California Organic Fertilizers, Incorporated
v. V3 Holdings, LLC
Claim Number: FA0601000618076
PARTIES
Complainant is California Organic Fertilizers, Incorporated (“Complainant”) 2641 S. Maple Ave., Fresno, CA, 93725. Respondent is V3 Holdings, LLC (“Respondent”), PO Box 877, Gonzales, CA, 93926.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <californiaorganicfertilizer.com>, <phytamin.com>, and <preplantplus.com>, registered with Wild West Domains, Inc.
PANEL
The undersigned certify that they acted independently and impartially
and that to the best of their knowledge they have no known conflict in serving
as Panelists in this proceeding. Rodney
C. Kyle, Esq., Sally M. Abel, Esq. and Hon. Carolyn Marks Johnson sit as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically January 4, 2006; the National Arbitration Forum received a hard
copy of the Complaint January 4, 2006.
On January 4, 2006, Wild West Domains, Inc. confirmed by e-mail to the
National Arbitration Forum that the <californiaorganicfertilizer.com>, <phytamin.com>, and <preplantplus.com> domain names are registered with Wild West
Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. verified that
Respondent is bound by the Wild West Domains, Inc. registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 31, 2006, 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@californiaorganicfertilizer.com;
postmaster@phytamin.com; and postmaster@preplantplus.com by e-mail.
A timely Response was received and determined to be complete January
31, 2006.
On February 8, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Rodney C. Kyle, Esq., Sally M. Abel, Esq., and Hon.
Carolyn Marks Johnson as Panelists.
Former Judge Johnson writes for the Panel.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1.
The domain
names that Respondent registered are identical or confusingly similar to marks
in which Complainant has protected common law rights or legitimate interests.
2.
Respondent has
no rights to or interests in the domain names that contain, in their entirety,
Complainant’s protected marks.
3.
Respondent
acted in bad faith in registering and using domain names that contain
Complainant’s protected marks.
B. Respondent made the following allegations in
response:
1.
Complainant has
no such rights to or limited interests in the domain names because they contain
generic words.
2.
Respondent
acquired interests in the domain names at a point earlier in time than any rights
that Complainant has in the alleged marks.
3.
Respondent did
not act in bad faith.
FINDINGS
Complainant is California Organic
Fertilizers, Inc., and has been using “PrePlant Plus,” a “recognized Brand Name
product” of Complainant, in the organic market place for more than ten
years. Complainant also produces
Phytamin, a liquid organic fertilizer.
Complainant alleged that Respondent directed
the <californiaorganicfertilizer.com> domain name to an
adult website, an area outside the commercial scope of Complainant’s area of
commerce and Complainant alleged that Respondent did so to harm the goodwill
associated with Complainant’s business.
Complainant supported this allegation with purported proof.
Respondent is
V3Holdings, LLC.
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 and 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 Complainant to 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)
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 established in this proceeding that it has common law rights in the CALIFORNIA ORGANIC FERTILIZERS, PHYTAMIN, and PREPLANT PLUS marks. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant contends that the <californiaorganicfertilizer.com>, <phytamin.com>, and <preplantplus.com> domain names are identical or confusingly similar to Complainant’s CALIFORNIA ORGANIC FERTILIZERS, PHYTAMIN, and PREPLANT PLUS marks. The domain name that Respondent registered, <californiaorganicfertilizer.com>, features Complainant’s entire CALIFORNIA ORGANIC FERTILIZERS mark, but deletes the letter “s” in fertilizers. The disputed domain names that Respondent registered, <phytamin.com> and <preplantplus.com>, feature Complainant’s marks for two products that Complainant produces and markets and are identical to them. The Panel finds that deleting the letter “s” from an otherwise identical mark or adding the generic top level domain “.com” do not distinguish Respondent’s domain names from Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent contends that Complainant failed to establish rights in the CALIFORNIA ORGANIC FERTILIZERS, PHYTAMIN, and PREPLANT PLUS marks. The Panel finds that the documents in the file support a finding of common law rights for the purposes of Policy ¶ 4(a)(i). But see Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”). From admissions by Respondent as well as Complainant’s evidence, the Panel finds that Complainant established use of the marks in commerce while Respondent showed no use other than the domain names that utilized Complainant’s marks.
The
Panel finds that Complainant satisfied the requirements of ICANN Policy ¶
4(a)(i).
Rights to and
Legitimate Interests:
Complainant made a prima facie showing in support of its allegations that it had common law rights to the marks that are contained in their entirety within the disputed domain names that Respondent registered. Once Complainant makes a prima facie showing, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has used or is using the infringing domain names, <californiaorganicfertilizer.com>, <phytamin.com>, and <preplantplus.com>, to operate a website featuring links to various competing and non-competing commercial websites from which Respondent presumably receives referral fees. The Panel finds that such diversionary use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Furthermore, Complainant contends that Respondent is neither commonly known by any of the CALIFORNIA ORGANIC FERTILIZERS, PHYTAMIN, and PREPLANT PLUS marks nor licensed to register domain names featuring these marks. The Panel finds that the documents in the file establish that Respondent is not commonly known by the disputed domain names for the purposes of 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).
Policy ¶ 4(c) does not avail Respondent.
Respondent contends
that the <californiaorganicfertilizer.com> and <preplantplus.com> domain names
are made up entirely of generic terms used to describe the business in which
Respondent has engaged since its inception in 1987. Respondent did not explain how Respondent acquired a right to use
the same exact generic words that Complainant has used for sometime and that
relate to Complainant’s specific operation along with Complainant’s
products. The Panel is not persuaded by
Respondent’s argument that the domain names are comprised of generic words when
the evidence shows that Respondent knew of Complainant’s use of the specific
business name and products.
The Panel finds that Complainant satisfied the
requirements of ICANN Policy ¶ 4(a) (ii).
Complainant alleged that Respondent acted in bad
faith when Respondent registered and used Complainant’s marks in domain
names. Respondent registered
domain names using Complainant’s business name, <californiaorganicfertilizer.com>, and two of Complainant’s products, <phytamin.com>, and <preplantplus.com> and operated
websites featuring links to various competing and non-competing commercial
websites. The Panel presumes that
Respondent did so for its own commercial gain.
The Panel finds that such registration and use is, in fact, evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(ii), (iii) and (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
The Panel finds that Respondent registered and used domain names containing marks in which Complainant has shown that it had prior common law rights through use in commerce and that Respondent did so knowingly, based on the documents in the file in this Arbitration.
The
Panel finds that Complainant satisfied the requirements of ICANN Policy ¶
4(a)(iii).
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 <californiaorganicfertilizer.com>, <phytamin.com>, and <preplantplus.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panel Chair
Rodney C. Kyle, Esq., Panelist
I must dissent. Complainant has failed to meet its burden as to each of the domain names at issue. Complainant has not satisfied the first prong of the test—that the domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights—as to two of the domains, and fails to establish no right or legitimate interest and bad faith registration and use as to the third.
<californiaorganicfertilizer.com>: “California Organic Fertilizer” is generic, or descriptive at best. It is basic trademark law that generics are never protectible as trademarks, and descriptive marks are only protectible with a showing of secondary meaning. The only evidence Complainant submits as to rights in “California Organic Fertilizers” is its virtually unsupported claim of having “begun business in December of 1989” and having been “incorporated in the State of California in 1992,” and a handful of documents showing use of that company name in 1996, 1998, 2000, and 2004. Even assuming that Complainant has used that name continuously since 1989, that does not establish 1) that Complainant uses it as a trade mark or service mark (as opposed to as a company name) or 2) that it is not generic or 3) that if Complainant actually did use it as a trade mark or service mark, it has sufficient consumer recognition in the phrase as to have established “secondary meaning” for purposes of trademark ownership in an otherwise totally descriptive phrase. Complainant does not satisfy the first prong of the test; accordingly, there is no need to address the latter two prongs.
<preplantplus.com>: As Respondent points out, “preplant” essentially is a generic term in the parties’ industry for a fertilizer used early in the season. “Plus” adds little or no distinctive value. Complainant provides paltry evidence of its use of PREPLANT PLUS as a trademark, but Respondent points to evidence that Complainant’s product name is not “Preplant Plus” but “Phyta-Grow Pre-Plant Plus.” While both parties appear to claim exclusive rights to PREPLANT PLUS it appears that neither can successfully claim exclusive rights to this highly descriptive, if not generic phrase, at least not in the context of these proceedings and with the evidence before us. In this context, I completely disagree with my colleagues’ suggestion that a generic “mark” might somehow become protectible where the respondent knows of the complainant’s prior use. This is not the law. As to <preplantplus.com>, I would rule that Complainant fails to satisfy the first prong of the UDRP test, and it is not necessary to further address Complainant’s claims.
<phytamin.com>: Although Complainant has provided very little evidence of any trademark use (only two product listings), since Respondent acknowledges Complainant’s trademark rights, I am satisfied that the first prong of the test has been satisfied. However, Complainant fails to establish the remaining two prongs—that Respondent has no rights or legitimate interest, and that Respondent has engaged in bad faith use and registration. Complainant provides us with copies of the web page accessed at <phytamin.com>, which appears to compare Complainant’s PHYTAMIN product to what appears to be Respondent’s competitive product “Biolizer.” Respondent asserts that it is making a fair use of “Phytamin.” Comparative advertising is, of course, permitted under United States law. Whether Respondent has exceeded the bounds of acceptable use is not a decision for this Panel to make in the narrow confines of a UDRP proceeding and on the extremely limited record before us. Respondent has raised a legitimate defense as to its right or legitimate interest, and as to its lack of bad faith. Accordingly, I would find that Complainant has not met its burden of proof as to this domain name.
While the papers we received presented us with very limited evidence on the points relevant to this proceeding, we were required to sift through much more evidence that was virtually irrelevant to this proceeding. Clearly the parties are embroiled in an on-going dispute that will not be resolved, and should not be resolved, by this proceeding. To the extent that Complainant might have legitimate claims against Respondent, those claims are better resolved in another, more appropriate forum, on a complete record addressing the myriad factual issues present.
Sally M. Abel, Esq.
Dated: February 22,
2006
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