The Great Atlantic & Pacific Tea Company, Inc. v. Name Administration Inc. (BVI)
Claim Number: FA0806001204907
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.com>, registered with Domain Name Sales Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
John J. Upchurch, G. Gervaise Davis, III, and Mark McCormick, Chair, as Panelists.
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, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <foodemporium.com> domain name is registered with Domain Name Sales Corp. and that Respondent is the current registrant of the name. Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 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 10, 2008.
Complainant submitted a timely Additional Submission on July 15, 2008 in accordance with the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted a timely Additional Submission on July 21, 2008 in accordance with Supplemental Rule 7.
On July 28, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed John J. Upchurch, G. Gervaise Davis, III, and Mark McCormick, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts rights in THE FOOD EMPORIUM mark through use of the mark in its supermarket and food store business since 1986, through two trademark registrations and through registration of the domain name <thefoodemporium.com> on February 6, 1998. Complainant contends that Respondent’s domain name <foodemporium.com> is confusingly similar to Complainant’s THE FOOD EMPORIUM mark because it appropriates the dominant portion of Complainant’s mark and simply deletes the term “the.”
Complainant also contends that Respondent has no rights or legitimate interests in the mark, that Respondent had actual or constructive notice of Complainant’s prior use of the mark, and that Respondent has not used the disputed domain name for any bona fide offering of goods or services but merely to divert Internet users searching for Complainant’s website to Respondent’s website offering links to third-party commercial websites.
Complainant accuses Respondent of bad faith registration and use of the mark largely on the ground that Respondent should be charged with knowledge of Complainant’s rights in the mark and that Respondent’s registration and use of the “identical mark” is inherently deceptive and likely to confuse Internet users and cause disruption of Complainant’s business.
Respondent contends that Complainant’s trademark registrations must be narrowly construed because its first registration merely consists of common words in a stylized rendering and its second registration post-dates registration of the disputed domain name, following five previous refusals of applications. Respondent asserts that the registrations should not be deemed to establish for Complainant a global monopoly on use of the mark. In addition, Respondent contends that at least a fact question exists regarding whether Complainant’s THE FOOD EMPORIUM mark conveys a different impression from that created by the widespread third-party use of the term “food emporium.”
Respondent contends that it made bona fide use of the domain name for five years without notice of a dispute and that Respondent operates a network of domain names containing common and descriptive terms through which it seeks to obtain paid search results. Respondent alleges that no evidence exists that it has sought to pass itself off as Complainant or even to use the term “food emporium” as a mark. Respondent asserts that the term is widely used and that any rights Complainant has should not be considered applicable globally.
Finally, Respondent contends that the evidence would not support a holding that Respondent registered the domain name with an intent to usurp the goodwill of Complainant, denies that it had actual or constructive knowledge of Complainant’s registration of the mark, and asserts that its registration of the disputed domain name was aimed at exploiting the ability of the term itself to attract Internet users and not to take advantage of Complainant’s registration or trademark.
C. Additional Submissions
In its Additional Submission, Complainant contends that THE FOOD EMPORIUM mark had secondary meaning that was well established prior to its first trademark registration, and Complainant identifies many examples of its use in articles in national publications and on the Internet. Complainant points to its growth in sales revenues as evidence of its use of the mark. Complainant contends that the parties’ websites compete for the same consumers and that the term “food emporium” is not merely descriptive. Complainant contends that Respondent’s use of the term in connection with a “link farm” is not a bona fide offering of goods and services and that it is “inconceivable” that Respondent lacked notice of Complainant’s rights prior to its registration of the disputed domain name. Complainant asserts that the evidence shows consumers associate THE FOOD EMPORIUM mark solely and exclusively with it.
In its Additional Submission, Respondent contends that Complainant’s
assertion of secondary meaning is questionable beyond Complainant’s local
market and that the record does not support Complainant’s assertion that
Respondent had actual or constructive notice of its use of the term, given that
Respondent is located in the
Complainant owns supermarket stores in
Respondent is located in the
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 relies on its trademark registrations and claim of secondary meaning in asserting its rights in THE FOOD EMPORIUM mark and relies on the similarity of its mark with Respondent’s <foodemporium.com> domain name in asserting that it has satisfied Policy ¶ 4(a)(i). Respondent relies on its contention that Complainant’s mark contains common terms, that Complainant’s trademark registrations should not be given global effect, and that the word “the” sufficiently distinguishes Complainant’s mark from Respondent’s domain name in the circumstances of this case.
When small differences exist in terms that are descriptive, the differences may be sufficient to distinguish domain names. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002). Elimination of the space between the words and the addition of the generic top-level domain “.com” ordinarily does not sufficiently distinguish a domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007).
In the circumstances of the present case, the issue under Policy ¶ 4(a)(i) is very close, but the Panel finds that Complainant has marginally established its right in THE FOOD EMPORIUM mark and met its burden to demonstrate that Respondent’s domain name is confusingly similar to Complainant’s mark.
The record shows the term “food emporium” is widely used and is descriptive. The record does not show that Respondent had actual knowledge of Complainant’s rights in THE FOOD EMPORIUM mark when it registered its domain name. The Panel finds that the term “food emporium” is generic and descriptive. Moreover, Respondent’s use of the generic term in its domain name as a means of attracting Internet users to its website to access hyperlinks that offer goods and services related to the generic term is legitimate. Complainant has not met its burden to prove that Respondent lacks rights and interests in the disputed domain name within the meaning of Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006). Respondent’s use of the disputed domain name as a generic term in operating its website as a portal to businesses that offer related products constitutes a bona fide offering of goods and services within the meaning of the Policy. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002).
Because the Panel holds that Complainant has failed to prove Respondent has violated Policy ¶ 4(a)(ii), the Panel finds that it is unnecessary to reach or decide Complainant’s contention of bad faith registration and use under Policy ¶ 4(a)(iii).
Because Complainant has failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the request for transfer of the <foodemporium.com> domain name from Respondent to Complainant is DENIED.
Dated: August 26, 2008
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