TexasFoodHandler.com c/o Jeanene Lambert v.
Texas International Property Associates
Claim Number: FA0810001230530
PARTIES
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.
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
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 postmaster@texasfoodhandlers.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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 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.
DECISION
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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