NATIONAL
ARBITRATION FORUM
DECISION
TamarindArt LLC v. Last Mile Research, LLC
Claim Number: FA0801001128992
PARTIES
Complainant is TamarindArt LLC (“Complainant”), represented by Thomas M Furth, of Kudman Trachten Aloe LLP, New York, USA. Respondent is Last Mile Research, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tamarind.com>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2008.
On January 11, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tamarind.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 January 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2008 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 postmaster@tamarind.com by e-mail.
A timely Response was received and determined to be complete on February 6, 2008.
A timely Additional Submission was received from Complainant on February 11, 2008 in accordance with the Forum’s Supplemental Rule 7.
Response to Complainant’s Additional Submission was filed pursuant to the Uniform Name Dispute Resolution Policy (the “Policy”) on February 15, 2008, by submitting the Response to the Forum.
On February 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
The domain name, <tamarind.com>, is identical to complainant’s mark, TAMARIND and is confusingly similar to Complainant’s mark TAMARINDART. Complainant has rights in the TAMARIND mark by virtue of having used it in commerce since as early as December 2002, and has applied for registration of the mark in the U.S. Patent and Trademark Office (Serial No. 77/225192). Similarly, complainant has used its TAMARINDART mark since December 2002, and its application for registration is pending as Serial No. 77/218,266.
Respondent has made no apparent use of the domain name in any way. Repeated attempts to access a website by entering the domain name as a URL in a web browser have resulted in no web page being found. Most recently, such an attempt resulted in access to a web page that was “parked free, courtesy of GoDaddy.com.” To the best of Complainant’s knowledge, there has been no use of a name corresponding to the domain name by Respondent in connection with a bona fide offering of goods and services.
Respondent has not been commonly known by the domain name nor has Respondent made a legitimate noncommercial or fair use of the domain name; indeed as set forth above, Respondent has made no use whatsoever of the domain name.
The domain name has been registered in bad faith by acquiring the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
Respondent, through its Administrative Contact, having made no use of the domain name, has offered to sell the domain name to Complainant for Fifty Thousand Dollars.
B. Respondent
<Tamarind.com> is neither identical nor confusingly similar to a trademark or service mark in which the complainant has rights. Tamarind is not a unique name to either Respondent’s or Complainant’s business, it is a word in common use in English for a fruit. Although any number of organizations (including the Complainant) may have trademark rights in such a word (and indeed the Respondent has produced evidence of numerous US trademarks which include or comprise the word “zero”) that does not preclude the Respondent effecting registration of a common word on the “first come, first served” basis which was available. Complainant’s Trade name TamarindArt is sufficiently different from tamarind.com that customers will not be confused by it. Businesses are in entirely different industries (hotels and resorts and high-tech services for hotels) than TamarindArt’s and it is unlikely that either entity’s customers will mistake one for the other.
Respondent did not acquire the domain name <tamarind.com> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii); ICANN Policy ¶ 4(c).
Respondent’s use of the domain name <tamarind.com> began prior to the Complaint as part of a bona fide offer of goods and services, and even prior to the claimed 2002 start of TamarindArt.
Respondent has been the owner of a business in New Mexico since the 1970’s, doing business as (“dba”) The Tamarind Group. This company is an investment and investment management business. The domain tamarind.com was obtained in 1995 for use in representing those activities. They receive bills electronically under that domain, corresponded frequently with others under that name, and used, and still uses tamarind.com for email related to that business.
Respondent is the owner of another company, Last Mile Research LLC (a successor LLC to Innovation Investment Partners LLC, registered in CA July 21, 2003, amended July 19, 2004). Last Mile Research LLC is in the business of installing and maintaining high-tech services in hotels and resorts. In mid-2007, they caused the <tamarind.com> site to refer web searches to tamarind.com to transfer to the Last Mile Research website so that previous correspondents could find out about his new business.
Respondent transferred the <tamarind.com> site to GoDaddy from Network Solutions, Inc. on January 5, 2008, along with other hosted databases and websites they own or control, in order to consolidate his various assets on a single host, for economic reasons.
Respondent was unaware of the existence of TamarindArt until this complaint was filed. When Mr. Charugundla contacted Mr. Pogue in October 2007, he did not mention the name of his company in that conversation, to Mr. Pogue’s recall. Mr. Pogue did not and does not wish to sell the domain name and, while he quoted a price in conversation with Mr. Charugundla, he quoted a price that was based upon his perceived inconvenience in obtaining another domain, moving his related business activities to that other domain and the loss of visibility for those business relationships during the transition, and was intended to discourage the attempt to buy the domain.
Respondent did not acquire the domain <tamarind.com> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Respondent has been commonly known by the domain name as owner of The Tamarind Group, even though he has not acquired trademark or service mark rights.
Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. They have not attempted at any time to market the <tamarind.com> domain name for itself for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark of anyone. Respondent was unaware of the existence of TamarindArt until this complaint was filed. Respondent did not and does not wish to sell the domain name and while he quoted a price in conversation with Complainant, it was based upon his perceived inconvenience in obtaining another domain, moving his related business activities to that other domain and the loss of visibility for those business relationships during the transition, and was intended to discourage the attempt to buy the domain. Thus he cannot be said to have parked the domain in association with those other businesses with intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
Complainant submits this additional statement in response to the assertions and evidence submitted by Respondent on February 6, 2008.
Respondent has made a number of assertions, unsupported by evidence, that do not adequately rebut the evidence submitted with the Complaint. Respondent’s reliance on prior arbitrations is misplaced as well as inaccurate.
Respondent asserts that a “generic or common word” cannot serve as a trademark, and is therefore available as a domain name on a “first, come first served” basis. Respondent’s “quotation” from Energy Source v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001), cannot be found anywhere in the decision. Further, the decision does not support the proposition for which it is cited. As Respondent correctly states, “Tamarind . . . is a word in common English usage for a fruit.” It is therefore an arbitrary designation for Complainant’s services, i.e., art galleries; museums; entertainment, namely live music concerts; provision of conference, exhibition and meeting facilities. As pointed out in the Complaint, Complainant’s applications to register its TAMARIND and TAMARINDART marks have been approved and published, the opposition periods have passed, and the marks will be registered in due course. This defeats Respondent’s claim that the mark TAMARIND is generic as applied to Complainant’s services.
Mr. Pogue (apparently he and Respondent Last Mile Research LLC are one and the same) asserts that his use of the domain name began prior to the Complaint as part of a bona fide offer of goods and services and that he acquired the domain for his pre-existing business. It is undisputed that the domain name was registered in 1995, although the evidence does not reveal by whom. Assuming that Mr. Pogue discusses an unnamed business in New Mexico that he states has been doing business as The Tamarind Group. He provides no evidence concerning the alleged activities of that business.
Respondent asserts that its businesses “are in entirely different industries than [Complainant’s],” and argues that this obviates any likelihood of confusion.
Respondent submits additional submission with statement in response to the assertions made in Complainant’s additional submission by responding to all the exhibits as evidence of their defense to the claims made by the complainant.
FINDINGS
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) and therefore finds for the Respondent.
DISCUSSION
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:
Identical
and/or Confusingly Similar
<tamarind.com> is neither identical nor confusingly similar to a trademark or service mark. Complainant’s trade name TamarindArt is sufficiently different from <tamarind.com> that customers will not be confused by it. Respondent’s businesses are entirely different industries (hotels and resorts and high-tech services for hotels) than TamarindArt’s and it is unlikely that either entity’s customers will mistake one for the other.
While Respondent contends that the <tamarind.com> domain name is comprised of a common, descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Rights or
Legitimate Interests
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it obtained the <tamarind.com> domain name in 1995, long before Complainant’s alleged first use of the TAMARIND mark in 2002. The Panel finds that because Respondent’s registration clearly predates any rights that Complainant may have in the TAMARIND mark, Respondent does have rights and legitimate interests in the <tamarind.com> domain name. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
Respondent asserts that it has been the owner of a business called “The Tamarind Group” since the 1970s and has continuously used the <tamarind.com> domain name as an e-mail domain and to provide Internet users information about “The Tamarind Group” and its new business, “Last Mile Research LLC.” Thus, Respondent argues that it is commonly known by the <tamarind.com> domain name and therefore has rights and legitimate interests under Policy ¶ 4(c)(ii). See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name).
As mentioned above, Respondent contends that it has occasionally used the <tamarind.com> domain name over the years to display websites in connection with its business, and has continuously used the disputed domain name as an e-mail domain. The Panel concludes that Respondent is using the <tamarind.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bharatplanet.com Ltd v. Adnet Solutions, AF-0290 (eResolution Sept. 18, 2000) (finding that the respondent’s active use of the <bharathmail.com> domain name and pending expansion plans was evidence that the respondent had legitimate interests in the contested domain name and was not using it in bad faith); see also Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO Apr. 27, 2004) (finding that the <harrodssalon.com> domain name was used in a bona fide manner because the respondent had been in the salon business for ten years prior to registering the domain name and the owner’s surname was “Harrod”).
Registration
and Use in Bad Faith
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the <tamarind.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent asserts that it did not register the <tamarind.com> domain name with the intent to sell it, and that it only quoted the $50,000 price to Complainant based on its perceived inconvenience and to discourage the sale. Accordingly, the Panel concludes that Respondent’s offer of the <tamarind.com> domain name for sale does not indicate bad faith registration and use under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”).
Furthermore, Respondent again argues that it registered the <tamarind.com> domain name long before Complainant began using the TAMARIND mark. Accordingly, the Panel additionally concludes that Respondent did not register or use the <tamarind.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
___________________________________________________
Hon. Nelson A. Diaz (ret), Panelist
Dated: March 3, 2008
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