Orchard Supply Hardware
LLC v. RareNames, Web Reg
Claim Number: FA0804001178941
PARTIES
Complainant is Orchard Supply Hardware LLC (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orchardsupply.com>, registered with Domaindiscover.
PANEL
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 21, 2008.
On May 13, 2008, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <orchardsupply.com> domain name is
registered with Domaindiscover and that
the Respondent is the current registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover
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 May 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 3, 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@orchardsupply.com by e-mail.
A timely Response was received and determined to be complete on June 3, 2008.
A timely Additional Submission was received from Complainant on June 9,
2008.
A timely Additional Submission was received from Respondent on June 16,
2008.
On June 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an affiliate of Sears Holding Corp. Complainant’s
primary website is <osh.com>.
The domain name was originally registered by Complainant’s predecessor.
At the time the domain name registration first appeared in Respondent’s
name, Complainant, or its predecessor, owned the following two relevant
Mark: ORCHARD SUPPLY
HARDWARE
Reg. No.: 2775762
Reg. Date.: October
21, 2003
Filed: November 18,
2002
Mark:
Reg. No. 2638912
Reg. Date: October 22, 2002
Filed: July 9, 2001
Respondent used the Disputed Domain name to redirect Internet users to
a pay-per-click (PPC) advertising website where Respondent provides links to
third party websites offering goods and services, including advertisements
whose headers read “OSH Hardware – Cheap;” “Local Hardware Stores;” and
“Orchard Hardware Store.”
Respondent has no trademark or other intellectual property rights to
the domain name. Respondent has no trademark applications or registrations
known to Complainant that incorporate the elements “orchard supply.” Respondent
was not authorized to use the marks ORCHARD SUPPLY HARDWARE.
Complainant contends that “it appears that at some point in 2007, the
registration became titled in the name of Respondent (there is no break in the
registration span in the WHOIS record).”
Complainant contends that the Disputed Domain is confusingly similar to
the ORCHARD SUPPLY HARDWARE Marks.
Complainant contends that Respondent is a serial cybersquater and has
been the subject of at least nine transfer orders issued by various NAF
panelists.
Complainant contends that Respondent has no rights or legitimate
interests in the domain name. Complainant contends that Respondent has never
operated any bona fide or legitimate
business in conjunction with the Disputed Domain, and is not making a protected
non-commercial or fair use of the Disputed Domain.
Complainant further contends that the pay-per-click (PPC) advertising
website provides links to third party websites offering competing goods and services.
Complainant contends that Respondent registered and used the domain
name in bad faith, the bad faith resulting from Respondent’s actual knowledge
or at least constructive knowledge of the ORCHARD SUPPLY HARDWARE Marks because
of Complainant’s registration of the ORCHARD SUPLLY HARDWARE Marks with the
USPTO.
B. Respondent
Complainant owns no trademark registration for, and does not have
exclusive rights to, the phrase “orchard supply,” which is a common phrase used
by third parties. Complainant has made no showing that it is known by this
designation at common law. As can be seen at Complainant´s website, <osh.com>
(and <orchardsupplyhardware.com>, which redirects to <osh.com>)
Complainant’s primary mark is
Respondent is an affiliated company to the owner of the famous DavesGarden.com
website.
Respondent registered the Disputed Domain on May 27, 2003, after
Complainant allowed it to lapse on March 13, 2003.
Respondent registers domain names that become available for
registration through expiration and deletion. It is its corporate policy to
register and maintain only domain names that incorporate common words or
phrases, descriptive terms, and/or words as to which it considers no single
party has exclusive rights. Respondent has developed proprietary technology to
comport with that corporate policy, which allows Respondent to regularly screen
acquired domain names for, among other things, conflicts with trademarks that
are registered or are the subject of applications to register at the USPTO. In
this case, no results from the PTO database exactly matched queries on the
two-word phrase “orchard supply” or “orchardsupply.”
Respondent offers some of the domain names it acquires through
BuyDomains.com, as is the case with the Disputed
Domain.
On that site, Respondent makes available a Trademark Complaint
Procedure at http://www.buydomains.com/info/trademark-complaint-procedure.jsp.
When a communication regarding a particular domain name is received via the
Trademark Complaint Procedure, Respondent makes a reasoned analysis and reaches
a decision as to whether to attempt an amicable transfer of the domain name,
or, if warranted, to respond to a challenge on the merits, in which Respondent
is often successful.
Respondent considered using the Disputed Domain for a possible
companion site to Respondent’s affiliated, well-known DavesGarden.com website.
DavesGarden.com is one of the largest gardening sites on line, with more than
375,000 registered members and at least 1,800 pages of orchard-related content.
For a period of time, Respondent used the Disputed Domain to redirect users to
the DavesGarden.com website.
Prior to receiving Complainant’s protest, Respondent provided
advertising links to a variety of goods and services. After being contacted by
Complainant, Respondent, in an effort to address Complainant’s concerns,
changed the links on the site to show more generic content.
Respondent contends the additional formatives “
Respondent contends it selected the Disputed Domain because it
incorporates two short, common words that comprise a phrase related to plants
and gardening, and is a common phrase. Respondent contends it had no knowledge
of Complainant’s mark, and did not register the Disputed Domain to sell it to
Complainant, to disrupt its business, to prevent it from acquiring a domain
name reflecting its trademark, or to confuse users.
Respondent contends that it offering domains at <buydomains.com>
is a legitimate business. Respondent contends, that prior to receiving
Complainant’s protest, Respondent provided advertising links to a variety of
goods and services related the descriptive nature of the term “orchard supply,”
on such topics as various types of fruit and nut trees, home and garden
products, water garden products, gardening consultants, irrigation products,
and other supplies of interest to people interested in plants and gardening
generally, and in orchards in particular. In Respondent’s opinion this further
demonstrates Respondent’s legitimate interest.
C. Additional Submissions
Complainant contends that the website DavesGarden.com offers for sale
power tools, hand tools, and power tool accessories.
Respondent contends that the links Complainant refers to lead to
product reviews, not product offerings. The Dave’s Garden site does not,
itself, offer any products for sale, nor does it link to sites of Complainant’s
competitors.
Respondent contends that customers who are looking for Complainant have
been conditioned by Complainant to look for its trademarks OSH and ORCHARD
SUPLLY HARDWARE; that there is no reason why a customer would think that a
website at <orchardsupply.com>
that offers links to orchard supplies has anything to do with Complainant’s
hardware services.
FINDINGS
(1)
the
domain name registered by Respondent is confusingly similar to a trademark and
service mark in which Complainant has rights; and
(1)
Respondent
has no rights to or legitimate interests in respect of the domain name; and
(2)
the same domain
name was registered and is being used by Respondent in bad faith.
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:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant has presented two registrations with the United States Patent
and Trademark Office (“USPTO”). The
first is Registration Number 2,324,733, registered October 22, 2002, filed July
9, 2001, for the OSH ORCHARD SUPPLY HARDWARE design service mark. The second registration is Registration
Number 2,775,762, issued October 21, 2003, filed November 18, 2002, for the
ORCHARD SUPPLY HARDWARE service mark.
These registrations adequately convey rights in these marks to
Complainant for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <orchardsupply.com> domain name
is confusingly similar to both of Complainant’s asserted marks, as the disputed
domain name contains two of the dominant words of the marks, and adds the generic
top-level domain “.com.” The absence of the word “HARDWARE” does not
sufficiently distinguish the disputed domain name from Complainant’s ORCHARD SUPPLY HARDWARE service mark under
Policy ¶ 4(a)(i).
The same applies to the OSH ORCHARD SUPPLY HARDWARE design service mark and the
absence of the word “HARWARE” and the element “
The stylization of the OSH ORCHARD SUPPLY
HARDWARE service mark is irrelevant for the purposes of Policy ¶ 4(a)(i). See Roux
Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s
stylized mark incorporates a distinctive design element is irrelevant to this
analysis. Since a domain name can only consist of
alphanumeric text, design elements are ignored when considering this
element.”); see also Global
Affiliates, Inc. v.
In relation to the question whether Complainant’s marks predate Respondent’s registration of the disputed domain name, the Parties make diverging contentions as to the date of registration of the disputed domain. Claimant presents no evidence for its contention that Respondent somehow acquired the disputed domain in 2007. Therefore the Panel finds that the domain name was registered by Respondent on May 27, 2003, as Respondent contends and the WHOIS information suggests.
Nonetheless, both of Complainant’s marks predate Respondent’s registration of the disputed domain name for the purposes of determining confusing similarity. Regardless of whether the ORCHARD SUPPLY HARDWARE was filed on an intent-to-use or a current-use-in-commerce basis (which is under dispute among the Parties). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of the complainant’s trademark rights date back to the application’s filing date).
Complainant has made a prima facie case in support of its allegations that Respondent registered and used the disputed domain in bad faith. Hence the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent does not allege a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and there are no indications of such noncommercial use.
Respondent
is identified as “RareNames, Web Reg” and is not authorized to use
Complainant’s mark. There is no indication that Respondent is in any way known
by the <orchardsupply.com>
domain name. Hence Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089 (Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there is
no evidence in the record indicating that the respondent is commonly known by
the disputed domain name).
Even if sale of domain names or the hosting of hyperlinks for a variety of third-party websites at the website that was displayed from the <orchardsupply.com> domain name are activities which can in abstracto constitute a bona fide offering of goods under Policy ¶ 4(c)(i) the Panel finds that in the present case the activities engage into by Respondent are not bona fide activities.
This issue overlaps with the bad faith assessment under Policy ¶ 4(a)(iii) and the Panel considers that rules of evidence set forth in ¶ 4(b) for the appraisal of bad faith under Policy ¶ 4(a)(iii) are also appropriate for evaluating the good faith when offering goods or services required under Policy ¶ 4(c)(i) to prove Rights or a legitimate interest pursuant to Policy ¶ 4(a)(ii).
Respondent
has been the respondent in previous UDRP decisions in which the disputed domain
names were transferred from Respondent to the complainants in those cases. See Am. Int’l Group, Inc. v. RareNames, WebReg, FA 648253 (Nat.
Arb. Forum Apr. 6, 2006); see also
Barnie’s II, Inc. v. RareNames, WebReg, FA 778960 (Nat. Arb. Forum Oct. 11,
2006). These previous decisions indicate
a pattern of bad faith registration and use by Respondent in violation of
Policy ¶ 4(b)(ii).
See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad
faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the
complainant from reflecting its mark in a domain name and the respondent had
several adverse decisions against it in previous UDRP proceedings, which
established a pattern of cybersquatting); see
also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO
Jan. 22, 2005 ((finding that “Respondent has
registered the disputed domain name, <aria.com>, to prevent Complainant
from registering it” and taking notice of another UDRP proceeding against the
respondent to find that “this is part of a pattern of such registrations”).
The <orchardsupply.com> domain name
and resulting website are capable of creating a likelihood of confusion as to
Complainant’s source, sponsorship, affiliation or endorsement with the disputed
domain name and corresponding website, and Respondent attempted to profit from
this confusion through the earning of “click-through” fees for the hyperlinks
displayed on the website. This becomes blatantly
clear from the fact that the links
provided by Respondent included an advertisement whose header read “OSH
Hardware – Cheap.” This finding leads to a holding of bad faith
registration and use under Policy ¶ 4(b)(iv). See eHealthInsurance Servs., Inc. v. Hasan, FA 982289 (Nat. Arb. Forum July 9, 2007) (“Respondent’s
use of the disputed domain name to operate a pay-per-click website is
indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is profiting from click-through
fees each time an Internet user clicks on one of the links that redirect them
to websites competing with Complainant.”); see
also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting from click-through fees); specifically with regard to bona fide offering of goods, see also Royal Bank of Scot. Group
plc v. Demand Domains,
FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites); see
also Tesco Pers. Fin. Ltd. v. Domain
Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining web pages with misleading links to the complainant’s
competitors in the financial services industry).
But beyond these two circumstances
contemplated under Policy ¶ 4(b)(ii) and (iv)
there is further evidence of Respondent’s bad faith registration and use:
While there
is no clear evidence that Respondent had actual knowledge of Complainant’s service
marks at the time at which the <orchardsupply.com>
domain name was registered, Respondent had at least constructive knowledge. See
Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Even though under certain circumstances a registration by a respondent subsequent to a previous ownership by a complainant may indicate bad faith registration and use under Policy ¶ 4(a)(iii) (See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”)) in the present case the Panel does not consider the fact that Complainant did previously own the registration of the <orchardsupply.com> domain name, in and of itself, to be evidence of Respondent’s bad faith. For this to be the case there would need to be evidence of opportunism, i.e. of Respondent deliberately taking advantage of Claimant’s mistake. While constructive knowledge can constitute bad faith if a registrant should have been aware of third party trademarks (see above) opportunistically taking advantage logically requires actual knowledge.
Neither does the Panel share Respondent’s view that the fact that a disputed domain name was registered after being deleted actually favors Respondent, because the deletion is a signal that the prior registrant has abandoned any claim to it. Deletion can be the consequence of a deliberate abandonment but also of an unintentional mistake. Unless Respondent has actual knowledge that the disputed domain name was intentionally abandoned (which Respondent does not contend) the mere deletion does not favor Respondent in the sense that it indicates good faith.
Respondent
has alleged that Complainant’s failure to bring this Complaint for more than
four years since the <orchardsupply.com>
domain name was registered makes it “more
difficult” for Complainant to show bad faith registration and use. Regardless
of whether this may or may not be generally true, this circumstance has
actually not prevented Complainant to show bad faith registration and use. The
fact that Complainant brought this Complaint
more than four years after Respondent registered the domain name has, in particular, no relevance by means of the
doctrine of laches which doctrine is not relevant to its consideration of the
instant claim. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July
1, 2003) ("[T]he Policy does not provide any defence of laches. This
accords with the basic objective of the Policy of providing an expeditious and
relatively inexpensive procedure for the determination of disputes relating to
egregious misuse of domain names."); see also
Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in
an Administrative Proceeding under the Policy is not equitable. Accordingly,
the defence of laches has no application.”).
Respondent alleges that he did not register or use the <orchardsupply.com> domain name in bad faith since the disputed domain name is comprised of common and generic terms with meaning apart from Complainant’s use of them. Respondent has attempted to profit from the confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain name and corresponding website through the earning of “click-through” fees for the hyperlinks displayed on the website which included blatant examples such as the one whose header read “OSH Hardware – Cheap.” Respondent has purposely exploited Complainant’s specific use of the term and is therefore barred from the defense the disputed domain name is comprised of common and generic terms.
For all these reasons neither the sale of the domain name nor the hosting of hyperlinks for a variety of third-party websites at the website that was displayed from the domain name constituted a bona fide offering of goods under Policy ¶ 4(c)(i).
Respondent alleges that it also considered using the Disputed Domain for a possible companion site to Respondent’s affiliated DavesGarden.com website and that, for a period of time, Respondent used the Disputed Domain to redirect users to the DavesGarden.com website. This vague contention, which does not specify the period of time of redirection and is only supported by an affidavit, amounts to a trumped-up allegation and is eclipsed by the bad faith established with respect to the other activities.
Respondent was not able to prove any of the circumstances listed under Policy ¶ 4(c) to demonstrate rights to or a legitimate Interest in the Disputed Domain.
Bad faith registration and use by Respondent in violation of Policy ¶ 4(b)(ii) has already been ascertained above.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orchardsupply.com> domain name be TRANSFERRED
from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: June 27, 2008
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