EASY-FLO VACUUM SYSTEMS LTD. v. InfoSiteServer
Claim Number: FA0204000112530
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.
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.
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.
The claim for transfer is DENIED.
Hon. Roger P. Kerans, Panelist
Dated: June 17, 2002.
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