Mars, Incorporated v. Ben Chen
Claim Number: FA1109001405770
Complainant is Mars, Incorporated (“Complainant”), represented by Eva J. Pulliam of Arent Fox LLP, Washington, D.C., USA. Respondent is Ben Chen (“Respondent”), represented by Selina Chan of Safenames Ltd (Legal), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uncleben.com>, registered with 1 & 1 Internet AG.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2011; the National Arbitration Forum received payment on September 1, 2011.
On September 5, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <uncleben.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2011 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 postmaster@uncleben.com. Also on September 6, 2011, 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 September 27, 2011.
Both parties made Additional Submissions which were determined to be in accordance with the Rules.
On October 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges trademark rights in the words UNCLE BEN’S and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations. It argues, in particular, that (i) the term “Uncle Ben” is generic and is not monopolized by Complainant; (ii) Respondent has made fair use of the term prior to notice of the dispute; (iii) Complainant has not actively pursued its alleged rights.
C. Additional Submissions
Both parties made Additional Submissions which have been fully taken into account by Panel and which are discussed as necessary in the body of the Discussion which follows.
The uncontested matters relevant to the Decision are that:
1. Complainant uses the trademark UNCLE BEN’S in connection with the advertising, promotion and sale of, inter alia, rice, soups, prepared meals, sauces and gravies.
2. Complainant advertises its UNCLE BEN’S goods, amongst other places, at its website located at www.unclebens.com.
3. The disputed domain name was registered on December 2, 1999.
4. The domain name has resolved to a website with links to third-party commercial websites advertising food products having no connection with Complainant’s goods.
5. There has been no commercial or other relationship between the parties prior to this dispute.
6. Pre-Complaint correspondence between the parties failed to resolve the dispute.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is evidence of trademark rights for the purposes of the Policy[i].
Complainant holds, amongst others, United States Federal Trademark Registration No. 437,176 for UNCLE BEN’S issued March 9, 1948[ii]. Based on at least that registration, Panel finds that Complainant has trademark rights.
For reasons which emerge, the Panel also finds that on the evidence Complainant has a substantial reputation in the words UNCLE BEN’S by reason of continuous use of the trade mark since 1948 and so finds that Complainant also enjoys common law trademark rights.
Complainant argues that the domain name uncleben.com is confusingly similar to its registered trademark. Respondent submits that the disputed domain name and the trademark are comprised entirely of descriptive terms and therefore are not and cannot be confusingly similar.
The Panel notes first that, for the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored[iii].
The Panel also follows the consensus opinion of former panels that the generic character of terms comprising or contained by the disputed domain name and/or trademark under comparison is immaterial to the determination of paragraph 4(a)(i) of the Policy and should be considered, where appropriate, under paragraphs 4(a)(ii) or (iii)[iv].
Respondent nonetheless states that the differences between the domain name and the trademark are “significant enough to dispel any confusion” because the domain name is not in a possessive form as is the trademark and so the overall meaning of the compared terms is different.
The Panel does not accept these arguments. The disputed domain name merely omits the space between the words of the mark (as it must), the apostrophe and the letter “s”. These alterations are trivial and nothing of any distinguishing value turns on the consequential change from the possessive form of the term. The Panel finds without hesitation that Respondent’s disputed domain name is confusingly similar to Complainant’s trademark.
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
The publicly available WHOIS information identifies Respondent as “Ben Chen” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use the trademark.
Complainant provides evidence that, prior to filing of the Complaint, a website corresponding with the disputed domain name carried links to commercial third-party websites with advertisements for food products.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent relies on paragraphs 4(c)(ii) and 4(c)(iii) of the Policy. It states that “[P]rior to receiving any notice of this current dispute from the Complainant, the Respondent had already made use of the domain name for over 12 years, both as a private website and also for email purposes.”
Respondent asserts that the expression “Uncle Ben” is generic and explains that it registered the disputed domain name for use as a vanity email address for communicating with family and friends. Respondent is said to be from Taiwan and that in Taiwanese culture the term “uncle” is a term of respect for elders of the community. Respondent contends that it has been commonly known to its family members as “Uncle Ben”, in its words, “for many years and long before the registration of the domain name.”
Respondent contends that “in the early 2000s, individuals began to post comments on its links complaining about Complainant’s company, so Respondent removed the content and put up a disclaimer stating that it was not involved with Complainant’s company in any way.”
Respondent states that in 2003 it received a cease & desist letter from Complainant. Respondent states that it replied to that letter and the matter was not pursued by Complainant. Respondent submits that “[T]he fact that the Complainant did not pursue the domain name or initiate further contact with the Respondent beyond 2004 leads to a implicit inference that the Complainant acknowledges Respondent’s legitimate rights and interests in the domain.”
Complainant, on the other hand, provides evidence that from time to time and as early as 2001 and 2002, Respondent was linking the website corresponding with the domain name to commercial websites, some of which promoted foodstuffs. Complainant asserts that it was only after it send Respondent a cease and desist letter in 2003 did Respondent then remove those links, but that from 2007 onwards links of that same kind reappeared.
Having reviewed the evidence and the submissions of both parties, the Panel does not find that Respondent has made a compelling case under either paragraph 4(c)(ii) or 4(c)(iii) of the Policy. The evidence of a social networking site for friends and family of Respondent is perfunctory and there is uncertainty on the evidence to what extent its development predated Complainant’s earliest demand letters. Moreover, there is less than conclusive evidence that Respondent is known as Uncle Ben outside immediate family and friends. The Policy requires that a respondent be “commonly” known by a name corresponding with the disputed domain name. Discounting Respondent’s own claims, the single supporting statement in this case is from a family friend of Respondent.
Complainant relies on prior UDRP precedent which in this Panel’s opinion overstates what is required of a respondent by holding that the pseudonym must be shown to be better recognized than the relevant trademark. Respondent correctly points out that the Policy does not define the word “common”. The Panel finds it sufficient to look to an ordinary dictionary meaning of the word. The Merriam-Webster Dictionary, for example, gives as its first definition of “common” the meaning of “relating to a community at large”. The evidence that Respondent might be known as “Uncle Ben” falls very short of that.
Insofar as Respondent’s reliance on paragraph 4(c)(iii) of the Policy is concerned, the evidence is not of noncommercial or fair use of the domain name. The clearly commercial third-party websites to which Respondent’s website was periodically linked infect Respondent’s website and render paragraph 4(c)(iii) of the Policy inapplicable.
Accordingly the Panel finds that Complainant has established the second limb under the Policy.
Complainant has argued, in essence, that by reason of the extensive advertisement and promotion of its trademark since 1948, it is more likely than not that Respondent had actual knowledge of Complainant and its trademark.
Complainant further submitted evidence to show that the disputed domain name has been used in connection with a website providing links to food and rice dishes and products that are in competition with Complainant’s offerings of the same nature.
Respondent has replied in a number of ways. Respondent asserts that it had no knowledge of Complainant’s rights at the time of registration and did not register the domain name with the Complainant in mind. It states that it is from Taiwan and had not heard of Complainant’s trademark at the time of registration of the domain name.
Secondly, it submits that even if it was found that Respondent knew of the trademark at the time of registration of the domain name, the domain name is purely descriptive and openly available to Respondent on a “first-come, first-served” basis.
Respondent therefore submits that it did not register the domain name in bad faith.
So far as the alleged bad faith use is concerned, Respondent asserts that “at no time when the domain name was registered by the Respondent and the Respondent had control over the domain name, was the domain name used for any purpose which could be said to be unfairly taking advantage of Complainant.”
The Panel has added underscore to the above passage for the reason that Respondent goes on to state that “[A]t one point the public had access to Respondent’s forum page where they posted content referring to cooking, rice, recipes etc. Following which the Respondent ceased use of the page as it had been hacked. Respondent became aware of the Uncle Ben’s brand when messages posted by internet users on his forum related to the brand.”
Respondent states that the domain name was initially registered with the registrar, itsyourdomains.com. When the name was later re-registered with 1 &1 Registrar AG, that Registrar created a parking page with links relating to the terms contained in a domain name. Respondent states that the Registrar did so without Respondent’s consent and that Respondent had no control over the use of the site at that time since “as a new registration the page was occupied by the Registrar until the registrant (Respondent) made use of the page.”
Respondent therefore concludes that it has not used the domain name in bad faith and that accordingly the Complaint must be denied.
The Panel notes that Respondent has an address in California. Complainant provides evidence along with its Additional Submissions that Respondent had been first granted a U.S. social security number in 1992 and so had lived in the United States for many years prior to the time of registration of the domain name.
Respondent has made much of the fact that there is no positive evidence of its state of mind at registration however Panel points out that the UDRP would be unworkable were that a requirement. The Panel must apply a civil standard of proof and determine matters of this kind on the balance of probabilities.
Given the use and promotion of the trademark for a period of 60 years, the Panel finds that it is more likely than not Respondent knew of Complainant and its trademark at the time of registration of the disputed domain name.
The Panel did not find that Respondent has rights or a legitimate interest in the domain name under paragraph 4(c) of the Policy and now the Panel finds that Respondent registered the domain name in bad faith.
The use of the domain name is in bad faith according to the consensus of former decision makers under this Policy. On the present facts, the Panel finds no reason to depart from the uniform position. In addition, the Panel is not persuaded by Respondent’s arguments that it was the current Register which posted material potentially adverse to Respondent’s interests under the Policy since, once more, this is abundant authority in former UDRP decisions that Respondent is vicariously liable for such actions.
Finally, the Panel wishes to make it plain that statements of the kind that domain names are available on a “first come, first served” basis are over-simplifications of the correct proposition which is that the UDRP will respect and protect a first-in-time registrant where there are legitimate rights or good faith.
The Panel finds that Respondent both registered and used the disputed domain name in bad faith.
Moreover, paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant’s submissions rest on Paragraph 4(b)(iv) of the Policy to the extent that it claims that a website corresponding with the disputed domain name was set to gain commercially from the likely confusion arising from the similarity of the trademark and the domain name and the fact that the site then linked itself to third party commercial enterprises.
Were there any doubt that Respondent registered the domain name in bad faith and used the domain in bad faith, the Panel fully concurs with Complainant’s submissions in respect of paragraph 4(b)(iv) of the Policy and additionally finds registration and use in bad faith based on that scenario.
The Panel therefore finds that Complainant has established this third and final limb of its case.
Respondent argues that Complainant “has not sought to pursue the domain name until after a period of 12 years” and so some form of equitable relief should apply. In particular, it submits that laches “is a legal principle that should be taken into account in this current case.”
Respondent cites the case of Vanguard Trademark Holdings USA LLC v. Nett Corp., FA1262162 (Nat. Arb. Forum July 26, 2009), where the respondent argued that complainant waited 9 years following registration of the disputed domain name to bring the complaint, and more than six years following respondent’s reply to complainant’s cease and desist letter. The respondent in that case argued, as here, that the long delay bringing action raised the inference that complainant did not truly believe that respondent had violated the Policy.
In his dissenting decision in that case, panelist the Honourable Neil Anthony Brown QC, made the additional remarks that “the inordinate delay in bringing the complaint makes any claim of use in bad faith unsustainable.” The panelist went on to state that “[S]tanding by and allowing Respondent to use the domain name in the allegedly improper manner during … lengthy periods of time, without any explanation for how the delays came about, leaves Complainant open to the conclusion that it did not believe the claim and also that it had waived its complaint and induced or allowed Respondent to continue with its use of the domain name in that manner.”
More recently, another 3-person NAF panel has decided that delay in bringing administrative proceedings may be a valid defence in a domain dispute where the facts so warrant. In The New York Times Co. v. Name Administration Inc. (BVI), FA 1349045 (Nat. Arb. Forum November 17, 2010), the respondent had held the domain name for over 6 years during which time it had used it to develop a web business. The complainant had done nothing to assert its rights during that time. The panel in that case held “[W]here such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.”
Whether the panel in The New York Times case was describing laches or promissory estoppel is a question for another time, but what is clear is that equitable relief, which was for a very long time dismissed as inappropriate in administrative proceedings under the Policy, now seems to have gained a foothold. Nonetheless, as with all equitable remedies, application will be discretionary and each case will have to be determined on its own individual facts.
In that last respect, this Panel underlines what the Honourable Neil Anthony Brown QC had to say in the Vanguard Trademark Holdings case : “It is often forgotten that, as well as being commenced, disputes can end and an objective observer of the history of the claims and counterclaims in this case might conclude that Complainant abandoned its claim …”
So, too, in this case, Respondent’s submissions might too easily give the impression that Complainant rather too casually policed its rights. On the evidence that appears not to represent the broader landscape where Respondent’s periodic display of offending links haphazardly amalgamated with elements of personal use of the domain name presented Complainant with an object of ongoing concern. Panel does not find in the circumstances that Complainant was dilatory or indifferent to protection of its rights.
Respondent’s argument that the Panel should apply the doctrine of laches in this case is rejected. The Panel concludes that there is no reason, on the facts before it, to upset the findings it has made.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uncleben.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 17, 2011
[i] See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006)(“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See, also, United States Reg’n Nos 740,123 issued October 30, 1962; 903,134 issued November 24, 1970 and 1,695,480 issued June 16, 1992.
[iii] See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum June 27, 2003)(holding that: “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
[iv] See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007)(examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
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