Rondele Acquisitions, LLC v. Monteagle Media
Claim Number: FA0511000596032
Complainant is Rondele Acquisitions, LLC (“Complainant”), represented by Andrew S. Ehard, of Merchant & Gould, P.C., P.O. Box 2910, Minneapolis, MN 55402-0910. Respondent is Monteagle Media (“Respondent”), Wildbrook Run, Bloomfield Hills, MI 48304.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pubcheese.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 14, 2005.
On November 16, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <pubcheese.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 6, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 5, 2005.
On December 13, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Rondele Acquisition, LLC (Complainant) has a principal place of business in Merril, Wisconsin. Complainant has used the designation PUB CHEESE as a trademark in connection with cheese products since at least 1981.
Complainant and its predecessors in interest have continuously used the PUB CHEESE mark and owns two United States trademark registrations for the marks PUB CHEESE and PUB CHEESE and design as outlined in Registration Nos. 2,538,049 and 1,918,175. Complainant’s Registration 1,918,175 is incontestable by operation of law.
Complainant has invested substantial sums of money in developing and marketing its PUB CHEESE products and has developed substantial goodwill and customer loyalty under this trademark. Complainant operates a website at <rondele.com>.
As a result of Complainant’s decades of bearing the mark, Complainant’s PUB CHEESE mark has become well known and is entitled to a broad level of protection.
Respondent has registered the domain name <pubcheese.com>. Upon information and belief, Respondent registered the domain on September 11, 2003. The Respondent has no statutory or common law trademark rights or any other rights or legitimate interests in the mark PUB CHEESE or in the infringing domain name <pubcheese.com>. The Respondent is not licensed or authorized to use the PUB CHEESE mark of the Complainant for any purpose.
Respondent registered and used in bad faith a domain name that is confusingly similar to the mark of Complainant. There is no evidence the domain name was registered for a legitimate reason. The evidence shows that Respondent registered the domain name for the purpose of commercial gain. Respondent’s website displays the wording PUB CHEESE and offers cheese products virtually identical to the products offered by Complainant.
Respondent is using the domain name to lure unsuspecting consumers seeking to find the Complainant to a commercial website that advertises and promotes virtually the identical cheese products.
Complainant maintains that Respondent is attempting to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship, source, and affiliation of Respondent’s site.
On March 14, 2005, Complainant wrote a cease and desist letter to Respondent. Respondent apparently answered by telephone. Complainant wrote several more letters to Respondent regarding the use of the domain name.
Miracle Max (Respondent) has a principal place of business in Bloomfield Hills, MI and sells a high-end cheese spread just in the Metro Detroit Area. The business was established in September of 2003. My wife and I run this very small business and the website is our only source of information for our customers. Our product is called MIRACLE MAX PUB CHEESE AND SPEAD. Pub cheese is only one element of the name. It is really centered on Miracle Max, our golden retriever and mascot. We manufacture a cheese spread that is for sale in just 15 stores as listed on the website. Our website simply directs customers who want Miracle Max Pub Cheese and Spread to these 15 stores. We are not a threat to Rondele in the least. They did not even become aware of our product until it was on the market for two years. Pub Cheese is a generic type of cheese originating in England. Neither the Complainant’s nor the Respondent’s product in any way would qualify as “Pub Cheese.” It is similar to Swiss cheese being sold under the Kraft or Kroger brand name. By registering the website <pubcheese.com>, my wife and myself simply wanted a site that could tell the story of our cheese. At the time, we did not even know of the Rondele product that used the word Pub Cheese.
C. Additional Submissions
1. Complainant is a business organization that apparently sells cheese products under the name Rondele Specialty Foods. One of these products is Pub Cheese, a gourmet spreadable cheese. Pub Cheese is marketed on the website <rondele.com/pubcheese>.
2. Complainant owns a United States Trademark Office Registration for a typed drawing containing the words PUB CHEESE, and a second registration for a design plus words, letters, and/or numbers containing the words PUB CHEESE. Each of these registrations bear the notation that “No claim is made to the exclusive right to use ‘cheese’ apart from the mark as shown.”
3. Complainant alleges that Respondent registered the domain name <pubcheese.com> on September 11, 2003. Respondent does not contest this allegation, and there being no other information in the pleadings to show otherwise, the date is taken as established.
4. Respondent markets on the <pubcheese.com> website a product called MIRACLE MAX’S Pub Cheese & Spread.
5. Respondent alleges that the business selling MIRACLE MAX’S Pub Cheese & Spread has been in business for three years. Complainant does not challenge this assertion so it is taken as proved.
6. Respondent’s domain name, <pubcheese.com> is identical to Complainant’s word mark, PUBCHEESE.
7. Complainant fails to prove that Respondent is without rights to or legitimate interests in the domain name.
8. Complainant fails to prove that Respondent registered and used the domain name in bad faith.
9. Complainant’s demand for relief must be denied.
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.
Complainant’s ownership of the registration with the United States Patent and Trademark Office for the word mark, PUB CHEESE, is sufficient to permit Complainant to proceed under Policy ¶ (4)(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in the mark).
Complainant contends that the <pubcheese.com> domain name is identical to Complainant’s PUB CHEESE mark because the domain name incorporates Complainant’s mark in its entirety with the only differences being the omission of the space between the words “pub” and “cheese” and the addition of the generic top-level domain “.com.” Minor alterations to Complainant’s registered mark are insufficient to negate the identical aspects of Respondent’s domain name pursuant to the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com to he identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.”); see also Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31, 2001).
Complainant prevails under the requirements of Policy ¶ (4)(a)(i).
Complainant contends that the Respondent has no statutory or common law trademark rights or any other rights or legitimate interests in the mark PUB CHEESE or in the infringing domain name. Respondent is not licensed or authorized to use the PUB CHEESE mark of the Complainant for any purpose. Once such a showing is made, the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G. D. Searle v. Martin Mktg., FA118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have 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).
Respondent contends that PUB CHEESE is a generic term descriptive of a type of cheese originating in England. Respondent contends that the term PUB CHEESE is like Swiss cheese as a descriptive term referring to a type of cheese rather than in a trademark sense. Respondent notes that Complainant’s product is sold as Rondele Pub Cheese and Respondent’s product is sold as Miracle Max Pub Cheese and Spread.
The Panel is of the opinion that PUB CHEESE, as used by Respondent, is being used because of its descriptive quality rather than due to any trademark value the term may have. “It is Complainant’s burden to prove that a Respondent lacks rights or legitimate interests in the Domain Name. Because there is a reasonable connection between Respondent’s use of the domain name as a descriptor, rather than for any trademark value, Complainant has not succeeded in proving that Respondent lacks rights or legitimate interests in the Domain Name.” See N.J. Divorce Ctr., Inc. v. iGenesis Ltd., FA584783 (Nat. Arb. Forum Dec. 14, 2005).
Respondent’s contention that the term, PUB CHEESE, is generic, seems correct. Complainant offers no evidence to rebut this contention except its bald assertion that PUB CHEESE is a famous mark.
“Genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of incontestable registration.” See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-00427 (WIPO Aug. 24, 2000); see also Soccerplex, Inc. v. NBA Inc., FA94361 (Nat. Arb. Forum May 25, 2000) (finding that the complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).
Clearly, PUB CHEESE, is not a term exclusively associated with Complainant’s business. Even the trademark registrations state that Complainant has no exclusive right to use the term, Cheese. Complainant certainly cannot claim the exclusive right to use the term, Pub. When it is not proven that Respondent has converted a famous mark into a domain name calculated to benefit from association with the mark and instead appears to be a case where the public created a generic term matching the mark, Respondent has not been proven to be without rights and legitimate interests in the generic domain name. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., supra.
Where Respondent has shown that the domain name is comprised of generic and/or descriptive terms, and in any event, is not exclusively associated with Complainant’s business, the Complainant has not met its burden in proving that Respondent had no rights or legitimate interest in the domain name. See Energy Source, Inc. v. Your Energy Source, FA96364 (Nat. Arb. Forum Feb. 19, 2001); see also Successful Money Mgmt. Seminars, Inc., v. Direct Mail Express, FA96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” are generic terms to which the complainant cannot maintain exclusive rights); see also Coming Attractions, Ltd. v. Comingattractions.com, FA94341 (Nat. Arb. Forum May 11, 2000) (finding a respondent had the right to register the subject domain name, <comingattractions.com> based upon the generic use of the term “coming attractions”). Common words and descriptive terms are legitimately subject to registration as domain names on a first-come, first-served basis. See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000).
Respondent contends that before any notice of the dispute, its use of the domain name corresponding to the domain name in connection with a bona fide offering of goods or services was accomplished. See Policy ¶ 4(c)(i). Respondent advertised its product, Miracle Max Pub Cheese and Spread on the <pubcheese.com> website for years prior to notice of this suit. Under the circumstances of this case, it is found that this constitutes a bona fide offering of goods or services under the Policy.
Complainant does not prevail under Policy ¶ 4(a)(ii).
Complainant bears the burden of proving that Respondent registered and used the domain name in bad faith. The elements set out in the Policy require some willful intent be shown on the part of Respondent to support bad faith. See Policy ¶ (4)(b). Respondent alleges that at the time of registration and first use, Respondent “did not even know of the Rondele product that used the word Pub Cheese.” “If at the time of registration Respondent lacked actual knowledge or belief of the Complainant’s trademark rights… then a finding of bad faith registration is precluded. To hold otherwise would imply that the mere fact of trademark registration necessitates a finding of bad faith. However, a finding of bad faith by its nature entails that there be some intentional act on the part of the party purported to be acting in bad faith such that that party reasonably believes or should believe it is offending the rights of another.” See N.J. Divorce Ctr., Inc. v. iGenesis Ltd., supra.
Complainant shows no evidence of bad faith other than bald assertions without supporting facts. Where the facts involve a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest, no bad faith has been proved. See Lumena s-ka zo.o. v. Express Ventures LTD, FA94375 (Nat. Arb. Forum May 11, 2000); see also Goldmasters Precious Metals v. Gold Masters srl, FA95245 (Nat. Arb. Forum Aug. 21, 2000).
Complainant does not prevail under Policy ¶ 4(a)(iii).
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 27, 2005
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