Oregon Freeze Dry, Inc. v. Vertical Axis Inc.
Claim Number: FA1003001316531
Complainant is Oregon Freeze Dry, Inc., represented by Ernest
G. Bootsma, of Ater Wynne LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <easymeal.com>, registered with Nameview, Inc.
The undersigned certify that they have 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. Sir Ian Barker, G. Gervaise Davis
Complainant submitted a Complaint to the National Arbitration Forum
On April 14, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 4, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to email@example.com by email.
A timely Response was received and determined to be deficient on May 4, 2010 because the Annexes were not separated from the Response. Despite the deficiency in the Response, the Panel, in the exercise of its discretion, determined to admit the Response.
The Complainant’s Additional Submission was received on
The Respondent’s Additional Submission was received in a timely manner
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant has owned a registered United States Trademark for the
The Respondent registered the disputed domain name on
The Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contacted <domainbrokers.com> and was advised that the disputed domain name could be acquired for U.S. $10,000. Consequently, the website is merely a sham to attract buyers.
The Respondent has not made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods and services. The Complainant attempted to negotiate the purchase of the disputed domain name through <domainbrokers.com> but attempts to negotiate were initially ignored, then followed by a demand for U.S. $10,000.
The Complainant sent a “cease and desist” letter to the Registrar on
The Respondent has a legitimate interest in the disputed domain name because it incorporates the descriptive term, “Easy Meal”. The Respondent registered the disputed domain name when it had been deleted and became available for registration. The Respondent had no knowledge of the Complainant’s trademark when it registered the disputed domain name.
“Easy Meal” is a descriptive term using dictionary words denoting a simple way to prepare a serving of food. The Complainant’s trademark was based on acquired “distinctiveness” under Trade Mark Rule 2(f). Whilst not arguing that the Complainant’s trademark is invalid, the Respondent says that its registration of the disputed domain name was in good faith because the term “Easy Meal” is descriptive. Such terms can be registered on a “first come first served” basis as a domain name.
The Respondent hosts the disputed domain name with <hitfarm.com>, a service which places pay-per-click (PPC) advertising links on host domains, sharing the advertising revenue with domain name owners. This is a bona fide offering of goods and services which has been found to establish a legitimate interest in cases under the UDRP, including cases involving the present Respondent.
There is no evidence that the Respondent registered the disputed domain name with the Complainant’s trademark in mind or that it had heard of the Complainant at that time. The Respondent registered the disputed domain name more than 4 years ago.
The Complainant’s long delay in initiating action raises the inference that the Complainant did not believe the Respondent had engaged in bad faith registration or use. There are no advertisements for products on the Respondent’s website, nor any evidence the Respondent has used the disputed domain name in any way with respect to the Complainant’s trademark.
The Respondent has registered domain names solely because they incorporate common or words of descriptive terms. It has more than 40 other domain names registered which incorporate the term “easy” in a food context. Links on the Respondent’s website relate to cooking recipes and meal planning. There are no links for products associated with the Complainant’s goods and services. The link on the website which states “To purchase this domain click here” is a standard link appearing on hitfarm.com hosted webpages.
The Respondent takes no position regarding the enforceability of the Complainant’s trademark and does not contest that the disputed domain name is identical to the mark in which the Complainant has rights.
However, the Respondent claims legitimate rights and interests in the disputed domain name under Paragraph 4(c)(i) of the Policy. It cites a number of cases under the Policy where common words and descriptive terms are legitimately subject to registration as domain names on a “first come first served” basis. The are several decisions under the Policy in which it has been held that the operation of PPC websites can amount to a bona fide offering of goods and services – See C Brewer & Sons Ltd. v. Vertical Axis, Inc., D2009-1759 (WIPO Nov. 4, 2010) and Accetta v. Domain Admin et al, FA 826565 (Nat. Arb. Forum Jan. 2, 2007).
The Respondent’s business has been held legitimate on more than one occasion – See Le Hara v. Vertical Axis, Inc., FA 1225832 (Nat. Arb. Forum Nov. 24, 2008), and Nursefinders, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO May 7, 2007).
The Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith. The Respondent simply registered it when it became available due to deletion. The Respondent’s record in domain name disputes does not establish that the disputed domain name was registered in bad faith – See the Nursefinders case, supra and Bright Horizons Family Solutions, Inc. et al v. Vertical Axis, Inc., D2007-0795 (WIPO Dec. 10, 2007).
There is no evidence to show that the disputed domain name was registered with the Complainant in mind. As for the suggestion that the disputed domain name could be acquired for U.S. $10,000, anyone has a right to sell a registered domain name based on its descriptive meaning. Such a sale does not establish bad faith but can support a respondent’s legitimate interest – See Audiopoint v. eCorp, D2001-0509 (WIPO June 20, 2001) where it was said that speculation in domain names without any intent to profit from other’s trademarks may itself constitute a bona fide activity under Paragraph 4(c)(i) of the Policy.
Although it is acknowledged that the doctrine of laches does not apply under the Policy, cases such as Brewer, supra and Vanguard Trademark Holdings USA LLC v. Nett Corp, FA 1262162 (Nat. Arb. Forum July 26, 2009) show that there is merit in the argument that, if a complainant were confident its allegation of bad faith registration, it would not have delayed so long in bringing the Complaint, especially in the absence of an explanation for the delay.
The Response was backed by a declaration by one Julie Marshall, Manager and Financial Controller of the Respondent who made a statement “Proffered under penalty of law for making false statements”. However the Panel notes that there is no statement of where this declaration was made or what the law of what jurisdiction was being suggested as providing a penalty for making false statements. While many jurisdictions have such laws, a statement such as Ms. Marshall’s can only have the weight to be accorded to such a statement if the deponent states the jurisdiction in which the declaration was being made. Otherwise, there is no effective sanction for a false statement.
C. Complainant’s Additional Submissions
The Complainant’s mark has acquired a secondary meaning pursuant to s 2(f) of the U.S. Trademark Act. The USPTO found the mark to be distinctive when used in connection with the Complainant’s goods and commerce. It has acquired special significance in that the products are produced by the Complainant, a leader in the production of freeze-dried food.
The Complainant is a producer of high quality freeze-dried foods, including the widely recognized “Mountain House” brand of meal packages. A declaration was attached from a Mr. J.S. Merryman, Senior Vice President of the Complainant. It was based on his personal knowledge, he having been employed by the Complainant for 36 years.
In the early 1970s, the Complainant was producing and selling the “Mountain
House” brand of freeze-dried foods. In
1977, it established the “Easy Meal” line of products originally designed to
provide meals for senior citizens. The
Easy Meal line of products has been strongly identified as a product of the
Complainant’s. It is sold to wholesalers
In connection with developing the new marketing and advertising materials, the Complainant sought to create its first website for a sole product to assist renewed marketing efforts. It was not until November 2009, that the Complainant became aware of the Respondent’s registration of the disputed domain name. It promptly attempted to ascertain the owner in order to acquire the domain name. It was not able to ascertain the true owner and attempted to negotiate the purchase of the disputed domain name through an identity shield.
The declaration was offered by Mr. Merryman under penalty of law for
making false statements. Although one
can assume that it had been made in the State of
The Respondent’s use of the disputed domain name does not qualify it under Paragraph 4(c)(i) of the Policy. There is not a bona fide offering of goods and services since the Respondent’s sole activity is to post advertising links relating to cooking recipes and meal planning.
With regard to the cases where Panels have found that the parking of domain names and offering and collecting PPC advertising revenue can be a bona fide activity, each case must be viewed on its merits. The operation of a PPC website of a confusingly similar domain name was not a bona fide offering of goods and services in ConsumerInfo.com, Inc. v. Netcorp c/o Netcorp, FA 1283469 (Nat. Arb. Forum Nov. 11, 2009).
The Complainant exhibited a copy of the Respondent’s website wherein copies of each link to which the main page presently directs show links (inter alia) to competitors of the Complainant, selling packaged meals, as well as other links to party buses or Facebook pages.
According to paragraph 2 of the Policy, it is the Respondent’s responsibility to determine whether its domain name registration impinges on or violates someone else’s rights. A sophisticated company in the business of buying and selling domain names should have known and been able to ascertain that the Complainant held a trademark – See mVisible Techs., Inc. v. Navigable Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007) where it was said:
“A sophisticated domainer who regularly registers domain names for usage as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights.”
Those who register domain names, and particularly those who register
domain names in large numbers, may not simply turn a blind eye to the
possibility that the names they are registering will infringe or violate the
rights of trademark owners. That
responsibility derives from Paragraph 2 of the Policy – See Grundfos A/S v.
By directing traffic to sites of competitors or confusing customers of the Complainant, the Respondent creates confusion with the intent of driving up the price of the disputed domain name. The Respondent’s registration and use of the disputed domain name is in bad faith.
As to timing, the Complainant traditionally sold products under the
mark to wholesalers. Therefore, it did
not have a website for the Easy Meal product line until it recently began
preparations for retail
D. Respondent’s Additional Submission
The Complainant does not have a monopoly on the descriptive term “Easy Meal”. There are other third parties that use the description in advertising.
It is well established that the use of a domain name to display links related to the descriptive meaning of the term incorporated in the domain constitutes a bona fide offering of goods and services establishing the Respondent’s legitimate interest. Therefore, it is no surprise that some of the linked advertisements feature other entities in the prepared food industry. That is why advertisements for competitors of the Complainant appear in the links on the website.
Even if the Respondent had conducted a trademark search before registering the disputed domain name, a search would not have prohibited the Respondent from registering a descriptive term in a domain name. A trademark is not a monopoly on a term contained in a trademark and ownership of the trademark does not entitle the registrant to a matching domain name.
In Playboy Enters. Int’l Inc. v. Carvalho, D2008-1944 (WIPO Feb. 24, 2009), it was said the fact that the complainant had numerous trademarks for the word “Playboy” did not mean that it had a monopoly over any and all uses of the term. The Complainant does not have a monopoly on the term “Easy Meal”. The failure to conduct a trademark search does not support a finding of bad faith registration.
The disputed domain name is identical to the trademark in which the Complainant has rights.
The Respondent has no rights or legitimate interest in respect of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
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.
The Respondent does not challenge that the disputed domain name is identical to the Complainant’s trademark. Accordingly, Paragraph 4(a)(1) of the Policy has been established.
It is trite jurisprudence under the Policy that, once a Complainant establishes that it gave no rights nor interests to the Respondent, the burden shifts to the Respondent to show, on the balance of probabilities, that it comes within one or other of the exceptions in Paragraph 4(c) of the Policy. Here, the Complainant gave no rights or interests to the Respondent.
On the facts of this case, the only relevant exception is Paragraph 4(c)(i) which requires the Respondent to prove that, before any notice to the Respondent of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
There is nothing in the evidence to suggest that the Respondent’s use of the disputed domain name occurred only after notice of the dispute. The question then is whether its prior use has been in connection with a bona fide offering of goods or services.
Many panels have held that a respondent can have rights or legitimate interests in domain names that are composed of common descriptive or generic words even if those names correspond to a valid trademark.
For example, the Le Hara case, supra and the cases therein referenced.
Moreover, according to the circumstances, a PPC revenue from the use of domain names is a legitimate model under the Policy. As was said in Weathershield Mfg., Inc. v. Phan, D2007-1247 (WIPO Oct. 10, 2007):
The Respondent has also made commercial use of the domain name for extended periods in the form of third party marketing, pay-per-click advertising and listing the domain name for resale. These might according to the circumstances represent use in connection with a bona fide offering of goods and services, particularly with a domain name of a dictionary word and if there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks.
It is proper to note that the Respondent’s modus operandi has been held on at least one occasion not to fall foul of the Policy. For example, in Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) the Panel stated:
In the English language a domain name is a generic or descriptive expression. The Respondent says that it is in the business of acquiring such names that have either expired or been deleted and the Panel has no reason to disbelieve that statement. Indeed, the earlier decisions under the Policy in which the Respondent has been a party appear to confirm that description of the business.
The complaint failed in the Le Hara case, supra because the Complainant provided no evidence of reputation for or common law rights in the trademark and there was nothing to give rise to a rebuttable inference that the Respondent had been aware of the Complainant’s trademark at the date of registration of the disputed domain name. The Complainant there relied purely on constructive knowledge of its trademark rights because of a federal registration. The Panel rejected that argument because registration of the complainant’s trademark had been merely pending at the time the disputed domain name was registered.
Cases where a Respondent has been imputed
with knowledge of the complainant’s federally registered mark have often been
confined to instances where both parties were located in the
Here it is not clear where the Respondent is
located. It operates under a privacy
A decision under the second limb of the Policy really melds into an investigation into the third limb where the prime enquiry must be whether the registration of the disputed domain had been in bad faith. In both fields of enquiry, the focus must be on whether there is persuasive evidence that the Respondent was more likely than not to have been aware of the Complainant’s trademark at the time of registration of the disputed domain name. The ‘wilful blindness’ concept at the time of registration also falls for consideration.
The Complainant has produced evidence that it has a considerable reputation in the preparation of easy meals. It has been operating extensively under the mark EASY MEALS since 1977, long before registration of its trademark. This marketing was done mainly through wholesalers with a change in emphasis to retail only occurring in 2009.
The Complainant’s mark has been long-established and it has built up a considerable reputation in the marketplace, so that, unlike in the Le Hara case where there was no evidence of common law rights based on reputation, there is a rebuttable inference that the Respondent should have been aware of the Complainant’s trademark at the time it registered the disputed domain name.
A number of Panels have concluded that a Respondent has the right to register and use a domain name to attract Internet traffic based on the use of a commonly-used descriptive phrase, even where the domain name is confusingly similar to a trademark. Where a Respondent registers a domain name consisting of “dictionary words”, because the Respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith may establish a legitimate interest.
But the domain name must have been registered because of any use consistent with, the attraction as a dictionary word or descriptive term and not because of its attraction as a trademark – See HSBC Fin. Corp. v. Clear Blue Sky, Inc. & Domain Manager, D2007-0062 (WIPO April 6, 2007) and the cases there gathered. See also Media Gen. Comm’ns, Inc. v. Rarenames, D2006-0964 (WIPO Sept. 23, 2006) where the Respondent, a domain name reseller, did not indicate what steps it has taken in good faith to avoid registering domains which correspond with trademarks.
So it follows that, if the Respondent had registered
the disputed domain name purely because of its attraction as a generic or
dictionary expression and did so in good faith and not because of its
attraction as a mark, it will succeed.
The Respondent will in that situation have proved that its offering of
goods and services is legitimate under
There are many cases under the Policy where a respondent registering a domain name in Country A, is not deemed to be aware of a trademark registered in Country B. That proposition is somewhat simplistic when applied to a sophisticated domain name operator which makes its living out of acquiring expired domain names as and when they become available.
The discussion under this heading calls for consideration of the question whether the Respondent should have conducted a search of the USPTO Register before acquiring the disputed domain name.
In mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 20, 2007), a distinguished Panel underscored, as have other Panels, the notion that a sophisticated domainer cannot be “wilfully blind” to whether a particular domain name may violate trademark rights. The Panel commented that the USPTO website is free and easily searchable for trademark registrations and applications. That Panel also stated that an assertion that a Respondent was not familiar with the Complainant’s trademark is not enough to avoid a finding of bad faith registration.
Similar statements were made in Starwood Hotels & Resorts Worldwide,
Inc., Sheraton LLC & Sheraton Int’l v. Porter, D2007-1254 (WIPO Oct. 23, 2007) and Grundfos A/S v
Whilst there is no general rule that a domain
name registrant ought to search the trademark registers of the world before registering
its domain name, it is hard to see why a sophisticated operator such as this
Respondent would not have checked the readily-available
The Respondent cannot say it does not bear responsibility for the sponsored links appearing on its website. It cannot disclaim responsibility for those links which concern the field of commercial activity in which the Complainant is a major player – See the Grundfos case, supra where, at page 20, several authorities to that effect were quoted with approval.
It follows from this line of authority that the Respondent cannot distance itself from the invitation on the website to interested persons to purchase the disputed domain name. In the Panel’s view, this notice inclines the balance to holding that the registration was in bad faith because it rather indicates that a major (but not necessarily the only) purpose in registering the disputed domain name was to make it available for sale. The profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name. It is no excuse to say that the offer to sell is standard on a particular PPC website.
In the Panel’s view, it is this factor of willingness to sell the domain name which distinguishes the present case from those where the Respondent’s activities have been held to be legitimate where it has used a domain name using expressions found in a registered trademark, where the domain was acquired because it had expired and where a legitimate business of PPC advertising was being conducted.
Accordingly, in the Panel’s view, the
inference from the evidence is that there was bad faith registration and,
accordingly, the Complainant has succeeded in proving the third limb of the
Policy and also in showing that the Respondent did not come within
A majority of the Panel, having established all three elements required under the ICANN Policy, concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <easymeal.com> domain name be TRANSFERRED from Respondent to Complainant.
G. Gervaise Davis
Dated: June 10, 2010
The majority finds bad faith because of the offer to sell the domain, but of course, that is what domain resellers do. I find that to be a legitimate business (as it is for all of the ICANN-approved registrars) unless there is a clear intent to target a particular mark owner.
Here, the Respondent’s business is limited to selling names which have common meaning and can be used in their descriptive sense without infringing a mark. He is not a cybersquatter who seeks particular trademarks to target. However, common words also appear in trademarks, so invariably some of Respondent’s domains will be confusingly similar and even identical to someone’s trademark, and in fact may appear in multiple trademarks since common words are commonly used in marks. To argue that a registrant who chooses descriptive terms and then must be held accountable because it later discovers them to be trademarked by some relatively obscure mark owner is completely the opposite of the UDRP principle. The UDRP is intended to prevent the intentional targeting of mark owners for commercial advantage and not registrations made solely for fair use purposes whether or not they correspond to a mark.
It is a domain’s descriptive use which both makes it valuable for resale and which also establishes the Reseller’s right and legitimate interest. Respondent never sought out the Complainant to effect a sale; it simply offered the domain for sale to anyone. The majority expects Respondents to search the trademark databases of the world before registering a mark. This seems illogical. If the Respondent were truly targeting a mark, it would have knowledge of the mark without such a search. And even if such a search turned up multiple identical or confusingly similar marks (as a USPTO search of this term does), Respondent still has no intent to use the mark other than in a descriptive sense which remains a fair and legitimate use regardless of the number of marks involved. It is my opinion that the mark owner who chose to adopt a descriptive term (and even had to wait 5 years to develop distinctiveness as is the case here) must accept the consequence of their choice. The consequence is that the world remains free to use the descriptive term in a descriptive fashion.
The Complainant sold its goods primarily to wholesalers until quite recently, so there was little evidence of any consumer recognition at the time the domain was registered. In fact, the domain had been registered for nearly 4 years before the complaint was filed, a filing which corresponds to Complainant’s recent decision to change its marketing strategy and sell directly to the public. Because the mark had little consumer recognition at the time of registration, I do not believe that there was a valuable flow of mark-related traffic that Respondent was attempting to attract.
Nor is there evidence that this mark owner was specifically targeted for abuse. The .com domain in no longer the only available domain, so Complainant could easily have chosen many other top level domains for its registration rather than purchasing the Respondent’s registration. It need not have paid Respondent’s price as Respondent surely knows.
Overall I see none of the hallmarks of cybersquatting. I find for the Respondent.
Diane Cabell, Esq., Panelist