Greatwater, Inc. v.
Greatwater Custom Label (2004) Inc
Claim Number: FA0910001287920
PARTIES
Complainant is Greatwater, Inc. (“Complainant”), represented by Roger
S. Watts, of Boughton Law Corporation,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <greatwater.com> and <nationwidesprings.com>,
registered with Network Solutions, Inc.
PANEL
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.
Hon. Karl V. Fink (Ret) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 6, 2009; the
National Arbitration Forum received a hard copy of the Complaint on October 8, 2009.
On October 6, 2009, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <greatwater.com> and <nationwidesprings.com>
domain names are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 October 14, 2009, a
Notification of Complaint and Commencement of
A timely Response was received and determined to be complete on November 3, 2009.
Complainant’s additional timely submission was submitted on November 9,
2009.
Respondent’s additional timely submission was submitted on November 13,
2009.
All submissions were considered by the Panel.
On November 12, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Karl V. Fink (Ret) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Greatwater, Inc. (“Greatwater”), is a company incorporated
pursuant to the laws of the State of
Greatwater has, for many years, carried on the business of supplying
private label bottled water products (“Bottled Water”) for its customers under
the marketing name “Greatwater”.
Greatwater marketed the Bottled Water under the name “Greatwater”, and utilized a website found at” <greatwater.com>. Greatwater also
marketed the Bottled Water under the alternative marketing name, “Nationwide
Springs”, and in doing so also utilized a website found at <nationwidesprings.com>.
The <nationwidesprings.com>
domain name was originally registered by Greatwater on December 28, 1999.
The <greatwater.com>
domain name was originally registered by Pen Bay Foods, Inc., the sole owner of
Greatwater.
In 2001, Pen Bay Foods sold Greatwater to Stonepoint Global Brands Inc.
(“Stonepoint”). Stonepoint sold
Greatwater to an
About October of 2006, Watermen LLC (“Watermen”), a
100% ownership of Greatwater was subsequently transferred back to
Stonepoint in August of 2006.
Dumas and Novak subsequently established a new bottled water business
in direct competition with Greatwater, through the Respondent, Greatwater
Custom Label (2004) Inc. (“GCL”).
GCL has wrongfully registered both domain names under its own corporate
identity.
The domain names in question are identical to the Complainant’s service
marks “Greatwater” and “Nationwide Springs” names.
GCL should be considered as having no legitimate rights or interest in
respect of the domain names.
GCL has registered and used the domain names in bad faith.
GCL is, or ought to be, fully aware of the reputation and goodwill
associated with the “Greatwater” and “Nationwide Springs” names, and has
attempted to misleadingly attract and convert the benefit of the valuable
goodwill associated with the “Greatwater” and “Nationwide Springs” names to
itself and/or its business through marketing and advertising on the Websites.
B. Respondent
The Complaint focuses on disputes and controversies that are outside
the proper scope of this proceeding and should be resolved in a more
appropriate forum.
Complainant does not have any trademark or service mark registrations
for the words, Greatwater, Nationwidesprings, and Nationwide Springs (the
“Names”). Complainant asserts that the
Names are common law trademarks or service marks.
Complainant does not use the Names as trademarks or service marks. When describing them, Complainant calls them
“marketing names”. Complainant says in
those paragraphs that Complainant has “carried on business…under” those
names. The Complainant describes
business names, not trademarks or service marks.
Complainant’s business, like Respondent’s business, involves the sale
of bottled water on a private label basis.
In carrying on that business, Complainant brands its bottled water with
the trademarks of its customers. Business
names are outside the scope of the ICANN Policy.
Complainant has failed to prove that it holds common law rights in the
Names. Complainant does not indicate the
jurisdiction in which its common law rights are supposed to exist, or the
applicable legal principles of that jurisdiction.
Complainant must prove that at least some goodwill and reputation, that
is, some secondary meaning, has been generated in connection with the mark as a
consequence of active use in commerce by Complainant. Complainant has not provided any evidence of
activities that would reasonably generate such reputation, goodwill, and
secondary meaning.
Mere assertions of common law rights in a trademark are insufficient
without accompanying evidence to demonstrate that the public identifies the
Complainant’s mark exclusively or primarily with the Complainant’s products.
Since at least as early as mid-2004 until the autumn of 2006,
Respondent and Complainant were sister companies, and both used the Names and
the Domain Names at the same time in connection with identical commercial
activities, under the direction and control of Peterborough Capital Corp. (“
Complainant never owned the Domain Name <greatwater.com>, and only used it under the direction and
control of
Between mid-2004 and the autumn of 2006, Complainant and Respondent
were both owned by
Continuously between mid-2004 and the autumn of 2006, Complainant and
Respondent carried on their respective businesses, which entailed sharing the
use of certain assets, including the Names, the Domain Names, and the websites
accessed via the Domain Names.
Use of the Names by both Respondent and Complainant between mid-2004
and autumn of 2006 was directed and controlled by
Complainant has not proven that the Names identify Complainant and
distinguish it from other sources. Complainant has not affirmatively demonstrated
ownership of the Names.
Respondent was incorporated in 2004 to carry on a business that bore a
strong relationship to its chosen name.
The first three words of the name – Greatwater Custom Label – clearly
signal that intention.
After incorporating, Respondent began carrying on business under the
Names selling custom label bottled water.
That business operated in concert with Complainant’s business.
Respondent has legitimately used the Names and Domain Names in
Respondent was incorporated in 2004 under the corporate name Greatwater
Custom Label (2004) Inc. It was
incorporated by the same corporation that owned all the share capital
Complainant, for the purpose of carrying on the same business as Complainant,
using the Names and the Domain Names.
Respondent has been using the Domain Names and names corresponding to
the Domain Names in connection with a bona
fide offering of goods or services long before Respondent received any
notice of the dispute.
Between mid-2004 and autumn of 2006, Respondent used Greatwater as its
primary identity and Nationwide Springs as a secondary identity. Those identities have appeared on
Respondent’s websites since 2004.
C. Additional Submissions
Complainant:
The issues in dispute with regard to improper use of the Domain Names
are squarely within the jurisdiction of the present proceeding, as they involve
direct violations of the UDRP Policy.
The evidence cited by Complainant is directly relevant to demonstrating
Respondent’s bad-faith dealings with Complainant.
Complainant’s product labels, in addition to bearing the trade names or
other information supplied by its customers, also carries the service mark
“Greatwater” as the supplier of the product itself. The evidence also clearly shows that the
products sold by Complainant have at all material times been sold under that
name.
There is no evidence contesting Complainant’s assertions that the Names
remained (and still do remain) the intellectual property of Complainant.
The only reason Respondent had any access to Complainant’s website and
the Domain Names is because of its creation as a complement to Complainant’s
existing business activities.
Respondent has engaged in a wholesale appropriation of Complainant’s
promotional and business strategy, to which it only had access as a
non-competing sister company.
Respondent:
Complainant’s Additional Submission contains numerous admissions by
Complainant that the two disputants both used the Names at the same time. Complainant admits that this coterminous
usage was directed by
Complainant does not provide any evidence showing that it held any
proprietary interest in, or that it controlled, the Names at any time.
If, as Complainant asserts, Respondent did not have an identity
independent of Complainant, then neither did Complainant have an identity
independent of Respondent. If
Complainant’s assertions on that point are true, then, the Names lack
distinctiveness and are incapable of distinguishing the products and services
of either disputant from those of other.
That, in turn, would render the Names incapable of protection as common
law trademarks in which anyone can have rights.
The party who controlled use by both Complainant and Respondent –
FINDINGS
For the reasons set forth below, the Panel
finds Complainant is not entitled to relief.
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.
Respondent argues that Complainant
has failed to established common law rights through proof of secondary meaning
in the GREATWATER and NATIONWIDE SPRINGS domain names. The Panel finds that Complainant has failed
to establish common law rights in the GREATWATER and NATIONWIDE SPRINGS marks,
and therefore lacks rights in the marks pursuant to Policy ¶ 4(a)(i) since the
Panel finds that Complainant has not shown sufficient secondary meaning in the
marks. 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 Hugo Daniel Barbaca Bejinha
v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28,
2006) (failing to find common law rights where the complainant provided little
evidence showing the extent of its use of the mark over the three years that
the complainant claimed to have been using the mark).
Complainant
has not proven this element.
The Panel finds 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 presents
evidence and argues that it has used the disputed domain names in connection
with its business selling bottled water since its incorporation in 2004. The Panel finds that Respondent has made
demonstrable use the disputed domain names in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). See 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); see also Safeguard
Operations, LLC v. Safeguard Storage,
FA 672431 (Nat. Arb. Forum June 5, 2006) (finding that the respondent’s
operation of a self-storage facility and execution of a business plan
demonstrate that the respondent has rights or legitimate interests under Policy
¶ 4(c)(i)).
Respondent argues that Respondent has been commonly known by the disputed domain names since its incorporation in 2004 for the business of selling bottled water. The Panel finds that Respondent has rights and legitimate interests in the disputed domain names due to it being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Complainant has not
proven this element.
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).
Since the Panel has concluded 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.”).
Complainant has not proven this element.
DECISION
Complainant having failed to establish any of the three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <greatwater.com> and <nationwidesprings.com>
domain names REMAIN with
Respondent.
Hon. Karl V. Fink (Ret), Panelist
Dated: November 25, 2009
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