Lotus International Ltd. v. Kevat Jatin
Claim Number: FA0204000110852
PARTIES
Complainant is Lotus International Ltd., Highland Park, IL, USA (“Complainant”)
represented by Arul K. Thangasamy. Respondent is Jatin Kevat, Victoria, AUSTRALIA (“Respondent”).
The domain name at issue is <spices.biz>,
registered with Namescout.com.
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.
Judge Irving H. Perluss (Retired) is the
Panelist.
Complainant has standing to file a
Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the
required Intellectual Property (“IP”) Claim Form with the Registry Operator,
NeuLevel. As an IP Claimant,
Complainant timely noted its intent to file a STOP Complaint against Respondent
with the Registry Operator, NeuLevel and with the National Arbitration Forum
(the “Forum”).
Complainant submitted a Complaint to the
Forum electronically on April 25, 2002; the Forum received a hard copy of the
Complaint on May 20, 2002.
On June 18, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 8, 2002 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy
(the “STOP Rules”).
A timely Response was received and
determined to be complete on July 4, 2002.
On July 18, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss
(Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
1. The Complainant has a subsidiary, Lotus
Spices Limited, whose trademark is “SpiceS,” commonly used by the subsidiary in
India. The mark is used for Complainant’s complete range of premium quality,
naturally sterilized, whole and ground, spice ingredients. The domain name <spices.biz> is
identical to the trademark.
2. The Respondent is not the owner or
beneficiary of a trademark identical to the disputed domain name. The Respondent is not at all involved in any
business relating to spices or spice ingredients. Further, to the best of Complainant’s knowledge, the Respondent
is not involved in any business at all that would justify the registration and
use of <spices.biz>.
3. Respondent, before any notice to him of
the dispute, had not used or made demonstrable preparations to use, the domain
name or a name corresponding to the domain name, in connection with a bona fide
offering of goods or services.
4. Respondent (as an individual, business,
or other organization) has not been commonly known by the domain name.
5. Respondent is not involved in any
business relating to spices or spice ingredients. It is the firm belief of the Complainant that the registration of
the disputed domain name was done in bad faith and with the sole intention of
reselling the domain rights.
6. Complainant does not know at the
present time whether Respondent registered the disputed domain name in order to
prevent Complainant from reflecting the mark in a corresponding domain name.
7. Complainant does not know at the
present time whether Respondent registered the disputed domain name primarily
for the purpose of disrupting the business of a competitor.
8. Respondent has not at the present time
by using the disputed domain name intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website or other online
location, by creating a likelihood of confusion with Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of Respondent’s website or
location or of a product or service on Respondent’s website or location.
B. Respondent
1. <Spices.biz> should not be
considered as identical to the mark “SpiceS,” because “spices” is used in a
generic sense. Trademarks are not
usually granted for such purpose since it is unfair to prohibit others from
using the generic word to describe the generic product.
2. Respondent does have a legitimate
interest in the disputed domain name as he plans to set up a spices
business. Before this Complaint was
lodged, he was in discussions with Euro Spice, a dealer of whole and ground
spices in France, and they were working toward forming a partnership.
3. Respondent did not register the disputed
domain name in order to prevent Complainant from reflecting the mark in a
corresponding domain name. He had not
heard of Lotus Spices prior to its
application for the disputed domain name.
4. Respondent did not register the
disputed domain name primarily for the purpose of disrupting the business of a
competitor. This is because Lotus
Spices is located and trading within India and Respondent is in Australia.
5. Respondent has not, by using the
disputed domain name, intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s website or other online location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website or location of
a product or service on Respondent’s website or location.
Paragraph 15(a) of
the STOP 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 STOP Policy
requires that the Complainant must prove each of the following three elements
to obtain an order that a domain name should be transferred:
(1)
the domain
name is identical to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered
or is being used in bad faith.
Due to the common authority of the ICANN
policy governing both the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to
rely on relevant UDRP precedent where applicable.
This matter has been difficult to resolve
because the parties have made meager assertions and denials without substantive
proof. Thus, at the beginning, we do
not know whether Complainant’s alleged trademark “SpiceS” was registered or is
a common law mark or neither, and where it was registered, if at all. Moreover, there was no proof of a second
meaning.
Assuming that the mark was somehow
registered, the term “spices” clearly is generic.
Professor McCarthy in his treatise Trademark and Unfair Competition (4th
ed.; updated 6/2002) states at §12.1, pp. 12-4; 12-5:
The name of a product or service itself –
what it is – is the very antithesis of a mark.
In short, a generic name of a product can never function as a trademark
to indicate origin. The terms ‘generic’
and ‘trademark’ are mutually exclusive.
As noted previously, the function of a mark is to identify and
distinguish the goods or services of one seller from those sold by all others.
* * * * *
An analogy is to the case where a person
is asked ‘Who are you?’ If he answers,
‘I am a human, homo sapiens,’ he is not telling the questioner who he is, but what he is. He has answered
by giving his generic identification – not a name by which he can be identified
and distinguished from all other beings within that genus. So it is with the buyer who unconsciously
asks the product, ‘Who are you?’
The concepts of ‘generic name’ and
‘trademark’ are mutually exclusive. Thus, if, in fact, a given term is
‘generic,’ it can never function as a mark to identify and distinguish the
products of only one seller. (Footnotes
omitted; emphasis in original.)
STOP POLICY ¶4(a)(i)
While the domain name in dispute is
identical to Complainant’s purported mark, as above discussed, Complainant does
not have rights in the mark because of its generic nature. The Panel so finds and concludes, and the
Complaint herein should be dismissed.
STOP POLICY ¶4(a)(ii)
Despite the failure of the Complainant to
prove that it has protectable rights in its purported mark, the Panel must
determine whether Respondent has rights or a legitimate interest in the
disputed domain name.
STOP Policy ¶4(c) functions similarly to
UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or
legitimate interests in a domain name.
Under STOP Policy ¶4(c), the Respondent
may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name;
or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services;
or
iii. The
Respondent as an individual, business, or other organization) has been commonly
known by the domain name, even though it has acquired no trademark or service
mark rights.
Respondent has submitted no evidence
whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the
Panel finds and concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent
contends that he has made demonstrable preparations to use the subject domain
name because he was in discussions with a dealer of spices in France to form a
partnership.
The Panel believes that Respondent has
not made a sufficient showing of “demonstrable preparations to use” before
notice of the dispute so as to comply with ¶4(c)(ii), and it so found and
concluded.
STOP Policy ¶4(a)(iii)
The Panel has concluded that the
registration of the disputed domain name was not in “bad faith” under the
Policy. This is because the term
“spices” is a generic term, and a trademark of such a term, without more (i.e., a secondary meaning) does not
create a legally protectable interest.
Its registration as a domain name by Respondent,
accordingly, was not in bad faith.
DECISION
It is the decision of the Panel, based on
his findings and conclusions, that the Complaint herein shall be and hereby is dismissed. There are no subsequent challenges against
the disputed domain name under the STOP Policy.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: August 15, 2002
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