Superior Growers Supply, Inc. v. Ronnie
Strobel
Claim Number: FA0504000452438
PARTIES
Complainant
is Superior Growers Supply, Inc. (“Complainant”),
represented by James R. Duby of Duby & Associates, PLC,
2510 Kerry Street, Suite 210, Lansing, MI 48912. Respondent is Ronnie
Strobel (“Respondent”), 732 Orchard Ct., Algonquin, IL 60102.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <superiorgrower.com>
and <sgs-hydroponics.com> (the “Domain Names”), registered with Go Daddy Software, Inc.
PANEL
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.
Michael
Albert as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 8, 2005.
On
April 8, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <superiorgrower.com>
and <sgs-hydroponics.com> are registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
April 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2005
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@superiorgrower.com and postmaster@sgs-hydroponics.com by
e-mail.
A
timely Response was received and determined to be complete on April 28, 2005.
A
timely Additional Submission was received from Complainant on May 3, 2005 and
was determined to comply with Supplemental Rule 7. A response to this Additional Submission was received from
Respondent on May 6, 2005. Both
Additional Submissions were considered by the Panel.
On May 5, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it has established rights
in the SUPERIOR GROWERS SUPPLY mark, for which it has obtained U.S. Trademark
Registration No. 2,671,925 (issued January 7, 2003, with a date of first use in
1983), and the SGS mark (Reg. No. 1,844,001 issued July 12, 1994, with a date
of first use in 1986).
Complainant uses these marks in connection with
retail services featuring hydroponic gardening products and related goods.
Complainant contends that Respondent registered the
domain names for use in a directly competing business relating to gardening and
hydroponic products; that the marks are confusingly similar; and that
Respondent has no license or other right to Complainant’s marks.
While the domain names are not yet in use for the
intended purpose, they redirect users to the website <drugfree.org>.
B.
Respondent
Respondent
contends that the intended purpose of the domain names will be to provide a
question and answer site for gardeners on one of them, and the second “will be
used for the business of selling specially designed hydroponic systems.”
Respondent
claims that his websites will be on-line in 12-18 months, and denies that
Complainant can be harmed in the interim by redirecting traffic to
<drugfree.org>.
Respondent
further contends that the mere similarity of domain names does not amount to
bad faith and cites examples of other domain names allegedly similar to
well-known trademarks.
C.
Additional Submissions
In
its Additional Submission, Complainant noted that Respondent had failed to
include the required certification.
Complainant
further noted that the Response admits that Respondent intends to use the
domain names for goods and services that compete directly with Complainant.
Respondent’s
Additional Submission provides the missing certification, takes issue with the
analysis of certain prior cases cited by Complainant, and cites an additional
case holding the domain name <teainc.com> to be generic or descriptive in
light of the failure of the complainant in that case to offer proof of
secondary meaning.
FINDINGS
The Panel finds that Complainant has
established that it owns federally-registered trademark rights in the marks
SUPERIOR GROWERS and SGS in connection with gardening, hydroponics, and related
goods and services. The Panel further
finds that the domain names are confusingly similar to Complainant’s
trademarks; that Respondent lacks legitimate rights or interests in these
confusingly similar domain names; and that Complainant has demonstrated that
the domain names were registered and used in bad faith.
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 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;
(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.
Complainant’s
federal registrations establish its rights in the SUPERIOR GROWERS SUPPLY (Reg.
No. 2,671,925 issued January 7, 2003) and SGS (Reg. No. 1,844,001 issued July
12, 1994) marks going back at least to these registration dates, and indeed
with common-law rights likely going back to the date of first use of each mark
in commerce in the 1980s. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <superiorgrower.com>
domain name registered by
Respondent is confusingly similar to Complainant’s SUPERIOR GROWERS SUPPLY
mark, because the domain name contains the dominant portion of Complainant’s
mark and merely deletes the generic term “supply” and the letter “s” from the
word “growers” in Complainant’s mark.
Respondent’s omissions of one generic term and one plural “s” are
insufficient to negate confusing similarity under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to Complainant’s ASPREY & GARRARD
and MISS ASPREY marks); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16,
2001) (finding that the domain name <wellness-international.com> is
confusingly similar to Complainant’s WELLNESS INTERNATIONAL NETWORK mark); see
also Hammond Suddards Edge v. Westwood
Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain
name, <hammondsuddards.net>, is essentially identical to Complainant's
mark, HAMMONDS SUDDARDS EDGE, where the name “Hammond Suddards” identifies
Complainant independently of the word “Edge”).
Similarly, the <sgs-hydroponics.com> domain
name merely adds a hyphen and a generic or descriptive term that identifies
Complainant’s goods or services to Complainant’s registered SGS mark. The addition of a hyphen and the term
“hydroponics” to Complainant’s mark does not defeat a finding of confusing
similarity. If anything, adding a term
which describes the goods or services provided by Complainant is likely to
enhance, rather than diminish, the risk of confusion between the domain name and
Complainant’s mark. See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Respondent directs the Panel’s attention
to a case which found the term “teainc” to be generic or descriptive for
tea. That case, however, turned largely
on the absence of any showing by the complainant of secondary meaning (i.e. an
association between the mark and its business or product in the minds of the
consuming public). Here, by contrast,
Complainant has two longstanding federal trademark registrations, which provide
presumptive evidence of such secondary meaning. Further evidence of such secondary meaning is provided in the
form of Complainant’s $50 million in sales of goods and services under its
marks over twenty-two years, as well as significant advertising
expenditures. If Respondent is
suggesting that the marks here are generic, the U.S. Patent and Trademark
Office disagreed, and that decision has stood unchallenged long enough for the
marks to become incontestable.
Once Complainant makes a prima facie
showing under Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Complainant claims that Respondent is not
commonly known by the <superiorgrower.com>
or <sgs-hydroponics.com> domain
names. Indeed, Respondent offers no
evidence to suggest that it is commonly known by either of these names. Respondent thus has not established rights
and legitimate interests pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
Complainant asserts (and Respondent does
not deny) that Respondent has used the <superiorgrower.com>
and <sgs-hydroponics.com> domain
names to redirect Internet users to a website at the <altgarden.com>
domain name, which promotes the sale of gardening and hydroponic products in
competition with Complainant. The use
of the domain names in a manner likely (as noted above) to confuse or divert
Internet users searching for Complainant’s products and services is not a use
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or is it a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that the respondent’s appropriation of the complainant’s mark to market
products that compete with the complainant’s goods does not constitute a bona
fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to the
complainant’s mark and that the respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods);
see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”).
Moreover, the
mere fact that Respondent, pending the development of his directly-competing
e-commerce site, is apparently redirecting traffic from the domain names to a
nonprofit organization <drugfree.org>, is likewise not a use of the
domain names in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶¶ 4(c)(i) and (iii). See
State
Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services.”); see also Toronto-Dominion Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole
purpose in selecting the domain names was to cause confusion with the
complainant's website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use). Indeed, Respondent admits that he intends to
use the domain names to develop goods or services strikingly similar in nature
to Complainant’s.
Respondent’s contention that it intends to provide
wholesale, rather than retail, services in the area of gardening and the sale
of hydroponic systems is not a sufficient distinction to undermine likelihood
of confusion or to create a legitimate interest. While channels of trade is indeed a factor to be considered in
evaluating likelihood of confusion, it is only one of many such factors; and
here, the striking similarity of both the marks and the proposed goods and
services overwhelms any arguable distinction to be drawn between the provision
of wholesale and retail services.
The Panel agrees with Complainant that
the evidence strongly suggests that Respondent has used the domain names in an attempt to profit by
intentionally attracting Internet users interested in locating Complainant’s
products and services who inadvertently leave out or add an “s” at the end of
Complainant’s <superiorgrowers.com> and <sgs-hydroponic.com> domain
names. Complainant further contends
that diverted Internet users are redirected to a competing gardening website at
the <altgarden.com> domain name.
Under Policy ¶ 4(b)(iv), this is evidence that Respondent has registered
and used the domain names in bad faith to attempt to divert Internet users for
commercial gain by attracting users to Respondent’s website through a likelihood
of confusion with Complainant’s SUPERIOR GROWERS SUPPLY and SGS marks. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent had
engaged in bad faith use and registration by linking the domain name to a
website that offers services similar to the complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with the complainant’s marks); see
also eBay, Inc v. Progressive Life
Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
the respondent is taking advantage of the recognition that eBay has created for
its mark and therefore profiting by diverting users seeking the eBay website to
the respondent’s site).
Furthermore, Respondent appears to be in
competition with Complainant.
Respondent has used confusingly similar versions of Complainant’s marks
in the domain names to divert business from Complainant to Respondent’s
competing business. Such usage is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that confusingly similar domain names were
registered and used in bad faith where the respondent and the complainant were
in the same line of business in the same market area); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from the complainant's marks suggests that
the respondent, the complainant’s competitor, registered the names primarily
for the purpose of disrupting the complainant's business).
Respondent is not saved by its
(admittedly temporary) redirection of the domain names to the <drugfree.org> website. Diversion to a third-party website unrelated
to Complainant is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See McClatchy Mgmt. Servs., Inc. v.
Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By
intentionally taking advantage of the goodwill surrounding Complainant’s mark
to further its own political agenda, Respondent registered the disputed domain
names in bad faith.”); see also Journal Gazette Co. v. Domain For
Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent
chose the domain name to increase the traffic flowing to the
<abortionismurder.org> and <thetruthpage.com> websites”).
Respondent’s own Response is telling
evidence of bad faith as well. In it,
Respondent claims that “if [his] goal was to infringe on [Complainant’s]
trademark” he would have purchased <sgshydroponic.com> or <superiorgrowerssupply.com>,
both of which, he notes, were available for purchase at the time of the
Response. First of all, Complainant
correctly rebuts that argument by noting that a complainant need not purchase
an entire library of domain names confusingly similar to its own mark in order
to be entitled to the protections of the Policy. Secondly, Respondent actually did purchase domain names
strikingly similar to the ones that he concedes would be evidence of the “goal”
of infringement. The distinctions
between the domain names he did purchase and the ones he admits would evidence
bad faith is narrow (in one case, the difference is a hyphen and an “s”). By deliberately choosing domain names
confusingly similar to Complainant’s to steer Internet traffic to his directly
competing business, Respondent has engaged in bad faith under the Policy.
Respondent offers examples of other
domain names which he suggests differ from famous marks only by the omission or
addition of the letter “s” (e.g. <wendy.com>; <mcdonald.com>;
<icanns.com>; <fords.com>; <hondas.com>). Those cases are not before this Panel, and
the reasons why ownership of those domain names may differ from ownership of
the corresponding distinctive trademark (even assuming such ownership does
differ) are not in evidence in the record of this proceeding. Indeed, Respondent does not suggest that, in
any case decided under the Policy, these issues were presented to a Panel (or
other tribunal) and decided favorably to the registrant.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <superiorgrower.com>
and <sgs-hydroponics.com> domain names be TRANSFERRED from
Respondent to Complainant.
Michael Albert, Panelist
Dated: May 22, 2005
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