Earth Creations Inc. v. Atlantic &
Pacific Marble & Stone Inc.
Claim Number: FA0605000702624
PARTIES
Complainant is Earth Creations Inc. (“Complainant”), represented by Michael S Denniston, of Bradley Arant Rose & White LLP, 1819 Fifth Avenue North, Birmingham, AL 35203, USA. Respondent is Atlantic & Pacific Marble & Stone, Inc. (“Respondent”), represented by Mark E. Stein, of Lott & Friedland, P.A., Post Office Drawer No. 141098, Coral Gables, FL 33134-1098.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earthcreations.com>,
registered with Tucows.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge, and the undersigned have no known
conflict in serving as Panelists in this proceeding.
Linda M. Byrne, M. Kelly Tillery, and Sir Ian Barker as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 8, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 10, 2006.
On May 9, 2006, Tucows confirmed by e-mail to the National Arbitration
Forum that the <earthcreations.com>
domain name is registered with Tucows and that the Respondent is the current
registrant of the name. Tucows has
verified that Respondent is bound by the Tucows 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 May 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 30, 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@earthcreations.com by e-mail.
An electronic copy of the Response was received on May 30, 2006. However, the hard copy of the Response was
received after the deadline for Response.
Therefore, the Forum does not consider the Response to be in compliance
with ICANN Rule #5 (a).
Timely Additional Submissions were received from Complainant and
Respondent, in accordance with The Forum’s Supplemental Rule #7.
On June 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Linda M. Byrne, M. Kelly Tillery, and Sir
Ian Barker as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The Complainant argues that <earthcreations.com> is identical to a trademark used by Complainant, EARTH CREATIONS.
The Complainant contends that Respondent has no rights or legitimate interests in respect of the <earthcreations.com> domain name in view of its failure to use, or to make demonstrable preparations to use, the <earthcreations.com> domain name in connection with a bona fide offering of goods or services.
In addition, Complainant contends
that Respondent’s registration and continued use of the <earthcreations.com>
domain name is in bad faith. According
to Complainant, the bad faith is evidenced by Respondent’s failure to use the
domain name in connection with a website that features the term “Earth
Creations,” as well as Respondent’s offers in 1997 and 2006 to sell the domain
name to the Complainant for $8,000 and $100,000 respectively.
B. Respondent
Respondent asserts that it owns rights or legitimate business interests
in the <earthcreations.com> domain name, because Respondent has
made preparations to use the domain name.
Specifically, Respondent was preparing to form a new business division
called “Earth Creations,” which would conduct business by using the domain name
<earthcreations.com>.
Respondent stated that it took the following actions in preparation to
use the domain name: “found partners to
assist financially in the creation of Earth Creations, LLC; employed personnel
with knowledge of the marble and stone business to assist with the daily
business operations; purchased warehouse space to incorporate the new products
and stock associated with Earth Creations; and determined what products in
marble and stone should be imported and offered for sale by the new
business.” The foregoing was set forth
in a Declaration of Respondent’s president.
Respondent incorporated Earth Creations, LLC in Florida on January 12,
2006. Respondent used the EARTH
CREATIONS term at a trade show in April 2006.
At the trade show, Respondent’s booth prominently featured the term
“Earth Creation.” Respondent asserts
that these activities occurred before it received actual notice of a dispute
concerning <earthcreations.com>, i.e., before it received the
Complaint on May 9, 2006. Respondent
also argues that the term “Earth Creations” is merely descriptive of the
Complainant’s clothing line.
Respondent maintains that it did not act in bad faith because it was
not aware of Respondent’s trademark registrations, and Respondent argues that
its offers to sell the domain name were made only in response to Complainant’s
inquiries about transferring the domain name.
The Complainant said that the $100,000 selling price represented the
estimated profit that Complainant expected to earn during its first year of
using the <earthcreations.com> website by its “Earth Creations” division.
C. Additional Submissions
Complainant’s Additional Submission noted that the Florida incorporation papers made no reference to Respondent, Atlantic & Pacific Marble & Stone, Inc. Complainant also asserts that “there were no activities to use or prepare to conduct business under the name Earth Creations occurring at the time of the registration for the <earthcreations.com> domain name.” Complainant’s Additional Submission attaches several articles to demonstrate the renown of Complainant’s EARTH CREATIONS products.
Respondent’s Additional Submission
clarifies that the incorporation papers make reference to the principal(s) or
Respondent and to affiliated companies.
Respondent reiterates that it had a legitimate right to the domain name
because of the activities noted above.
Respondent notes that it received only one misdirected e-mail that was
intended for Complainant, and that Respondent forwarded this e-mail to
Complainant.
FINDINGS
Complainant owns two registered service marks for EARTH CREATIONS (U.S. Reg. Nos. 2,241,044 and 2,257,538). Both of these registrations have achieved incontestable status. Each registration has a filing date of November 13, 1996, and Complainant’s trademark rights began as of the filing date. See 15 U.S.C. § 1057 (1999); see also Nortel Networks Ltd. v. ByMeBuyMe.com Inc., FA671847 (Nat. Arb. Forum May 16, 2006); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002).
Complainant uses the EARTH
CREATIONS mark to identify the following goods: men’s, women’s and children’s clothing and accessories, namely,
T-shirts, sweatshirts, long sleeve T-shirts, tank tops, golf shirts, fleece
sweatshirts, caps, baseball caps, hats, shirts, jackets, socks, pants, shorts,
scarves, overalls, aprons, and bandanas.
Complainant, or its predecessor
in interest, has used the EARTH CREATIONS trademark and business name since at
least as early as 1997. Complainant
features the EARTH CREATIONS mark on its catalogs, and Complainant’s products
are sold directly to consumers and through retail stores such as REI.
Respondent registered the <earthcreations.com>
domain name on November 13, 1997. Until
early 1999, the <earthcreations.com> domain name resolved to a
placeholder site that said, “Global TelNet LLC is a Web site design and
management company and an Internet entertainment service bureau based in
southern Florida, USA.”
In November or December 1997, or in 1998,
Complainant’s president telephoned Respondent, asking about the transfer of the
domain name to Respondent. The exact
date of this conversation is uncertain, but it must have been after the domain
name’s registration date, November 13, 1997.
The Complainant’s president, according to his Declaration, informed
Respondent of Complainant’s use of EARTH CREATIONS and its two U.S. trademark
applications. During that conversation,
Respondent offered to sell the domain name for $8,000. Complainant’s business was in a start-up
phase at the time, so Complainant did not pursue the purchase of the domain
name. In early 1998, Complainant
registered <earthcreations.net> instead, and Complainant maintains a
website at <earthcreations.net> to promote its dyed clothing.
For approximately three or four years,
beginning in 1999 or 2000, and continuing through December of 2003, the <earthcreations.com>
domain name was linked to the website of Respondent’s principal business, which
showcased its marble and stone products.
From 2003 to the present, no operational website has been associated
with the <earthcreations.com> website.
On April 5, 2006, a representative of
Complainant e-mailed the named contact representative for the <earthcreations.com>
domain name requesting transfer of the domain name to Complainant. Respondent replied by e-mail on April 10,
2006, stating that it would not voluntarily transfer the domain name but
offered to sell the <earthcreations.com> domain name for
$100,000.
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 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.
In view of Complainant’s U.S.
registrations for the EARTH CREATIONS mark, this Panel finds that Complainant
has demonstrated rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Consistent with Respondent’s
admission of confusing similarity, this Panel finds that the <earthcreations.com> domain name is
confusingly similar to Complainant’s EARTH CREATIONS mark. This Panel therefore
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
The Policy requires Complainant to prove that Respondent had no legitimate rights or interests in respect of the <earthcreations.com> domain name before Respondent received notice of the dispute. The Respondent argues that its legitimate interest in the domain name emanates from its preparations to form a company called “Earth Creations.”
The Policy states that rights or
legitimate interests are demonstrated if, before receiving any notice of the
dispute, Respondent made “demonstrable preparations” to use the domain name in
connection with a bona fide offering of goods or services. In this case, Respondent’s preparations to
use the domain name are not supported by significant documentary evidence. Respondent
stated that it took the following actions in preparation to use the domain
name: “found partners to assist
financially in the creation of Earth Creations, LLC; employed personnel with
knowledge of the marble and stone business to assist with the daily business
operations; purchased warehouse space to incorporate the new products and stock
associated with Earth Creations; and determined what products in marble and
stone should be imported and offered for sale by the new business.” The foregoing is quoted from a Declaration
of Respondent’s president.
A threshold issue is the date on which Respondent received notice of the dispute. Complainant argues that notice was given in late 1997 (or early 1998) when Complainant’s president telephoned Respondent to request a transfer of the domain name, or in March 2006 when Complainant and Respondent exchanged e-mails about a possible transfer of the domain name. Respondent argues that notice was not given until this Complaint was filed on May 10, 2006.
The registration of a trademark with the USPTO effectively gives constructive notice in the United States that the trademark holder has rights in the mark. Constructive notice is not effective until the trademark is registered, but once it is registered, the constructive notice is imputed as of the filing date of the trademark, because the filing date serves as notice that the trademark holder has been openly and notoriously using the trademark in connection with its goods or services. Constructive notice of Complainant’s trademark could be imputed to Respondent in view of Complainant’s U.S. trademark applications for EARTH CREATIONS, which were filed on November 13, 1996. See Menard Inc. v. ZeBo Ltd., FA 102973 (Nat. Arb. Forum Feb. 5, 2002) (finding that the respondent had constructive notice of the complainant's MENARDS mark upon registration of the <menards.net> domain name because the federal registration date, first use date and application priority date all preceded the respondent's registration date for the disputed domain name).
In this case, the Panel does not equate Complainant’s trademark application filing date with the date on which Respondent received notice of a domain name dispute. This is because of the vast difference between clothing vs. stone building products. This Panel concludes that Respondent received notice of the dispute as of March 2006, at which time the parties exchanged e-mails regarding this matter.
The second issue is whether the Respondent has made demonstrable preparations to use the disputed <earthcreations.com> domain name in connection with its business prior to March 2006. Respondent alleges that it registered <earthcreations.com> in connection with a new division for its marble, stone and tile business, named “Earth Creations.” Complainant asserts that its business was named Earth Creations because “the majority of the products that [it] planned to import and/or sell were natural stone products which were literally, creations from the earth.” Some cases have held that Respondent has made demonstrable preparations to use the disputed domain name in connection with its business for the bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See InfoSpace, Inc. v. Lemieux, D2000-1476 (WIPO Jan. 18, 2001) (finding that the use of the <sportsinfospace.com> domain name was a bona fide offering of goods or services where the respondent registered the domain solely for the purpose of offering season tickets to baseball games and restricted the use to that extent); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services).
Respondent incorporated Earth Creations, LLC in Florida on January 12, 2006, and used the EARTH CREATIONS term at a trade show in April 2006, at which the banner at the trade show booth prominently featured the term “Earth Creation.” The Respondent also contends that it made various other demonstrable preparations to use the disputed <earthcreations.com> domain name in connection with its business. It appears that Respondent made demonstrable preparations to use the <earthcreations.com> domain name prior to March 2006.
In any event, this Panel need not determine whether or not Respondent has made demonstrable preparations to use the disputed domain name in view of the Panel’s decision regarding the “bad faith” element.
The Policy states that bad faith is present in “circumstances indicating that the Respondent has registered or has 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 trademark… .” It is true that Respondent offered to sell the domain name to Complainant for $8,000 and $100,000 in 1997 (or 1998) and 2006. However, the evidence does not support a finding that such a sale was the primary reason that Respondent registered the <earthcreations.com> domain name. Rather, the evidence indicates that the primary purpose for registration of the domain name was to support a new business division called “Earth Creations.”
Another possible argument to support bad faith is Respondent’s registration and renewal of the domain name even after the filing date of Complainant’s EARTH CREATIONS trademark. However, it is unclear whether constructive notice is sufficient to establish bad faith registration. See Advanced Drivers Educ. Prods. and Training, Inc v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (finding constructive notice of a complainant's rights in a trademark insufficient to establish bad faith registration and use pursuant to the Policy, because “it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case”).
At the time that Respondent registered the domain name, November 13, 1997, Complainant’s EARTH CREATIONS applications were pending. However, Complainant’s registrations had not issued, and Complainant had not yet filed a Statement of Use for either application. Even if Respondent had been aware of Complainant’s trademark applications, Respondent may rightfully have not been concerned about Complainant’s EARTH CREATIONS trademark in view of the vast difference between granite and marble building products, as compared to clothing.
None of the Policy’s other examples of bad faith situations apply to this situation either, especially in view of the significant difference between the product lines of the two companies (clothing vs. granite and marble products).
In summary, this Panel concludes
that that Complainant has not satisfied Policy ¶ 4(a)(ii).
DECISION
Not having established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <earthcreations.com>
domain name not be transferred from
Respondent to Complainant.
Linda M. Byrne, M. Kelly Tillery, and Sir Ian
Barker, Panelists
Dated: June 29, 2006
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