domain names to provide a web portal which provide users with a search function as well as ads provided through the Google Adsense program. Respondent cites to the Panel in Admiral Insurance Services Ltd. v. Mr. Adam Dicker, D2005-0241 (WIPO June 4, 2005), stating that the use of a generic domain name to provide information about the genus satisfies Policy ¶ 4 (c)(i). This citation is not well placed. The Panel in Admiral Insurance clearly referred to a generic domain name. Respondent further contends that it has no control over what terms advertisers bid on at Google, and what terms appears on its website. Citing to Admiral Insurance, Respondent adds that panels have recognized that the domain name holder in not responsible for the potentially offending content where there have been contracts with third parties, such as Google or Yahoo, that control that content. Respondent’s citation is also not well placed here, because in Admiral Insurance the disputed domain name was <elephant.com>, that is a completely generic term, and descriptive of elephants in general. As seen above, BARGREEN ELLINGSON is a compound made of two surnames. As such, it is deprived of any generic character, what makes it apt as a mark for supply services provided to the restaurant industry. Therefore, Respondent cannot excuse itself – alleging lack of control on the Google AdSense program - when its website contains links to competitors in the same or related branch of business as Complainant. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Given the uncommon combination of surnames making Complainant’s mark, this Panel believes that Respondent was most likely aware of Complainant’s mark at the time of registration of the disputed domain name, and that it intended to use the attracting mark to divert traffic to its website. Furthermore, Respondent has submitted no convincing evidence of any rights or legitimate interests. In conclusion, as relates the <bargreen-ellingson.com> domain name the Panel finds that Complainant has met the second requirement of the Policy.
As to the <bargreens.com> domain
name, Complainant presents two printouts taken from Respondent’s <bargreens.com> website. Each
shows a list of links none of which appear to be related to Complainant, or to
products or services offered by competitors of Complainant. Exhibit “C” to the
Complaint shows the following “related searches”: “Green Bar,” “Green,” “Hair
color,” “Loreal,” “Highlight,” “Hair Highlight,” “Loreal hair color,” “Hair
color picture,” “Color,” “Bleaching Gel,” and “Hair dye,” that is terms related
to the green color in general or hair color or dye. Exhibit “E” contains the
following searches: “Greens Energy Bar $ 21.53,” “Green Bar,” “Greens Bars at
Amazon.com,” and” Green bars,” none of whom appear to
be related to Complainant or its competitors in any manner. Therefore, because
Respondent is using the generic and “dictionary word” potential of the terms
“green” and “bar,” the Panel finds that Complainant has not proved that
Respondent lacks rights or legitimate interest in the <bargreens.com> domain name.
A. The <bargreen-ellingson.com>
domain name.
As seen in the previous section, above, Respondent uses
the <bargreen-ellingson.com>
domain
names to operate a website that displays hyper-links to third-party websites
that compete directly with Complainant, presumably for Respondent’s own
commercial benefit through the earning of click-through fees. This is evidence
of bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv). See Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
B. The <bargreens.com>
domain name.
There is no evidence that at the time of
registering this domain name, Respondent was aware of any BARGREEN mark of
Complainant. Thus, there can be no question of registration in bad faith in
this case. There is also no evidence that the use of the <bargreens.com> domain name is in bad
faith. The only use, as evidenced by Complainant, seems to be legitimate and
not in bad faith. It consists in posting links to websites relating to the
words “green” and “bars,” in a generic manner, and because of its generic
character only.
Acordingly, as relates this
domain name, Complainant has also failed to prove bad faith registration and
use.
DECISION
In respect of the <bargreen-ellingson.com>
domain name, having established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bargreen-ellingson.com> domain
name be TRANSFERRED from Respondent to Complainant.
As to the <bargreens.com>
domain name, none of the elements required under the Policy was established.
Accordingly, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi, Panelist
Dated: December 27, 2007
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[1] The Forum’s Supplemental Rule 8 reads: “The Complaint, Response, and additional written statements and documents provided in Paragraph 12 of the Rules and Paragraph 7 of the Supplemental Rules constitute the complete records to be considered by the Panel”.
[2] Requiring that supplemental rules be consistent with the Rules
does not equal to imposing uniformity on dispute resolution providers.
While The Forum’s Supplemental Rules specifically and within limits provide for
additional submissions, the Supplemental Rules of the WIPO Arbitration and