Tate & Lyle Ingredients Americas Inc. v. Institute for Creative Thoughtcrime
Claim Number: FA0908001280926
Complainant is Tate & Lyle Ingredients Americas
Inc. (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall McAuliffe Newbury Hilliard & Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <krystar.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.
On August 24, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <krystar.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 15, 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 by e-mail.
A timely Response was received and determined to be complete on September 15, 2009.
On September 21, 2009, Complainant submitted an Additional Submission pursuant the Forum’s Supplemental Rule 7. This submission was timely.
On September 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. In its complaint, Complainant contends the following:
- The krystar.com domain name is confusingly similar to Complainant’s KRYSTAR trademark.
- Respondent is not known as KRYSTAR and has not acquired any trademark or service mark rights in such name. Complainant has not licensed or otherwise permitted Respondent to use the KRYSTAR mark or to apply for or use any domain name incorporating the mark or any variant thereof. Respondent's use of the KRYSTAR mark is not "nominative." It is not an unavoidable use of the trademark to identify the goods or services that Respondent offers on its web site. Respondent does not offer any goods or services on its web site; rather, it offers links to other sites, presumably to obtain link-through fees. It is not necessary to use the KRYSTAR mark in the disputed Domain Name in order to provide a search engine or links to travel or other consumer-related web sites. Based on its lack of rights in the KRYSTAR mark and lack of affiliation with Tate & Lyle, Respondent does not have rights or a legitimate interest in the Infringing Domain Name.
- Respondent registered and is using the disputed Domain Name in bad faith. Long after Tate & Lyle's adoption, use and filing for registration of its KRYSTAR mark, Respondent began making unauthorized use of that mark by registering the disputed domain name. Because Respondent had constructive notice of Tate & Lyle's trademark rights in the KRYSTAR mark, Respondent could not have registered the infringing domain name with the intention of using it legitimately. Respondent is using the domain name to host a parking site that displays third-party advertising links, a clear example of bad faith use.
B. In its response, Respondent makes the following contentions:
- The domain name is identical to the name Ms. Judith Low used for her publishing/book selling business since 1986. As it is a common law trademark and used regionally, and since the Complainant didn’t see fit to register this domain for nineteen years, it is hard to take the Complainant’s concern about “confusion” seriously.
registered the domain name at issue at the request and on behalf of Ms. Judith
Low. Ms. Low first used the Krystar name for her business on 3/1/1986.
The use in this manner constitutes a “common law” trademark. Had the Complainant
done a diligent search of state business records, they would have learned that
the “Krystar” name was already in use in
- Complainant’s investment in advertising and sale of products with the name is immaterial to the claim that they are entitled to the domain name. Ms. Low also made a substantial investment in the sales and marketing of her business and has also established goodwill with her customers under the name “Krystar”, 18 months prior to the Complainant’s registration of the name.
- Ms. Low agrees that she is not affiliated with Tate & Lyle, nor does she want to be. She does not require a license or authorization to use the “Krystar” mark since she used it as a common law trademark prior to the Complainant.
- Ms. Low asked Respondent to register the domain name on her behalf on or about April 24, 1999, because she was the legitimate owner of the name, having used it for 13 years without objection from the Complainant. Complainant then allowed her to use the name for 10 more years without comment or objection.
- Ms. Low and Respondent were unaware that ad links were being run on the domain page without express consent, approval or remuneration. The links are objectionable to Ms. Low and Respondent. Since the domain is now in dispute, the Registrar has locked Respondent out and refuses to make any changes to it. The Registrar told Mr. Allen that placing link ads on parked domains is a “common industry practice”. Respondent received no revenue from the ads and objects to them, but is powerless to change them until this dispute is resolved.
Ms. Low has every legal right to the name she has used
for her business for 23 years. She is completely entitled to the name she
registered with business and tax authorities in the states of
- Ms. Low is not required to get permission or license from the Complainant to use her own business name. Had the Complainant exercised proper due diligence in researching the name, they would have discovered that “Krystar” was already in use and could have chosen another name or licensed it from Ms. Low, or simply registered it on the grounds that there was no chance of confusion between the products sold by the Complainant and the services offered by Ms. Low.
- Ms. Low’s use of the name in no way infringes on the name held by the Complainant. It is certainly possible for two companies to have the same name, even a registered trademarked name, without undue confusion to the public.
- There is no reason for Ms. Low to address any issue of “nominative” or “unavoidable” use of her own business name. Also, Ms. Low has sold books in a retail capacity over the years, with the plan that she would switch to mail order/on-line sales when she retired in a few years time. This is why she secured the domain name in the first place, as do many far-sighted businesses that realize they may need a particular domain in the future. They register such domains so that situations such as this don’t occur.
- Complainant accuses Ms. Low of acting in “bad faith” and implies that she is a cybersquatter who intended to profit on a domain she was not entitled to. This is offensive in the extreme, and libelous. Ms. Low is completely entitled to register a domain name based upon her own business name, a business she engaged in for 13 years prior to registering the domain in question. Ms Low had no knowledge of any trademark held by the Complainant. When she began her business using the name “Krystar” 18 months prior to the Complainant, she found no one using the name.
- Complainant has made no effort to register any other top level domains using the “Krystar” name except .net. The .org, .us, .eu, .biz, and other lesser domains are still available. In fact, Tate & Lyle is a British company and has failed to register the .co.uk domain.
- Ad links appearing on the domain page were placed there without Respondent’s express consent by Wild West Domains, who have garnered all pecuniary rewards from the practice. Ms. Low’s intent to use the domain for her publishing/book selling business in no way trades on Complainant’s business or products, since no one but the Complainant seems confused by the products they sell and the services Ms. Low offers and will offer on the site.
C. Complainant’s Additional Submission
D. Respondent’s Additional Submission
In its “Response to Additional”,also timely submitted, Respondent contends as follows:
- Complainant appears to either have failed to examine the evidence provided, showing that Ms. Low has used the name in her business since 1986, or has chosen to ignore the evidence and simply repeated that there is no evidence. Additional evidence is provided in the form of a “North Carolina Sales and Use Tax” form with Ms. Low's name and “Krystar” on the document, along with the company's tax account number.
- Complainant demands evidence of complex licensing arrangement between Respondent and Ms. Low. No such licensing exists since none was needed. Ms. Low asked Respondent to register the name and act as the technical and administrative contact for the domain since she had no expertise in the procedure of obtaining the domain. Respondent includes a document from Ms. Low omitted in the response, which states Respondent is acting on her behalf with her consent.
records in hard copy from the relevant tax authorities from 1986 is time
consuming, but is ongoing. In the meantime, a simple phone call to the
- Respondent has requested hard copy documents from the relevant tax authorities stating the years of operation for “Krystar” by Ms. Low, but the government's timetable is not Respondent’s timetable. Mr. Allen is simply the administrative, business and technical contact for Ms. Low.
- Respondent does not assert any claim of ownership for the domain, so Respondent does not see that he must prove anything in this regard.
- As stated before, Respondent does not receive, and has never received any remuneration for the link currently being used for the domain. This was done without Respondent’s consent. We rely on Domain Registrars to act in an ethical manner when they execute their duties. While there is now a provision in the Terms of Service permitting Wild West Domains to engage in this activity, there was not when I originally registered the domain. Since the Terms of Service is amended periodically without informing the domain holders, it is not possible to catch every change such as this. The offending links would be pulled down at once, but as the domain is in dispute, WWD refused to allow any changes. They still collect the money, though.
- The domain was registered for its use at a future date by Ms. Low. It is quite common for businesses to register domains for future use. Had the complainant done this in a timely fashion, we would not be having this exchange,
Complainant first used its trademark KRYSTAR in July 1987. Complainant registered this mark in July 1988.
Respondent registered the domain name in dispute in 1999.
The web page at the disputed domain name presently shows links of a commercial nature to web sites unrelated to Complainant.
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.
Additional Submissions of the Parties
Having in mind that Complainant could not have anticipated that Respondent would argue that it is representing Ms. Judith A. Low in this proceeding, the Panel will consider both Complainants’ additional submission and Respondent’s reply thereto.
Complainant submits copies of registration certificates for the “KRYSTAR” trademark (U.S. Reg. No. 1,496,040 and Reg. No. 2,065,121 covering crystalline fructose, Community Trademark Reg. No. 000,253,5, for crystalline fruit sugars and Australian trademark Reg. No. 724,32, for crystalline fructose). The Panel is satisfied that Complainant has rights in the KRYSTAR mark. Given that the disputed domain name consists of such mark with the only addition of the gTLD “.com”, the Panel finds that the domain name at issue is identical to Complainant’s mark.
Complainant contends that Respondent is not known as KRYSTAR and has not acquired any trademark or service mark rights in such name, that Complainant has not licensed or permitted Respondent to use the KRYSTAR mark or to apply for or use any domain name incorporating the mark or any variant thereof, that Respondent's use of the KRYSTAR mark is not "nominative" or an unavoidable use of the trademark to identify the goods or services that Respondent offers on its web site, and that Respondent does not offer any goods or services on its web site but it is offering links to other sites, presumably to obtain link-through fees. Taken together, these contentions amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then, the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent claims that it has registered the domain name by request and on behalf of Ms. Judith Low. Ms Low, says Respondent, used the name KRYSTAR since as early as March 1, 1986, over a year prior to Complainant’s first use of the KRYSTAR mark.
Admitting – contrary to Complainant’s contention – that Respondent is not bound to provide a formal agreement on trademark licensing between itself and Ms. Low, the Panel considers that Ms. Low’s statement dated September 15, 2009 proves that she is the beneficial owner of the domain name in dispute.
In any case, Respondent must still counter Complainant’s prima facie case that Respondent’s lacks rights or legitimate interests in the domain name. Respondent says that Ms. Low’s use of the KRYSTAR name constitutes a common law trademark, but it did not provide the Panel with evidence that Ms. Low complied with any of the standards required to establish a common law trademark. These standards include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
The relevant question is whether Respondent complies with Policy ¶ 4.c.i.[i]
Respondent submits a printout of an unsigned document from the North Carolina Department of Revenue corresponding to Ms. Low’s sales tax account. In this form, Ms. Low has indicated the trade name KRYSTAR. Respondent further submits a form titled “Short Form for Registration of Pennsylvania Sales Tax”, dated December 31, 1997. In this form, Ms. Low, declaring to be doing business under the trade name “KRYSTAR”, applied for a license or certificate of transient vendor for “sell books-retail”. Respondent also submits a printout titled “Sales and Use Tax Return”, un-dated and un-signed, for account No. 004151245 pertaining to “KRYSTAR Judith A. Low”.
According to these documents, when Ms. Low applied for a license as transient book vendor, she indicated the KRYSTAR name as a trade name. However, the documents do not show that Ms. Low used the KRYSTAR name or trade name in March 1986 or thereafter.
Respondent also claims that Ms. Low has made “a substantial investment in the sales and marketing of her business and has also established goodwill with her customers under the name “KRYSTAR”, and that “Ms. Low spent money in advertising and sold products under the “KRYSTAR” name”, but it did not submit any receipt, invoice, affidavit or any other proof of expenses or investment in advertising –substantial or not.
However, the Panel believes that within the limited scope of these proceedings the forms submitted by Respondent show that Ms. Low, before notice of the dispute, at least made some preparations to use the name KRYSTAR to develop a book-selling business.
Accordingly, the Panel finds that Complainant failed to make out its case under the second requirement of the Policy. This finding in no way prejudices a ruling by a competent court following a trial, where, inter alia, witnesses under oath may be called for testimony, subject to cross-examination, and public records or purported public records offered as evidence may be subject to the requirement of authentication as a condition precedent to admissibility.
Given the finding made with regard to rights and legitimate interests, the Panel need not address the issue of bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also 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 elements unnecessary).
Since the Complainant has failed to establish the second requirement under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi, Panelist
Dated: October 6, 2009
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National Arbitration Forum
[i] Policy ¶ 4.c.i reads as follows: “c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; […].