Harry and David v. Clubs of
America, Inc.
Claim Number: FA0704000952243
PARTIES
Complainant is Harry and David (“Complainant”), represented by James
Geringer, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fruitofthemonth.com>, registered
with Go
Daddy Software, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Paul A. Dorf, Prof. G. Gervaise Davis III, and James A. Carmody,
Esq. (Chair), as Panelists
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 3, 2007.
On April 2, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <fruitofthemonth.com> domain name is
registered with Go Daddy Software, Inc.
and that the 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 4, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 24, 2007 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@fruitofthemonth.com by e-mail.
A Response was received on April 24,
2007. It was deemed deficient
under ICANN Rule 5(a) as the hard copy was not received in a timely
fashion. The Panel elected to consider
the Response in any event.
Both parties filed Additional Submissions which were considered by the
Panel.
On May 1, 2007, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. Paul A. Dorf, Prof. G. Gervaise Davis III, and James A. Carmody,
Esq. (Chair), as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <fruitofthemonth.com>, the domain name at issue, is confusingly similar to Complainant’s FRUIT OF THE MONTH mark which enjoys several USPTO registrations.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following
assertions:
1. Complainant has no protectable rights in its claimed FRUIT OF THE MONTH mark for the purposes of this proceeding because the mark has become generic.
2. Respondent has rights and
legitimate interests in the domain name at issue and is rightfully using the
same in commerce.
3. Respondent did not register the domain name at issue and has not used it in bad faith.
C. Additional Submissions
Complainant’s Additional Statement argues that the Response
acknowledges Complainant’s long common law use of the FRUIT
OF THE MONTH mark and that Respondent is using the <fruitofthemonth.com>
domain to sell goods in direct competition with Complainant.
Respondent’s Additional Submission argues that Complainant had no legal rights in the FRUIT OF THE MONTH mark at the time Respondent purchased the domain name at issue and began using it and that the claimed mark is generic and cannot serve as a trademark.
FINDINGS
Harry and David is a nationally famous retailer and premier direct marketing and e-commerce company operating over 130 stores nationwide. Harry and David sells gourmet fruit and food gifts in part through its “FRUIT-OF-THE-MONTH CLUB” mail order services. The company began its Fruit-of-the-Month Club® program in 1936 and has continued it ever since.
Complainant’s three incontestable federal trademark registrations are valid and in force. Their details are summarized in the table below:
|
Mark |
Registration Number and Date |
Goods/Services |
|
|
Reg. 386,023 (March 25, 1941) |
IC 031. US 046. G & S: Fresh Fruits-Namely, Pears and Grapes; |
|
FRUIT-OF-THE-MONTH CLUB |
Reg. 905,212 (Dec. 29, 1970) |
IC 029 030 031. US 046: fresh, [canned,] dried and candied fruits, fruit preserves, unshelled nuts, cheese, [tea,] candy, and gift packages containing one or more of the listed items |
|
FRUIT-OF-THE-MONTH CLUB |
Reg. 1,159,530 (June 30, 1981) |
IC 042. US 101. G & S: Mail Order Services in the Field of Food Items |
Respondent,
Clubs of America, started operations in 1994 as a beer of the month club
consisting of 35 members. Today, Clubs of America is one of the largest “Gift
of the Month Club” service providers in the
Respondent did not register but acquired the <fruitofthemonth.com> domain name in dispute in March of 2002,
over five (5) years ago, and has consistently used the domain name to direct
Internet users to its main website located at <greatclubs.com>.
Respondent
is one of many providers of fruit of the month clubs as evidenced by a Google
search for “fruit of the month,” which returned 71,400 results. There are a
multitude of other third-party providers of such services other than the two
parties to this proceeding.
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.
As noted by
Respondent, although Complainant’s trademark registrations may have acquired
incontestable status, this does not preclude a successful challenge to the
validity of a trademark based on genericness.
In order to determine whether a designation is generic, courts generally consider: (1) the class of goods or services at issue; and (2) whether the relevant public understands the designation primarily to refer to that class of goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir.1986). In this case, the goods and services at issue are a club that delivers fruit by mail on a monthly basis. The relevant public is comprised of consumers who may want to purchase such services or items, typically as monthly gifts to others. The Internet search evidence presented by Respondent to this Panel clearly demonstrates that the relevant public understands “fruit of the month club” to refer to providing fruit on a monthly basis as a class of goods and services. Many of these results are websites belonging to entities other than Complainant and Respondent which offer their own fruit of the month clubs, among other gift of the month club services.
The Panel finds that the <fruitofthemonth.com> domain
name is essentially identical to the FRUIT OF THE MONTH mark claimed by the
Complainant to be one of its protected trademarks. However, very ample evedence has been
presented to the Panel that “fruit of the month” is a generic phrase used very
extensively by very many merchants in the periodic sale of fruit to the
public.
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
Respondent is using the <fruitofthemonth.com> domain name for the purpose of operating a website in connection with its business of offering various products “of the month” for sale. In 1994, Respondent started the “beer of the month club” with thirty-five members. Since that time, Respondent’s business has grown to over 20,000 members and has expanded into several different clubs including wine of the month club, coffee of the month club and pizza of the month club. In March 2002, Respondent purchased the <fruitofthemonth.com> domain name and has since operated a business in which subscribers receive a monthly basket of exotic fruits in the mail. The <fruitofthemonth.com> domain name describes the business in which the Respondent has engaged for five years prior to the commencement of this proceeding by Complainant. Respondent’s extensive use of the <fruitofthemonth.com> domain name in connection with a bona fide offering of goods or services demonstrates that it has rights and legitimate interests in the domain name at issue. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Respondent has established rights and legitimate interests in the <fruitofthemonth.com> domain name through its use in providing “fruit of the month” services to members, and this precludes a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
DECISION
The Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Paul A. Dorf
Prof. G. Gervaise Davis III,
James
A. Carmody, Esq., Chair
Dated: May 22, 2007
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