The Great Atlantic & Pacific Tea Company, Inc. v. RareNames, WebReg
Claim Number: FA0806001204243
Complainant is The Great Atlantic & Pacific Tea Company, Inc. (“Complainant”),
represented by Arlana S. Cohen, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foodemporium.net>, registered with Domaindiscover.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 13, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <foodemporium.net> 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 June 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 9, 2008.
On July 15, 2008, Complainant submitted an Additional Submission in compliance with Supplemental Rule 7.
On July 21, 2008, Respondent submitted an Additional Submission in compliance with Supplemental Rule 7.
On July 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant ranks among
Respondent’s corporate policy is 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. There is no basis for transferring the disputed name to Complainant. Complainant does not have exclusive rights to the phrase “food emporium,” which is not a “coined” or unique phrase, but rather is a common merely descriptive term widely used by numerous parties. Respondent first registered the disputed domain name over seven years ago when it was available for anyone to register. Respondent had no knowledge of Complainant’s purported mark, and did not register the domain name to sell it Complainant, to disrupt its business, to prevent it from acquiring a domain name reflecting its trademark, or to confuse users. It is well-established that the display of advertising links to a variety of goods and services related merely to the descriptive nature of the phrase does not constitute bad faith under the Policy but is a bona fide business activity that establishes the Respondent’s legitimate interest. Moreover, Respondent offers the domain name for sale at <buydomains.com>, a legitimate business. On the disputed website Respondent offers information and links relating to the merely descriptive nature of the term “food emporium,” such as topics relating to food and food recipes, seafood and Italian food, Japanese food, gourmet food, Spanish food and cookbooks. Respondent did not register the disputed domain name with Complainant’s trademark in mind and, in fact, as Complainant filed its first of two trademarks more than eleven months after Respondent first registered the disputed domain name, Respondent did not know, nor had any reason to know, of Complainant’s use of its asserted mark by fewer than thirty stores concentrated in and around Manhattan, lower Westchester, New York, and Fairfield, Connecticut. Complainant does not have exclusive rights to the generic phrase “food emporium” which is a common phrase that is subject of diverse third party use.
C. Additional Submissions
Complainant’s Additional Submission.
Complainant shows impressive sales revenues from its use of THE FOOD EMPORIUM mark between the years 1989 through 2007 and during the ten years period from 1990 through 2000. During the twenty year period 1980-2000, Complainant’s THE FOOD EMPORIUM mark was mentioned in hundreds of articles in national publications such as the New York Times, Maine Times, Chicago Sum-Times, Forbes and Christian Science Monitor. Complainant’s THE FOOD EMPORIUM supermarkets have also been featured on national television shows such as CBS This Morning and The Today Show. This use, as well as THE FOOD EMPORIUM mark being used on the Internet, shows extensive uses and advertising by Complainant and its predecessor-in-interest, acquired secondary meaning much before Respondent registered the disputed domain name in December 2000. Complainant points out that Exhibit 6 of the pleadings shows that the domain name is being used to connect to a link farm website and the website provides links such as “Grocery Stores,” “Stop & Shop Supermarkets,” and “(Free) Grocery Coupons.” Respondent’s website features links to Complainant’s competitors. Thus, the link between Complainant’s mark and the content on Respondent’s website demonstrates that Respondent must have known about Complainant’s mark at the time it registered the domain name. Respondent offers to sell the domain name for the sum of $588.00 at <buydomains.com> and this, Complainant contends is evidence of bad faith.
Respondent’s Reply To Complainant’s Additional Submission.
Respondent challenges some of the figures set out by Complainant in its Additional Submission which were presented by Complainant to support the size of its revenues. Respondent argues that Complainant has not proved bad faith and the strength of its mark.
1. Complainant has rights in the mark, THE FOOD EMPORIUM.
2. Complainant’s THE FOOD EMPORIUM and Respondent’s domain name, <foodemporium.net> are identical or confusingly similar.
3. It is unnecessary to consider whether Respondent has rights to or legitimate interests in the disputed domain name.
4. Complainant fails to show that Respondent registered the disputed domain name in bad faith.
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 provided evidence that it
registered THE FOOD EMPORIUM mark with the United States Patent and Trademark
Office on February 11, 2003 (Reg. No. 2,685,875). The registration sufficiently establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher, D2002-0201(WIPO Mar. 5, 2002). (“Panel
decisions have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive”); see also U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not empowered
to nor should it disturb that determination.”). Respondent points out that it registered the
disputed domain name before Complainant filed its registration with the United
States Patent and Trademark Office. That matter will be addressed elsewhere in
this Decision. Complainant has shown
that it acquired common law rights in THE FOOD EMPORIUM mark dating back to
1980. In 1980 Complainant’s predecessor
began a grocery business using the THE FOOD EMPORIUM mark in connection with
offering food products, groceries, and other products. In 1986, Complainant acquired the business
and continued to use the THE FOOD EMPORIUM mark in connection with the grocery
business. On February 2, 1998, Complainant
registered the <thefoodemporium.com> domain name and has since used THE
FOOD EMPORIUM mark at this domain name to offer
grocery store products. Complainant has
produced evidence to establish common law rights. See
Tuxedos By Rose v. Nunez, FA95248 (Nat. Arb. Fourm
Aug. 17, 2000) (finding common law rights in a mark where its use was
continuous and ongoing and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH).
Respondent, in the pleadings, “does not dispute that the mark THE FOOD EMPORIUM and the domain name <foodemporium.net> are essentially identical.” Respondent contends that Complainant does not hold exclusive rights in the descriptive phrase “food emporium.” This argument cannot be validly raised under this section. This portion of the Policy considers only whether the 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, FA970871 (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 ¶ 5(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs, FA915206 (Nat. Arb. Forum Apr. 9, 2007).
Complainant prevails under the requirements of Policy ¶ 4(a)(i).
It is unnecessary to make findings as to whether Respondent has rights to or legitimate interests in the disputed domain name. Complainant fails to show that the disputed domain name was registered in bad faith.
The Policy requires Complainant to prove that the disputed domain name at issue was not only registered in bad faith but is being used in bad faith. See Policy ¶ 4 (a)(iii). The first issue to be decided is whether the domain name was registered in bad faith.
Complainant holds two service mark registrations from the United States Patent and Trademark Office issued in 2003. One application was filed on December 6, 2001. The other on January 16, 2002. Respondent registered the disputed domain name in 2000. At the time Respondent registered the disputed domain name, Respondent could not have been under constructive notice of the service mark. The next question is whether Respondent was on notice of Complainant’s common law rights in the mark, THE FOOD EMPORIUM in the year 2000. Complainant argues that “Given the longstanding use and prior registration of the distinctive THE FOOD EMPORIUM mark by Complainant and its predecessor-in-interest, Respondent should be held to have actual or at a minimum constructive knowledge of such use.” Citing Morgan Stanley v. Chan, FA244123 (Nat. Arb. Forum Apr.23, 2004)([R]espondent likely had knowledge of complainant’s marks due to complainant’s long-standing use of marks, and the fact that marks were registered with USPTO provided constructive knowledge to respondent of prior rights in mark) and Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002) (There is a legal presumption of bad faith, when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively).
Respondent argues that “food emporium” is a generic or descriptive term that is clearly not exclusively associated with Complainant. Respondent is in the business of “registering domain names that incorporate common words or phrases, descriptive terms, and/or words as to which it considers no single party has exclusive rights.” Jeffrey S. Bennett, the President and Chief Operating Officer of Respondent made an Affidavit as an Exhibit to the Response wherein he stated “We did not register the disputed domain name with Complainant’s trademarks in mind. We did not register the disputed domain name with the intent to disrupt Complainant’s business, to keep Complainant from having a domain name that reflects its registered trademarks, or register it to confuse customers seeking to find Complainant’s Web site…Prior to filing the Complaint, rather than contact us directly about any concerns Complainant might have had about the Disputed Domain through our publicly available Trademark Complaint Procedure at BuyDomains.com…the first notice we received of a formal dispute was on June 19, 2008, when we received a copy of the Complaint…Prior to that time, we were unaware of any rights Complainant might assert in its trademarks.”
Melinda Brown, the Vice President of Respondent, made an Affidavit as an attachment to the Response wherein she stated “We have developed proprietary technology to help us comply with our corporate policy of registering and maintaining only those domain names that incorporate common words or phrases, descriptive terms, and/or words to which we consider no single party has exclusive rights…Our proprietary technology allows us to regularly screen acquired domain names for, among other things, conflicts with trademarks filed and registered at the United States Patent and Trademark Office…Upon our acquisition of the subject domain name, zero (0) results exactly matched queries on the two-word phrase “food emporium” and “foodemporium” at the abovementioned database….Prior to our receipt of the Complaint dated June 19, 2008, we were unaware of Complainant’s asserted rights in “food emporium” and had not received any communication from Complainant or its counsel about a “food emporium” mark…”
In the Response it is argued Respondent did
not register the disputed domain name with Complainant’s trademark in mind and,
Complainant filed its trademark applications more than 11 months after
Respondent first registered the disputed domain name. It is stated that “Respondent did not know,
nor had any reason to know, of Complainant’s use of its asserted mark by fewer
than thirty (30) stores geographically concentrated in and around the isle of
Respondent has disclaimed any knowledge of any rights Complainant may have had in THE FOOD EMPRIUM mark at the time of registration of the disputed domain name. Complainant has presented no evidence that Respondent had knowledge of any rights Complainant may have had in the mark in the year 2000. The Policy requires an intentional act of bad faith to prove bad faith. The evidence presented in this case does not illustrate any such intentional act on the part of Respondent.
Panels have been reluctant to find bad faith when the disputed domain name consists of commonly-used terms. See Target Brands, Inc. v. Eastwind Grp., FA267475 (Nat. Arb. Forum July 9, 2004); see also Miller Brewing Co. v. Hong, FA192732 (Nat. Arb. Forum Dec. 8, 2003).
Complainant has failed to meet the burden of proof of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech, Ltd, FA406512 (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. FA133676 (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).
Respondent prevails under Policy ¶ 4 (a)(iii).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 30, 2008
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