Greatwater, Inc. v. Greatwater Custom Label (2004) Inc
Claim Number: FA0910001287920
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.
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.
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.
Complainant requests that the domain names be transferred from Respondent to 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.
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
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
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.
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 –
For the reasons set forth below, the Panel finds Complainant is not entitled to relief.
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.
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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