EASY-FLO VACUUM SYSTEMS LTD. v.
InfoSiteServer
Claim Number: FA0204000112530
PARTIES
Complainant
is EASY-FLO VACUUM SYSTEMS LTD.,
Chilliwack, BC, CANADA (“Complainant”) represented by Bert Brunia. Respondent is InfoSiteServer, Saipan, NORTHERN MARIANA ISLANDS (“Respondent”).
The
domain name at issue is <potatoes.biz>,
registered with Onlineinc d/b/a China-Channel.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.
Hon.
Roger P. Kerans as 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 27, 2002; the Forum
received a hard copy of the Complaint on May 2, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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 May 28, 2002.
On June 10, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Roger P. Kerans as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
Complainant:
1. Since 1998, it has used the POTATOES
common-law mark in commerce in relation to an Internet based directory and
merchant network located at <POTATOES.NET> and <POTATOES.CA>.
2. It has registered a claim to the mark
POTATOBIZ with the Canadian Intellectual Property Office.
3.
Its
business is to provide product information, directory technology and
advertising services over the Internet.
It says, “Each day consumers utilize our products and services through
the website. Through our advertising and wide use consumers have come to
associate the POTATOES common-law mark with us and we have accumulated
substantial goodwill.”
4.
Respondent
has no legitimate rights or interests in the domain name <POTATOES.BIZ>,
and Respondent registered and is using the <POTATOES.BIZ> domain
name in bad faith.
Respondent:
1.The
Complainant does not have a valid trademark on the name "potatoes".
2. The fact
that the Complainant has registered a "potatoes" domain name in other
gTLD's or ccTLD's does not provide Complainant pre-eminent right to exclude
Respondent from registering and using <potatoes.biz> in the .biz
TLD.
3. "Potatoes" is the plural common
name for the starchy tuber generically known as "potato", which forms
a large part of the North American and European diet. "Potatoes" were not invented by the Complainant, and
have been in widespread use for many hundreds of years.
4. The Canadian trademark application was filed
by Complainant on May 28, 2001, at the height of the first .biz
pre-registration and IP Claims period.
The apparent purpose of the Complainant's trademark application was for
"reverse domain-name hijacking" of the domain name
<potato.biz>. The Complainant did
not yet own the domain name <potato.biz>.
5. In any event, the trademark “potato.biz”
is NOT identical to the domain name which is subject to this STOP claim: <potatoes.biz>. Therefore, the trademark claim should be
moot.
6. Another person, from Korea, registered
<potatobiz.com> two months after the Complainant "trademarked"
the name "Potato Biz".
7. Complainant also asserted trademark rights and
registered for the similar domain names <potatoes.info> and
<potato.info>, in the ".info" TLD during the .info Sunrise
registration period in 2001, and was thereafter challenged by the Afilias
registrar and those two .info domain names were confiscated from this
Complainant by Afilias.
8. Respondent is in the business of providing
Internet websites with industry information similar to Respondent's plan for <potatoes.biz>. In addition to the website Respondent is
creating for <potatoes.biz>, Respondent has also registered
approximately 283 domain names having to do specifically with the Food Products
industry, and is developing industry-guide websites based on domain names such
as <potatoes.biz>, <potatogrowers.biz>,
<potatogrowers.info>, <produce.info>, <producemarket.biz>,
<cabbage.info>, <chicken.biz>, <eggs.biz>,
<wholesale-produce.com> and many others.
1.
The Respondent asserts that I should not accept the fact of registration as
proof of existence of a valid trademark for “potatobiz”. Vaver explains the Canadian law: “Once registered, the right is presumed
valid in all judicial and administrative proceedings - but not indefeasibly so.
Those with a legitimate interest can always challenge validity or title by
applying to the Federal Court to have the right struck off the register, or by
defending an infringement action by pleading invalidity or cross-claiming to
expunge the right. The person challenging validity usually carries the burden
of proof.” David Vaver, Intellectual Property Law (1997 Irwin
Law, Toronto) That burden has not been
met.
2. The Complainant, on the other hand,
fails to persuade me on the material before this Panel that its use of the word
“potatoes” has in fact achieved the distinctiveness essential to the acquisition
of common law rights to exclusive use. I take note that the words “potato” and
“potatoes” are ordinary generic words in common use. As a result they probably are incapable of becoming privately
owned. The Complainants domains called
<potatoes.net> and <potatoes.ca> may be known to some by that name,
but there is no compelling evidence before me that “potatoes” has in fact
acquired a secondary meaning. In other
words, the Complainant has failed to prove a “sufficiently strong
identification of its mark such that there would be recognition among Internet
users that [its] . . . mark . . . identifies goods or services unique to
Complainant.” See Vietnam Venture Group Inc. v
Cosmos Consulting gmbh FA102610
(Nat. Arb. Forum Feb. 6, 2002.) This is
the risk for everyone, including the Respondent, who would use a generic word
to identify a domain.
It may be that the Complainant, even
though it does not have exclusive rights to the name, has some goodwill in the
name from past use that it can protect against somebody who seeks to interfere
with its relationships with its customers.
That is a difficult argument to raise when there is not yet any evidence
of the scope of activity to be carried on under the proposed name, or its
effect. If, in due course, that
occurs, the Complainant has other remedies.
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.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a disputed
domain name is not identical to the mark in which the Complainant asserts
rights.
The
purpose of the Startup Trademark Opposition Policy (STOP) is to afford a ready
solution for those who have established intellectual property rights in the
exact alphanumeric string contained in a proposed new domain name. Unlike cases
under the UDRP rules – and the intellectual property law of most countries – it
is not enough for the purpose of the STOP rules that the two terms are
confusingly similar.
The
Complainant rests its case on two separate legs. One is that it employs the word “potatoes” in an existing
website, the other that it has registered “potatobiz”. As to the first, I have found that the
Complainant has not established facts to warrant a finding of any special
property rights in the word “potatoes” standing alone, without any descriptive
or qualifying accompaniment.
As
to the second, the rule that a Panel may ignore the suffix on the proposed
domain name for comparison purposes does not extend to ignoring the use of a
suffix in the protected name. The
coined word “potatobiz”, unlike the simple word “potato”, is probably capable
of protection.
Assuming
the trademark registration by the Complainant is valid, the issue, then, is this: Is <potatoes.biz>
identical to “potatobiz” for the purpose of this proceeding? Do modest differences, like the addition of
the three characters “es.” matter under the STOP rules?
Some
Panels have ignored added characters.
See Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat. Arb.
Forum Feb. 27, 2002) (finding that
<e-futures.com> and <efutures.com> were both identical to the mark
EFUTURES, although ruling Complainant did not have rights in the mark on
unrelated grounds.) The Panel in Efutures said that “the presence of a
hyphen does not create a mark capable of being distinguished from
EFUTURES”). On the other hand, in Commonwealth Bank v. Rauch, FA 102729
(Nat. Arb. Forum Feb. 23, 2002), the Panel relied on just a single missing
character to deny a STOP order. It
found that the Complainant failed to establish rights in <cominvest.biz>
because its COMMINVEST mark was not identical to “cominvest” or
<cominvest.biz>. I offer this
reconciliation: In the Efutures case,
the variation in no way affected meaning.
In the Commonwealth Bank case, the expression COMMINVEST seems to be in part a contraction of “Commonwealth”, and
the term “cominvest” is not evocative in the same way and may be said to have a
different meaning, however slight. I am
inclined to the view that a variation of characters is irrelevant for
consideration under the STOP rules unless it can fairly be said that the change
will– even slightly - affect meaning.
In the English language, the word “potato” does not have quite the
same meaning as the word “potatoes”, because the first refers only to a single
potato, and more importantly to the idea of a potato, while the second refers
to a group of potatoes. Also, the term “.biz” does not have the same
meaning as the expression “biz” melded to another word.
I therefore conclude that the difference between the claimed
trademark “potatobiz” and the proposed domain name <potatoes.biz>
is not insignificant or meaningless.
The test of “exact
alphanumeric string” therefore has not been met, and the Complaint must be
dismissed.
I emphasize that I am not to deal with
the question of confusing similarity.
This may arise in another proceeding.
And, because of that possibility, I make no comment on any other issue.
DECISION
The claim for transfer is
DENIED.
___________________________________________________
Hon. Roger P. Kerans, Panelist
Dated: June 17, 2002.
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