Lotus International Ltd. v. Kevat Jatin
Claim Number: FA0204000110852
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.
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.
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;
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;
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.
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
Dated: August 15, 2002
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