National Arbitration Forum




Bargreen Ellingson, Inc. v. Texas International Property Associates

Claim Number: FA0711001105831



Complainant is Bargreen Ellingson, Inc. (“Complainant”), represented by Sarah K. Duran, of Davis Wright Tremaine LLP, 1201 Third Avenue, Suite 2200, Seattle, WA 98101.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.




The domain names at issue are <> and <>, registered with Compana, LLC.



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.



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 <> and <> 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 and 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.




Complainant requests that the domain names be transferred from Respondent to Complainant.



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 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 Texas had no actual knowledge of Complainant’s business and panels have recognized that mere registration without actual knowledge does not impute a finding of bad faith. Respondent did not register the disputed domain name to sell to Complainant or any other party nor has there been any such allegation by Complainant.


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 Texas had any reason to know of some small company in Washington State, tries to flip the burden and tries to create a duty whereby Respondent has to search Google before registering domain names.  Such a duty exists nowhere under the Policy or the Rules.  This attempt to create a form of “constructive notice” using Google results is a tremendous overreach.  As one prior Panel noted in rejecting a “constructive notice” argument as regards the United State Patent & Trademark Office (“USPTO”), “if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case.  Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith.” Advanced Drivers Education Products and Training, Inc. v. MDNH, Inc (Marchex), FA 567039 (NAF Nov. 10, 2005)[i].  To be clear, Respondent had never heard of Complainant prior to the registration of the disputed domain names.  Respondent registered domains consisting of surnames.  Despite the five-page length of the Additional Submission, there is still no evidence that Respondent registered the disputed domain names in bad faith.




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.



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. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000) (the panel disregarded the additional submissions of both parties, stating: “Although Article 7 of The Forum’s Supplemental Rules purports to permit such supplemental filings, the Rule does not require a Panel to accept those materials. In fact, the Supplemental Rule could not require Panels to accept these supplemental filings because that would violate Uniform Rule 12 of the ICANN Policy, which vests the discretion to request and accept supplemental materials solely with the Panel. No provider’s Supplemental Rules can override the Policy or Uniform Rules and the discretion they vest in the Panels appointed thereunder. Because no new information or arguments were supplied within the supplemental filings, and because the Panel had no questions for the parties to address in supplemental materials, the Panel will not consider either Complainant’s reply or Respondent’s sur-reply.”).

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]


Identical and/or Confusingly Similar


A. The <> 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 <> 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 <> 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 <> 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 <> 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 <> domain name.


Rights or Legitimate Interests


A. The <> 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 <> website containing, inter alia, links third-party web sites related to “kitchen remodel” and “food manufacturing,” “barstools” (<>, <>), and “bar products” (<>), 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 <> 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 <>, 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 <> domain name the Panel finds that Complainant has met the second requirement of the Policy.


As to the <> domain name, Complainant presents two printouts taken from Respondent’s <> 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,” 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 <> domain name.


Registration and Use in Bad Faith


A.     The <> domain name.


As seen in the previous section, above, Respondent uses the <> 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 <> 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 <> 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.




In respect of the <> 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 <> domain name be TRANSFERRED from Respondent to Complainant.


As to the <> 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 Mediation Center are silent on this subject. This led WIPO panels to provide guidance on the matter. A majority of WIPO panels feel they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The minority view is that unless specifically solicited by the panel, a supplemental filing will not be considered in the decision. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, section 4.2., at