TexasFoodHandler.com c/o Jeanene Lambert v. Texas International Property Associates
Claim Number: FA0810001230530
Complainant is TexasFoodHandler.com c/o Jeanene Lambert (“Complainant”), Texas, USA. Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texasfoodhandlers.com>, registered with Compana, Llc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.
On October 23, 2008, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <texasfoodhandlers.com> domain name is registered with Compana, Llc and that the Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 December 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 23, 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 December 23, 2008.
On December 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that:
The disputed domain name is confusingly similar with its common law mark TEXASFOODHANDLER.COM, the only difference between the two being the final letter “s” existing in the disputed domain name.
The disputed domain name is also confusingly similar with the Complainant’s DBA (“doing business as”) registration with the same difference.
The website resolving under the disputed domain name coins advertising portal pages with hyperlinks to vendors selling similar courses as the Complainant and other merchandise.
The Respondent has registered and is using the disputed domain name in bad faith with intent to profit from the confusion between the Complainant’s common law trademark which is well known in the food handler market.
In its Response, the Respondent asserts that:
Complainant has failed to show rights to a mark which existed when the disputed domain name was registered, as it had no federally registered-trademark.
In its allegations, the Complainant refers to what it is a “trade name” in the Complaint, not a trademark. Complainant also notes that it registered its own domain as a “d/b/a,” which is defined by the U.S. Small Business Administration as “a fictitious name (or assumed name, trade name, or DBA name, short for "doing business as"),” which as such it is not considered a trademark under which the Complainant does not operate anymore.
The Complainant could not establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services and therefore demonstrated no common law rights in the TEXASFOODHANDLER.COM mark
Respondent has a legitimate interest in the disputed domain name as it contracted with Hitfarm, which connects its own websites to the domain names to offer a legitimate business of targeted advertising searches that are legal everywhere in the world and are actually undertaken in connection with industry leaders Google and Yahoo.
The mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels.
There can be no proof that Respondent was, or should have been, aware of Complainant at the time the dispute domain was registered and thus there can be no bad faith registration, as according to a search of the Wayback Machine at <archive.org> shows the first activity on Complainant’s website to be September 27, 2004, less than three months prior to the registration of the disputed domain name.
Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words and this represents a legitimate business and done in good faith.
Respondent requests a finding of reverse domain name hijacking.
The issue in these proceedings is the common law rights asserted by the Complainant in the TEXASFOODHANDLER.COM trademark to which the disputed domain name is confusingly similar. The Panel considers that the evidences brought in this case by the Complainant are insufficient to support the Complainant’s first element of the ICANN Policy.
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 asserts rights in the TEXASFOODHANDLER.COM mark, in that Complainant alleges that it provides courses for food handling. Complainant submits a screenshot of its resolving website at the <texasfoodhandler.com> domain name (registered June 24, 2004). Complainant has also submitted evidence of its registration of this mark as a “doing business as” name with the State of Texas, which dates to September 2004. Complainant also submits evidence of the abandonment and name change of the mark with the State of Texas in 2007 due to marriage.
Respondent contends that Complainant has not set forth sufficient evidence of its common law rights or secondary meaning. Respondent argues that Complainant has only submitted brief assertions, and makes no reference to its sales or actual clients. Moreover, Respondent argues that Complainant is using its name as a trade name, and not as a trademark
In addition, at the time of these proceedings the domain name of the Complainant which identifies with its the alleged common law trademark Texasfoodhandler.com resolves to a web page under another disputed domain name, <safewayclasses.com>, where it is mentioned that <texasfoodhadler.com> is a service of SafeWay Certifications. This and the last mention in the end of the page which enumerates TexasFoodHandler SM among other indications of this kind are the only references of the alleged common law trademark Texasfoodhandler.com.
These elements may be an indication, that even the Complainant does not see TEXASFOODHANDLER.COM as a sufficient distinctive trademark for its services.
Common law rights require prior actual and continuous use in commerce. To prove common law rights in a mark, one must show that it was the first to use the mark within a geographical area. The simple assertion that a used domain name becomes a common law trademark is not sufficient. It is important to determine whether one has acquired common law rights in a mark: widespread distribution, public association with the mark, whether consumers associated the mark with the source of the goods, whether the mark has become distinctive, and whether the mark owner has exercised control over the quality of the goods and has used the mark in a trademark sense.
In these proceedings the Complainant’s evidences are not sufficient to support common law rights in Texasfoodhandler.com.
Therefore the Complainant failed to prove the first element of the Policy.
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent asserts that Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case without a colorable claim to rights in the mark.
Even though the Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
In this sense, the Panel finds no reverse domain name hijacking action of the Complainant.
Having failed to establish the first element under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Beatrice Onica Jarka Panelist
Dated: January 14, 2009
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