Martha Stewart Living Omnimedia, Inc. v. Joe Perez
Claim Number: FA0904001259275
Complainant is Martha Stewart Living Omnimedia, Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Joe Perez (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <everydayfood.com> and <everyday-food.com>, registered with Godaddy.com, Inc.
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.
Hon. James A. Carmody, Estella Gold, and Hon. Nelson A. Diaz as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2009.
On April 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <everydayfood.com> and <everyday-food.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2009 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 and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 20, 2009.
Additional Submissions were received on June 1, 2009 complying in a timely manner with The Forum's Supplemental Rule 7.
On May 28, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. James A. Carmody, Estella Gold, and Hon. Nelson A. Diaz as Panelists, Hon, Nelson A. Diaz was designated as the chair of the Panel by the National Arbitration Forum.
Complainant requests that the domain names be transferred from Respondent to Complainant.
In 2003, the EVERYDAY FOOD magazine was sold by 39,109 dealers. For the period between 2004 and 2008, the total paid average monthly circulation for the EVERYDAY FOOD magazine has never been less than 650,000 copies and for the last 6 months of 2008, the average monthly paid circulation for the EVERYDAY FOOD magazine was 991,056 copies. For the period between 2002 and 2008, Complainant has expended millions of dollars in advertising, consumer marketing, and circulation expenses for the EVERYDAY FOOD magazine.
In addition to sales in the United States, the EVERYDAY FOOD magazine is distributed in each of Australia, Brazil, British West Indies, Caicos Islands, Costa Rica England, Greece, Guam, Hong Kong, India, Indonesia, Israel, Italy, Jamaica, Japan, Lebanon, Malaysia, Mexico, New Zealand Panama, Philippines, Poland, Portugal, Puerto Rico, Singapore, South Africa, Spain, Sweden, Switzerland, Taiwan, and Thailand. In addition to EVERYDAY FOOD magazine, Complainant has produced and aired a television show under the EVERYDAY FOOD mark since 2005. This show is broadcast by approximately 200 different outlets in markets throughout the United States.
Approximately 7 months after Complainant filed its intent-to-use applications with the USPTO, putting the U.S. public on notice of its intent to use the EVERYDAY FOODS marks in conjunction with the goods and services recited therein, Respondent registered the Offending Domains. Respondent has associated the Offending Domains with websites which provide information and contain pay-per-click links for Complainant's advertisers. In addition, the content published by the Respondent makes explicit reference to Martha Stewart, evidencing the Respondent's knowledge of the association of the EVERYDAY FOOD marks with the Complainant. Upon information and belief, Respondent obtains pay-per-click revenues from these websites and in doing so unjustly derives revenue from the traffic generated by the goodwill associated with the EVERYDAY FOOD Marks.
The Offending Domains are confusingly similar to Complainant's marks because each fully incorporates Complainant's EVERYDAY FOOD Marks and, for the <everyday-food.com> domain name, merely adds a hyphen and the top level domain extension, ".com." The mere addition of a generic top-level domain and a hyphen does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent lacks rights or legitimate interest in the Offending Domains. Respondent has never used any trademark or service mark similar to the Offending Domains by which it may have come to be known, other than the infringing use noted herein. Respondent has never operated any bona fide or legitimate business under the Offending Domains and is not making a protected non-commercial or fair use of the Offending Domains. Complainant has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant's mark. Respondent is a U.S. individual with a U.S. address who has registered the domain names through a U.S. based registrar and has monetized those domain names through Sedo, a hosting company with a significant U.S. operation, it is fair that the U.S. law should apply in this dispute.
Since the Respondent is located within the U.S., he has notice of Complainant's prior rights to its EVERYDAY FOOD mark. The fact of (a) the prior pending intent to use application combined with (b) the fact that a search of the USPTO records prior to the date of the registration of the Offending Domains would have revealed Complainant's claim to rights and (c) the fact of the nature of the use of the Offending Domains to promote competing goods and services via a pay-per-click interface which makes direct reference to Complainant and its MARTHA STEWART and EVERYDAY FOOD magazine marks all support a finding of bad faith registration.
This Proceeding relates to two domain names corresponding to an everyday phrase registered well prior to any evidence of an enforceable right owned by the Complainant. At the time the domain names were registered in May and June 2002, the Complainant was the applicant of several intent-to-use applications which were under refusal. The Complainant’s first claim to acquire distinctiveness was not made until May 8, 2006, during the course of overcoming a descriptiveness refusal under Section 2(f) of the Lanham Act, in a registration application which issued in June 19, 2007. The Complaint is premised on the proposition that the mere filing of a registration application, which anyone may do at any time for any word or phrase regardless of use, registrability, or eventual disposition of the application, acts as a bar to registration of a domain name. There is no principle of law or doctrine under the Policy which supports such a premise, and quite a body of decisions which contradict this premise.
The Complainant states “On October 9, 2001” that it filed a pair of intent-to-use applications. The Complainant emphasizes this filing date to convey the impression that this date has particular significance in this Proceeding. It does not. Anyone may at any time file a trademark application for any phrase that may ultimately be deemed unregisterable. In fact, both of the applications filed on this date emphasized the Complainant were refused by the USPTO as merely descriptive terms. Indeed, at the time the domain names were registered in 2002, both applications stood refused in the USPTO, and never issued on the Principal Register. The Complainant acquiesced in the USPTO’s refusal of these applications, amended them to the Supplemental Register, and indeed did not claim use of the claimed mark until 2003 – well after the domain names were registered. The Supplemental Registrations, when issued in 2003 did not confer a prima facie enforceable right in the term at issue as of their issue dates in 2003. Therefore, they certainly did not confer any sort of right at all as of their filing date, nor as of the date the domain names were registered.
Accordingly, on the basis of evidence relating to the claimed television entertainment services for the previous 26 months dating to the date of the 2(f) Declaration (January 2005), the Complainant claimed to have acquired distinctiveness as of the date of the Declaration – i.e. May 8, 2006. The resulting registration, and first date on which the Complainant may claim a prima facie enforceable right, was June 19, 2007, in connection with television programming. In other words, despite the history of the magazine discussed in the Complaint, six days after filing the Complaint in this Proceeding was the first time ever that the Complainant claimed distinctiveness – as of April 29, 2009 – before the USPTO in two applications corresponding to the 2003 Supplemental Registrations.
The Complainant recites a history of common law usage beginning with a claimed first use date of October 2002. A chronology starting “[i]n 2003” recounts the Complainant’s use of the claimed term as a mark, while of course the Complainant was unable to advance the two Supplemental Registrations to the Principal Register. All of these activities are ultimately irrelevant to the requirement under the Policy that the Complainant demonstrate “bad faith” registration of the domain names. Concerning the Complainant’s recitation of history relating the magazine described in the Complaint, the Complainant’s claim of right in connection with that magazine was filed with the USPTO not more than a month ago, and it would be precipitous for this Panel to opine on what the USPTO should decide in those applications, as no doubt the Panel’s decision itself will be presented to the USPTO.
C. Additional Submissions
Complainant alleges that this is a straightforward case that offers the Panel a stark choice between applying the plain language of the Policy or creating a safe haven for U.S. based cybersquatters to poach domain names based upon Intent to Use trademark applications and Respondent has failed to rebut Complainant’s prima facie case.
Respondent states that Complainant abandons the law, and re-frames its case a policy argument for the propositions (a) that a pending intent-to-use application confers “rights” that stand as a proxy for the “insider knowledge” exception to the general Policy principle that trademark rights must pre-date a domain name, and (b) for a proposed policy rationale for an exception to the UDRP requirement that a domain name be registered in bad faith relative to pending intent-to-use applications which were refused and amended to the Supplemental Register as merely descriptive. Neither of these arguments withstands scrutiny, and in particular based upon the limited information, about which the Complainant’s counsel is aware, concerning the Respondent’s activities since registering the domain name.
In reviewing the Response, it appears that the main issues are under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use;” the panel finds for the Respondent.
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.
Respondent asserts that Complainant has not obtained a prima facie claim to rights in the mark based on Complainant’s October 2001 intent-to-use applications. Respondent argues that Complainant merely made a claim to rights in the mark to the Principal Register, but that Complainant’s applications “stood refused” by the USPTO throughout 2002—during which year Respondent argues that the domain names were registered. Respondent contends that Complainant agreed to the Supplemental listing, which does not denote any distinctiveness in the mark. Respondent therefore argues that neither Complainant’s intent-to-use application nor Complainant’s Supplemental Register registrations confer rights in the mark under Policy ¶ 4(a)(i) absent a showing of secondary meaning as to a specific date. The Panel finds that Complainant lacks rights in the mark under Policy ¶ 4(a)(i) based solely on the application and/or the Supplemental registrations. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the respondent’s state trademark registration and intent-to-use application for YAHOO VENTURES were not enough to establish rights and legitimate interests in <yahooventures.com> within the meaning of Policy ¶ 4(a)(ii)); see also CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001) (stating that Supplemental Register “provides the Complainant with no protectable rights” in its marks); see also Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003) (holding that the complainant’s registration of the DISCOUNT HYDROPONICS mark on the Supplemental Register did not confer any rights under the UDRP).
Respondent also contends that despite Complainant’s assertions of common law usage of the mark since October 2002, Complainant only recently represented its alleged distinctiveness in the mark to the USPTO on April 29, 2009 in an application pertaining to Complainant’s EVERYDAY FOOD magazine. Respondent argues that this is evidence that Complainant lacks sufficient secondary meaning in the mark vis-à-vis the magazine operation because Complainant did not make its distinctiveness claim until recently in order to upgrade from the Supplemental to the Principal Register. The Panel finds that Complainant lacks secondary meaning in the mark, the Panel also finds that Complainant lacks common law rights in the mark under Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001) (“Although Complainant might eventually overcome [the USPTO’s] initial refusal with adequate evidence of secondary meaning in its proposed mark, the USPTO refusal is certainly material to this proceeding as evidence of the descriptive character of Complainant’s proposed mark, and Complainant should have disclosed this refusal to the Panel.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that its use of generic domain names for an advertising venture is a legitimate business operation, and that Complainant is not targeted by such advertising. The Panel finds that Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001) (finding that “[n]either the current UDRP nor current ICANN registrar contracts preclude” the practice of registering domain names in connection with an advertising venture). Respondent also argues that the terms of the disputed domain names are generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel believes that the contested domain names are comprised of common terms, and finds that Respondent can establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Respondent asserts that the disputed domain names were registered in May and June of 2002, which Respondent claims predates Complainant’s first use of the mark in commerce in October 2002. The Panel finds that Complainant lacks rights in the mark that predate these disputed domain name registrations under Policy ¶ 4(a)(i), the Panel may find that Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (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., FA 133676 (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).
The Panel concludes that Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the disputed domain names in bad faith and has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that it had no knowledge of the mark because it had not been used by Complainant subsequent to the registration of the disputed domain names. Respondent contends that the disputed domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s mark. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith. The Panel finds that Respondent is free to register domain names consisting of common terms and that the domain names currently in dispute contains such common terms, and that Respondent did not register or use the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Respondent asserts that the disputed domain names were registered in May and June of 2002, which Respondent claims predates Complainant’s first use of the mark in commerce in October 2002. The Panel finds that Complainant’s lacks rights in the mark that predate these disputed domain name registrations under Policy ¶ 4(a)(i), Respondent did not engage in bad faith registration or use under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz, Chairman of the Panel
Estella Gold, Panelist
Hon. James A. Carmody, Panelist
Dated: June 24, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page