National Arbitration Forum
DECISION
New Pig Corporation v. Adam
Dicker
Claim Number: FA0611000843597
PARTIES
Complainant is New Pig Corporation (“Complainant”), represented by Matthew
W. Gordon, of Pietragaool, Bosick & Gordon LLP, The
Thirty Eighth Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pig.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
Honorable Charles
K. McCotter, Jr. (Ret.) and Honorable James A. Carmody, as Panelists and Honorable Karl V. Fink (Ret.), as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 16, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 17, 2006.
On November 17, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <pig.com> domain name is registered
with Enom, Inc. and that the Respondent
is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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 November 21, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 11, 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@pig.com by e-mail.
A timely Response was received and determined to be complete on December 11, 2006.
The National Arbitration Forum received timely Additional Submissions
from Complainant on December 18, 2006 and from Respondent on December 21,
2006. Both were determined to be
complete pursuant to Supplemental Rule 7.
All submissions were considered by the Panel.
On January 2, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Charles K. McCotter, Jr.
(Ret.) and Honorable James A. Carmody,
as Panelists and Honorable Karl V. Fink (Ret.), as Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of a family of “PIG” trademarks. Complainant has been using its “PIG” marks to
identify its goods and services since at least 1987. The trademark “PIG” was registered December
24, 1987 by the United States Patent and Trademark Office. The goods and services provided under
Complainant’s marks include industrial absorbents, containment products, waste
handling equipment, distribution, sales and service related to such products.
As a result
of Complainant’s longstanding use of its “PIG” trademarks in the United States
and worldwide, Complainant has built up goodwill in the “PIG” mark and the
“PIG” mark is well recognized among the public.
The domain name at issue is identical or confusingly similar to the
trademark in which the Complainant has rights.
Respondent has no rights or legitimate interests in the domain
name. Respondent is not using, and to
Complainant’s knowledge has not used <pig.com> for any bona
fide offering of goods or services.
The domain name has been registered and is being used in bad
faith. Respondent’s reliance on the
goodwill surrounding Complainant’s mark to redirect Internet users to a search
engine website with various commercial links for its own commercial gain
equates to bad faith use and registration of a domain name.
Respondent’s business generates revenues by operating pay per click
sites. It has been repeatedly held that
pay per click sites are not a legitimate use of a domain name.
The link on Respondent’s website to Complainant’s website indicates
that Respondent is aware of Complainant.
Therefore, Respondent either knew of or should have known of
Complainant’s “PIG” trademark.
Complainant sought an amicable resolution of this dispute by submitting
a fair offer to purchase the website. An
offer of $21,000 was made on November 3, 2006 through <sedo.com> where
the domain name was listed for sale. The
offer expired on November 10, 2006 without response by the Respondent.
B. Respondent
Respondent registered the domain name <pig.com>, and has
connected the domain name to provide paid search results, controlled by a third
party, in response to the keyword “pig.”
Respondent purchased the domain name for US $50,000 to use in
connection with the word “pig,” therefore no bad faith is shown by not
responding to a purchase offer in the amount of $21,000. Respondent purchased the domain name in order
to derive value from Internet traffic on the basis of the word “pig.” Such a purpose for registration and use of a
domain name is legitimate.
The Respondent is a Canadian, who has not been
engaged in the provision of anything related to cleaning oil spills, nor is the
Respondent under any duty of constructive notice relating to
Respondent’s plan for the domain name is to capitalize on the use of
common word “pig” in the same manner as the Respondent has developed an
informational page relating to elephants at <elephant.com>, using
third-party paid search advertising. As
noted in the WHOIS data for the domain name, <pig.com> was
originally registered in 2000, and the Complainant has never alleged in that
time that the registration and use of <pig.com> by the prior owner
infringed any right claimed by the Complainant.
Given the well-known primary meaning of the word “pig,” the notion that
the Respondent was motivated to purchase the domain name out of an intent
arising from an obscure specialty product relating to oil spill clean-up is not
credible.
Complainant has placed a spectacularly high maximum bid of $2.74 to
have its advertisement for absorbents displayed in response to Internet
searches for the word “pig.” Complainant caused the display of its own ad on
the Respondent’s website, and that such a result was entirely independent of
any consciously directed activity of the Respondent.
The only link relevant to the Complainant is the result of the
Complainant’s own action. None of the
other links displayed at <pig.com> have any relationship to the
Complaint’s oil absorbent products, and thus do not infringe the Complainant’s
mark nor do they “divert” consumers who are searching for products or services
relevant to the ordinary meaning of the word “pig.”
Complainant alleges no “pattern” of domain registration designed to
deprive Complainant of the ability to reflect its mark in a domain name; the
Respondent has been engaged in a pattern of domain registration, including
other animal domain names as <elephant.com>, <worm.com>,
<seals.com>, and <giraffes.com>.
C. Additional Submissions
Complainant
Many Forum decisions have held that pay per click sites are not a bona
fide offering of goods or services under the Policy.
The cases cited by Respondent regarding legitimacy of pay per click
sites stand for the proposition that pay per click sites are legitimate if they
are not registered for their value as a trademark or with another’s trademark
in mind.
Contrary to Respondent’s claim, Complainant did not “use a keyword
bidding system to place itself, temporarily and for the purposes of this
proceeding, as the top advertiser returned in response to the word “Pig” in the
Google advertising system.” Complainant
has the top spot because of its continuous efforts to increase recognition of
the “PIG” mark. No one even comes close
to the Complainant when committing resources to be identified with “PIG.”
According to <pig.com> as of December 12, 2006, the domain
name is for sale. Complainant views this
as indisputable evidence of bad faith.
Respondent’s pay per click site amounts to no more than a parked website
which is exploited to the detriment of Complainant. Respondent has put no effort into developing
the site.
Respondent
Complainant’s Supplement is not authorized by the UDRP Rules.
The Policy confers the submission of additional material beyond the
Complaint and the Response to the “sole discretion” of the Panel, at the
Panel’s request. There has been no such
request from the Panel.
Here, the Complainant’s Supplemental Submission contains no facts or
evidence which could not have been filed in the Complaint.
When the term at issue is inherently distinctive, bad faith intent may
be inferred, but here we are dealing with the word “pig” and only the “pig.”
At page 2 of the Complainant’s supplement, the Complainant hypothesizes
that an Internet user visiting <pig.com> would expect to find
information relating to “swine or pork.”
The Respondent agrees. If the
Complainant were to obtain the domain name, then no Internet user looking for
swine or pork is going to find it at <pig.com>.
While the Complainant states that, on average, it spends $4M per year
on unspecified promotion of its products, no documentation is provided for this
assertion. The swine and pork industries
dwarf the Complainant’s sale of its specialized product, and it is reasonable to
assume that the Panel members themselves were aware of the word “pig” prior to
this dispute and, like the Respondent, had never heard of the Complainant or
its products.
The Complainant now admits that the Complainant itself is responsible
for the appearance of its own advertisement on the Respondent’s webpage.
FINDINGS
For the reasons set forth below, the Panel finds Complainant has not
proven that the domain name should be transferred.
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.
Identical and/or Confusingly Similar
Respondent does not contest Complainant’s assertion that the <pig.com> domain name is identical to Complainant’s PIG mark.
The Panel finds this element has been satisfied.
Rights or Legitimate Interests
For Complainant to prevail, it must prove all three elements.
Because the Panel has decided that Complainant
cannot establish the element of Registration and Use In
Bad Faith, the Panel has not decided this element.
Registration and Use in Bad Faith
The Panel finds that
Respondent registered the <pig.com> domain name based on the
dictionary meaning of the term “pig” and not to take advantage of Complainant’s
generic mark. See CNR Music B.V. v.
High Performance Networks, Inc., D2005-1116 (WIPO Jan. 23, 2006) (“The
registration of the domain name appears to have been aimed at exploiting the
ability of the word itself to attract Internet users, and not aimed at taking
advantage of the Complainant’s reputation or trademark.”); see also Target
Brands, Inc. v. Eastwind Group., FA 267475 (Nat. Arb. Forum Jul. 9, 2004)
(holding that the respondent’s registration and use of the <target.org>
domain name was not in bad faith because the complainant’s TARGET mark is a
generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb.
Forum Dec. 8, 2003) (finding that because the respondent was using the
<highlife.com> domain name, a generic phrase, in connection with a search
engine, the respondent did not register and was not using the disputed domain
name in bad faith).
The Panel finds this element has not been satisfied.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Chair
Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Honorable James A.
Carmody, Panelist
Dated: January 29, 2007
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