Canine Lifesavers, Inc. v. Papaloa Press
Claim Number: FA1006001329056
Complainant is Canine Lifesavers, Inc. (“Complainant”), represented by Barbara
Newberg, of Canine Lifesavers, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <k9lifesavers.org>, registered with Network Solutions LLC (R63-LROR).
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.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010.
On June 9, 2010, Network Solutions LLC (R63-LROR) confirmed by e-mail to the National Arbitration Forum that the <k9lifesavers.org> domain name is registered with Network Solutions LLC (R63-LROR) and that the Respondent is the current registrant of the name. Network Solutions LLC (R63-LROR) has verified that Respondent is bound by the Network Solutions LLC (R63-LROR) 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 June 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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 firstname.lastname@example.org. Also on June 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 6, 2010.
Complainant’s Additional Submission was received on July 8, 2010 in compliance with Supplemental Rule 7.
On July 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that this action is based on the trademark K9 LIFESAVERS which Complainant purportedly holds common law rights in based on use. Complainant received a certificate of incorporation in 2005 and 501(c)(3) status in 2006 under the name Canine Lifesavers, Inc. Thereafter Complainant asserts that it used the mark and, “As a result, Complainant and Complainant’s services have become commonly known to members of the public by the domain name at issue.” Complainant further contends that the disputed domain name should be transferred “because it is identical, or in the alternative, confusingly similar to the trademark in which the Complainant has rights.” Complainant also asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name and that the domain name “should be transferred to Complainant because it should be considered as being used in bad faith.”
Respondent contends that Complainant’s claim must fail because Complainant gave Respondent written permission to use the domain name and that the Complainant does not have a registerable trademark. Respondent argues that the mark K9 LIFESAVERS is descriptive and unprotectable because Complainant has not shown that the mark has acquired any secondary meaning. Respondent further asserts that the Complainant acknowledged the Respondent’s ownership right to the domain name and that “it is undisputed that Respondent purchased the domain name <k9lifesavers.org> in good faith and is the owner of that domain name.”
C. Additional Submissions
Complainant’s additional submission reasserts Complainant’s rights to the mark K9 LIFESAVERS based on common law principles. Complainant’s additional submission states that Complainant does not choose to address whether the mark is descriptive or would be found so by a court or other body but does take issue with its alleged failure to show that it has provided sufficient evidence of secondary meaning. Complainant also emphasizes that the Respondent is not commonly known by the disputed domain name and contends that due to Respondent’s use of the disputed domain name in a competitive enterprise Respondent’s use of the disputed domain is not for a bona fide offering of goods or services nor is Respondent making a legitimate non-commercial or fair use of the domain name.
Respondent’s additional submissions restate the contention that Complainant has failed to support its claim that is has protectable rights in the mark K9 LIFESAVERS. Respondent takes particular issue with Complainant’s alleged proof of secondary meaning and greatly disputes what portion of the public must believe that the mark embodies the good or service in question. Respondent asserts that it is the “purchasing public” contrary to Complainant’s statement that it is not its duty to prove that it has acquired secondary meaning with the public in general but instead only show that the mark K9 LIFESAVERS is identified as associated with the Complainant by the public relevant to this case. Respondent further asserts its rights to the disputed domain as a result of its purchase of the same and the Complainant’s refusal to purchase the mark when Respondent offered Complainant the opportunity to do so.
Complainant is a non-profit business incorporated under the name Canine Lifesavers, Inc. which states that since becoming publicly active it has continuously and interchangeably used the names “Canine Lifesavers”, “K9 Lifesavers” and “K-9 Lifesavers” on materials distributed to the public. Complainant is a dog rescue operation that provides various services related to homeless and abandoned dogs and those who want to take care of them. Complainant claims to have expended a great deal of resources in building and maintaining a reputation for the services it provides under the name “K9 Lifesavers”.
Complainant and Respondent previously worked together regarding the establishment and operation of the Canine Lifesavers dog rescue business. In fact most of the documents provided in the case by both parties are replete with accusations of wrongdoing concerning the initiation, operation and change in the business. At one time or another both parties apparently had counsel to assist them in sorting out their respective rights and affairs regarding the business assets but unfortunately that assistance did not extend to the disputed domain name or these UDRP proceedings. The Complainant and Respondent worked together to register and establish a website at <k9lifesavers.org>; however when their business dispute arose it resulted in one or more officers of Complainant’s organization establishing a separate dog rescue organization identified as “Lucky Dog Animal Rescue”. The Lucky Dog organization began using the disputed domain name. When the parties were unable to resolve ownership issues regarding the disputed domain name Complainant “registered the domain name www.k-9lifesavers.org as an alternative site to host Complainant’s web content.” Complainant settled for complete deactivation of the website at the disputed domain initially believing it the best alternative especially in light of its desire to avoid incurring legal expenses that would take away from its operating funds. Complainant later had a change of mind primarily motivated by calls it allegedly received regarding confusion between its business and that of the Respondent and thereafter demanded that Respondent transfer the disputed domain to Complainant.
Respondent initially offered assistance which the Complainant accepted regarding the domain name purchase and the designing of the Complainant’s website. Respondent purchased the disputed domain name for Complainant when Respondent’s daughter held the office of Co-Executive Director of the corporation. The respective pro se pleadings filed by the parties to this proceeding agree on that point and the other basic historical facts noted above but then veer wildly into allegations of misdeeds by each other relative to the changes in the corporate structure of Complainant’s business and the actions by the Respondent and others in establishing a similar business. The allegations by each party involve, but fail to specifically address, many of the root issues relative to the disputed domain including but not limited to who had authority regarding the domain name, the website content that resolved to it and any documentation or other indication as to what would happen should a dispute arise between the officers of the company in regards to domain name(s) and/or website data.
Some panels have held that business or contractual disputes are outside the scope of the UDRP proceeding. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
See also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
The panel in the instant proceeding
is unaware of whether the parties have contemplated or instigated any judicial
proceedings to address the tangled business relationship that the parties
shared. However there is a disputed domain name and allegations have been made
by the Complainant in accord with the UDRP policies which the Respondent has
also addressed. The Panel feels that based on what has been presented by the
parties the narrow question of who has a superior claim to the disputed domain
name at this time can be separated from the other issues in dispute and
resolved in this proceeding. Other judicial actions may impact the decision of
this Panel on a subsequent occasion but that is always a possibility in UDRP
cases and thus an insufficient reason to refuse to decide a matter when the
behavior of the parties has properly brought their case to this stage. See Weber-Stephen Prod.
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.
Complainant asserts common law rights to the mark K9 LIFESAVERS through its continuous use of the mark since 2006 and consequent establishment of secondary meaning in the mark. A trademark registration is not necessary if a Complainant can establish continuous use and secondary meaning that supports a finding of common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends that it was incorporated and registered as a 501(c)(3) under the name “Canine Lifesavers, Inc.” in 2005 and since then has consistently used the names “K9 Lifesavers,” “K-9 Lifesavers,” and, less often, “Canine Lifesavers” on its publicly distributed literature and communications. Complainant provides evidence of its brochures that refer to the organization under the “K9 Lifesavers” name.
Complainant also supplies evidence of its use of the names “K9 Lifesavers” and “K-9 Lifesavers” to refer to itself in emails between Complainant and other companies, on online postings relating to dog adoptions and as a reference on other websites. Complainant further provides several examples of use of the mark by others in referring to Complainant such as an invitation from another business, an event announcement, another company’s Annual Report and a notice on a blog. Complainant also offers some evidence of advertising expenditures used for advertising its services which it says are based on the K9 LIFESAVERS mark.
Complainant alleges that Respondent’s <k9lifesavers.org> domain name is identical to Complainant’s K9 LIFESAVERS mark because the only variations between the two are the elimination of the space between the terms and the addition of the generic top-level domain (“gTLD”) “.org.” Omitting a space or affixing a gTLD such as “.org” is generally insufficient to create a domain name distinct from a Complainant’s mark according to Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
However to successfully fulfill this requirement and the other elements of the UDRP policies, the Complainant must have a protectable mark and the Complainant in this case fails to provide sufficent evidence to support its assertion to rights in the mark K9 LIFESAVERS. Complainant stated that it used the mark interchangeably with other marks and that it changed its original website to utilize one of the other marks that it had also been using on a continuous basis. Respondent asserted that the K9 LIFESAVERS mark is a descriptive mark and thus is not ordinarily protectable as a trademark without a showing of establishment of secondary meaning in the mind of the public. While Complainant stated it was not going to specifically address whether the mark was descriptive or to whom it may be deemed descriptive, Complainant did provide what it felt was evidence in support of secondary meaning. The parties disagreed on the type of evidence required to show secondary meaning as well as to whom the relevant public is when secondary meaning is being established.
For a successful claim of secondary meaning to arise normally a complainant must show that the mark to which the rights are being asserted to has become a distinctive identifier associated with complainant’s goods or services. A complainant can establish the requisite proof by providing evidence in the form of data on the length and amount of sales under the mark, the nature and extent of advertising utilizing the mark, consumer surveys or indicia of proof of media recognition. See, Deborah Kanani d/b/a Mendocino Weddings v. Ted Kidwell, D2004-0159 (WIPO May 27, 2004) (“While it is undisputed that Complainant has carried out her business under the [descriptive term] for over a decade, no other credible evidence concerning the other tests has been introduced. . . . Notably, Complainant has not submitted evidence of total advertising expenditures, the amount of sales under the mark or most importantly, a consumer survey or evidence of media recognition . . . .”) The data need not be associated with the general public but specific data about the relevant consumer base for the goods or services in question must be provided and evidentiary information of the type noted must be offered in support of the contention that the relevant consumer base recognizes the mark in question as the distinctive identifier of the Complainant’s goods or services.
In the instant proceeding little to no specific evidence was provided regarding the consumer base that purportedly associated the claimed mark K9 LIFESAVERS with the Complainant. Data on the length of use was disputed, and specific sales and advertising data was either lacking or inconclusive in terms of its relation to the claimed mark as opposed to other marks the Complainant used. Disparate and random documentation along with assertions of use of the claimed mark interchangeably with other similar marks is not enough to support a claim that one has protectable common law rights in a mark based on secondary meaning. See DotNetNuke Corporation v. Namebubble, LLC, FA 1180949 (Nat. Arb. Forum June 18, 2008)(holding in favor of Respondent because Complainant had not provided evidence to establish secondary meaning). See also, United States Fire Arms Manufacturing Company v. Salvia Corporation, FA 612350 (Nat. Arb. Forum Feb. 1, 2006)("The type of evidence generally required to support a finding of common law rights in a mark includes business sales figures, revenue, advertising expenditures, number of consumers served, and evidence that there is a strong identification of the mark with Complainant's goods or services").
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) due to Complainant’s failure to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See 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 element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Complainant has not proven this element.
Because the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: July 27, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum